USPTO Policy On Discretion to Deny Ex Parte Reexamination Is Contrary to Statute and Precedent

As the institution rate of inter partes reviews (IPRs) has plunged under U.S. Patent and Trademark Office (USPTO) Director John Squires, parties have increasingly turned to ex parte reexaminations (EPRs) to challenge patents. The number of requests for EPRs has skyrocketed. The number of EPR requests more than doubled between 2020 (198 requests) and 2025 (481 requests). See USPTO Reexam Statistics. Based on the number of requests for EPRs (831) assigned a filing date through Q3 of 2026, we are on track to have more than 1,100 requests for EPRs filed in FY2026. See USPTO Operational Statistics.

In short, the number of requests for EPRs in 2026 will have increased by more than 500% compared to 2020. This increase in EPR activity is not just a challenge for patent owners. It is a challenge for the Central Reexamination Unit (CRU) that handles EPR proceedings. The CRU does not have the capacity to process a five-fold increase in EPR proceedings. For example, the Office reported that the staff of the CRU had been reduced by 32% as of February 2026. See PatentRIFF (Feb. 18. 2026)

Traditionally, the grant rate for requests for reexamination has been around 95%. See USPTO Reexam Statistics But that 95% grant rate may be coming down. First, Director Squires has indicated through Magnolia and other decisions that the Office frowns upon post-grant challenges filed after a patent’s validity is upheld in district court by a jury. While those cases involved IPRs, the reasoning applies to EPRs, too. Second, Director Squires implemented the new Pre-Order submission program that allows a patent owner to rebut the requester’s proposed substantial new question of patentability (SNQ) before an EPR is ordered. Third, the Office does not have the capacity to handle the five-fold increase in EPRs without significantly increasing pendency.

There is another tool available to deny unfair EPR challenges to patents already upheld in district court or that otherwise have been subjected to multiple challenges: Section 325(d). However, the CRU is not currently applying Section 325(d) in a manner consistent with its language and the Congressional objective.

The CRU Should Apply Section 325(d) to References Presented in Original Examination

Section 325(d) states: “In determining whether to institute or order a proceeding under this chapter [PGRs], chapter 30 [EPRs], or chapter 31 [IPRs], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”

There is no dispute that Section 325(d) can be invoked to deny or terminate an EPR. In re Vivint, 14 F.4th 1342, 1354 (Fed. Cir. 2021).

The plain language of Section 325(d) provides that the Director has discretion to deny/terminate an EPR if the same or substantially the same prior art or arguments were previously presented to the Office. That encompasses prior art/arguments presented in a prior proceeding, such as an IPR. That also encompasses prior art/arguments presented during original examination of the challenged patent.

We know that Section 325(d) applies to prior art/arguments presented during original examination from multiple precedential decisions issued by the Office. For example, the Director found in Ecto World (Director May 19, 2025) that Section 325(d) applies to references cited during original prosecution. The Board applied Section 325(d) in Advanced Bionics (PTAB Feb. 13, 2020) (precedential) to the original prosecution, explaining that the statute applied to “[p]reviously presented art [] made of record by the Examiner, and art provided to the Office by an applicant … in the prosecution history of the challenged patent.”

The problem is that in deciding requests for EPRs, CRU examiners are currently declining to apply Section 325(d) to original prosecution. They are instead taking the position that Section 325(d) only applies if there has been a prior post-grant challenge to the patent. The standard language being used by CRU examiners in reexamination orders is:

“A review of the post grant history for the instant patent indicates that there have been no other Office post grant challenges made to the patent (Reexamination Proceedings or Inter Partes Review, Post Grant Review, Covered Business Method trials). Accordingly, a discretionary denial of reexamination pursuant to 35 USC 325(d) is not applicable.”

See, e.g., Order, 90/016,056, (Apr. 14, 2026), at *21, Order, 90/015,701 (Jan. 5, 2026) at *4 (italics added).

Allow Briefs to Address 325(d)

The CRU needs to start considering Section 325(d) when determining whether to grant a request for reexamination. One solution would be to modify the Pre-Order submission program to allow briefs to address Section 325(d) in addition to SNQ. This would be helpful because the patent owner could draw the CRU examiner’s attention to prior art or arguments in the prosecution record that are “the same or substantially the same” as presented by the request for reexamination. This would make the process more efficient for the CRU examiner. Having the CRU examiner consider Section 325(d) would also reduce the number of post-order petitions to terminate that are usually decided by the Office of Patent Legal Administration (OPLA), which is currently overloaded by the number of new petitions being filed as a result of the increase in requests for EPRs.