Commenters Split on USPTO Proposal to Require RPI Disclosure for Reexams

Following the U.S. Patent and Trademark Office’s (USPTO’s) July 2026 proposal to require third-party requesters for ex parte reexamination (EPR) to identify all real parties in interest (RPIs), the 26 comments submitted to the Office reveal a sharp divide among the patent owners, tech companies, industry associations and individuals who weighed in.

The comment period closed August 21, and the commenters included 17 organizations, associations or companies and 8 individuals (a duplicate comment was submitted by the Intellectual Property Owners Association (IPO).

The Federal Register Notice published in July proposed to amend the rules of practice to require that third-party requests for EPR must include a statement identifying all real-parties-in-interest (RPIs) to the proceeding.

According to the proposed rule, statements identifying RPIs would be kept confidential upon request and “would provide the Office with a mechanism to evaluate statutory estoppel provisions” as well as “enhance the Office’s ability to respond to false certifications, misrepresentations, and fraud.”

With respect to ex parte reexaminations, an RPI who wishes to remain anonymous can presently ask a registered practitioner to file the request for them, certifying that the RPI is not estopped from filing the request under either 35 U.S.C. 315(e)(1) or 325(e)(1). However, the Office said in its July Notice that “this ability to file an anonymous request for ex parte reexamination is in tension with the estoppel provisions” and that the “Office cannot independently ascertain whether the party is estopped if the identity of the requester, and all real parties in interest to the request, are not identified.”

The NPRM indicated that the Office has been receiving “a significant number of ex parte reexamination requests under 35 U.S.C. 302 that are directed to patents previously challenged in inter partes or post-grant review proceedings.” This creates risk that the estoppel provisions may apply to the RPIs to an ex parte reexamination request, and because the issue of whether a party is an RPI “can be a disputed question,” certification of practitioners alone “even if provided in good faith, could result in ordering reexamination on a request that otherwise should be barred by the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1).”

The proposed rule would thus specifically require identification of “the requester and any other real parties in interest to the request.” The NPRM acknowledged concerns articulated in previous comment periods on the topic with ensuring confidentiality of third-party requesters’ identities and said that when a request is made for the statement to remain confidential, “the Office intends to provide robust data security measures to exclude the statement from the patent and reexamination files and keep the statement confidential.”

The Office also said it would “take reasonable steps to ensure that any decision will not disclose the confidential information.”

Across the 17 comments submitted by IP groups, eight outright oppose the NPRM. The remaining comments either support, support with a request for more information, take no position, or urge caution in making changes.

Many of the opponents contend that the Office has offered little evidence that estopped parties are actually exploiting anonymous reexamination, and that Congress deliberately created ex parte reexamination as an inexpensive proceeding available to “any person,” coupled with protections for anonymity. But supporters say the USPTO cannot police estoppel and remain blind to RPI identity.

Supporters Back USPTO Claim That There’s an RPI Problem

Adeia Inc., Nokia, Dolby Laboratories, the Council for Innovation Promotion (C4IP) and Verify Smart Corp. all support an RPI-identification requirement, although several would modify or strengthen the proposal.

Adeia, a Silicon Valley-based research and development tech company, claimed that, after more than a decade without an EPR request against any of its patents, it received 10 anonymous requests between October 2025 and April 2026. The company’s comment added that when reexamination was ordered it was required to defend its patents without knowing whether the requester was a licensee, competitor, affiliate of an estopped party, entity acting at another’s direction, or foreign-backed organization. Adeia therefore supports the proposal, but argues that it does not go far enough. It urged the Office to disclose the RPI publicly or, at minimum, to the patent owner under appropriate confidentiality restrictions.

Nokia likewise backs the rule as a means of allowing the Office to independently evaluate §§ 315(e) and 325(e) rather than relying exclusively on a requester’s certification. It characterized the proposal as “an appropriate balance” between transparency to the Office and confidentiality from the public, while recommending additional guidance for situations such as parent-subsidiary relationships, joint-defense arrangements, indemnification obligations, industry consortia and third-party funding.

C4IP similarly argued that the premise of the rule is straightforward: the Office cannot reliably determine whether a request is barred by estoppel unless it has the information necessary to identify the requester and its RPIs. It said obtaining that information would help prevent patent owners from having to defend proceedings that should never have been ordered, while preserving the availability of ex parte reexamination for permissible challenges.

Dolby would go further than simply requiring names. It argued that RPI determinations are inherently disputed and that a requester’s own good-faith identification may therefore be insufficient. Citing the U.S. Court of Appeals for the Federal Circuit’s Applications in Internet Time decision and Patent Trial and Appeal Board (PTAB) proceedings involving RPX and Unified Patents, Dolby proposed that requesters also answer factual questions concerning their business model, member or subscriber funding, the source of funds used for the challenge, their own exposure to infringement liability, and the identities of relevant members or subscribers.

Verify Smart pointed to its own lengthy litigation and PTAB history involving Askeladden and The Clearing House Payments Company, LLC, arguing that a disclosure requirement that cannot be challenged and tested risks becoming little more than another honor-system certification. It urged the Office to pair the requirement with stated consequences for material misidentification, a procedure allowing patent owners to contest RPI identifications on an evidentiary record, a continuing duty to correct the disclosure, and — at minimum — access by the patent owner subject to confidentiality safeguards.

The Patent and Trademark Attorneys, Agents and Applicants for Restoration and Maintenance of Integrity in Government (PTAAARMIGAN), meanwhile, said it generally supports the rule on its merits, agreeing that serial challenges by otherwise estopped parties burden patent owners and consume Office resources. But it separately contended that it is “gravely” concerned by several “procedural shortcutting” errors the USPTO committed in promulgating the NPRM and said the Office must start the rulemaking process over. PTAAARMIGAN argues the Office omitted statutorily required data for comment; that the comment period should have been 60 days rather than 30; and that it skirted other requirements under the Paperwork Reduction Act.

Opponents Say the Office Has Failed to Sufficiently Identify the Issue

Those opposing the proposed rule outright, or who said it could not be supported as drafted, include the Business Software Alliance (BSA), Unified Patents, the Software & Information Industry Association (SIIA), the Association for Competitive Technology (ACT), US*MADE, the PTAB Bar Association, the Japan Intellectual Property Association (JIPA), and the Japan Business Machine and Information System Industries Association (JBMIA).

The common denominator among the opponents is that the USPTO has not established that anonymous requesters are actually evading statutory estoppel in numbers sufficient to justify imposing a universal RPI inquiry on every third-party requester.

BSA urged withdrawal of the rule, arguing that the Office has identified neither a sufficient evidentiary basis nor statutory authority for imposing the requirement. BSA emphasized that Congress expressly required RPI identification for inter partes review (IPR) and post grant review (PGR) petitions but did not do so in 35 U.S.C. § 302, which permits “any person” to request ex parte reexamination. It also pointed to the USPTO’s 2012 decision to rely instead on the existing estoppel certification under § 1.510(b)(6), coupled with practitioner obligations under § 11.18.

Unified Patents raised essentially the same objection from the perspective of a frequent patent challenger. Its submission says existing safeguards already address the Office’s concerns and that the agency has not identified a documented failure of the current certification system. It warned that importing the heavily litigated, fact-intensive RPI inquiry into an examiner-driven proceeding lacking discovery would create satellite disputes and chill otherwise legitimate filings.

SIIA likewise urged the Office not to adopt § 1.510(b)(7), arguing that anonymous reexamination has practical value precisely because a party can present prior art without exposing itself to retaliatory litigation or commercial consequences. If the Office nevertheless proceeds, SIIA would limit disclosure to patents for which an IPR or PGR final written decision has issued, define the applicable RPI standard, provide a mechanism for correcting good-faith mistakes, exclude the confidential statement from service on the patent owner, codify confidentiality protections, and prevent RPI information from being used for unrelated discretionary institution decisions.

ACT, which represents small technology developers, made many of the same points but focused especially on the burden imposed on smaller companies. Its submission argues that RPI analysis can require examination of contractual, financing, affiliate and indemnification relationships and is far from the “de minimis” exercise the NPRM suggests.

The PTAB Bar Association said a substantial majority of its members could not support the proposal as written. The Association questioned whether replacing certification with identification actually solves the stated problem, as a requester willing to falsely certify that it is not estopped could presumably also omit an RPI from a disclosure. It offered several narrower alternatives, including an enhanced certification directed to patents already subject to a final written decision, disclosure only in that subset of cases, identification of related Office proceedings rather than RPIs, or case-specific disclosure where the patent owner presents a concrete basis for suspecting estoppel evasion.

US*MADE opposed the rule in still stronger terms, placing it in the context of what it sees as a recent trend in broader restrictions on administrative patent review. It argued that the Office has produced no evidence of improper reexamination requests and expressed concern that RPI information could be used to further restrict access to post-grant review.

Finally, the JPIA and JBMIA raised other practical concerns, explaining that the inherently fact-dependent RPI inquiry could force requesters to conduct extensive investigations simply to guard against penalties for an inadvertent omission, thereby discouraging use of ex parte reexamination. If the rule proceeds, JBMIA wants clear standards and an express opportunity to correct good-faith mistakes without penalty.

The comments submitted by individuals weighed slightly more in favor of the proposal, although most still urged the Office to include additional information and clarifications in the final rule.