Requirement To Identify All Real Parties in Interest to a Third Party Request for an Ex Parte Reexamination

DEPARTMENT OF COMMERCE United States Patent and Trademark Office 37 CFR Part 1 [Docket No. PTO-P-2025-0545] RIN 0651-AD94 Requirement To Identify All Real Parties in Interest to a Third Party Request for an Ex Parte Reexamination AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of proposed rulemaking.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) is proposing to amend the rules of practice to require a third party request for ex parte reexamination to include a statement by the third party requester identifying all real parties in interest to the ex parte reexamination request. This statement would be kept confidential upon request. This proposed requirement would provide the Office with a mechanism to evaluate statutory estoppel provisions. It would also enhance the Office's ability to respond to false certifications, misrepresentations, and fraud.

DATES:

Comments must be received by August 21, 2026 to ensure consideration.

ADDRESSES:

For reasons of Government efficiency, comments must be submitted through the Federal eRulemaking Portal at: https://www.regulations.gov. To submit comments via the portal, one should enter docket number PTO-P-2025-0545 on the homepage and select the “Search” button. The site will provide search results listing all documents associated with this docket. Commenters can find a reference to this notice and select the “Comment” button, complete the required fields, and enter or attach their comments. Attachments to electronic comments will be accepted in Adobe® portable document format (PDF) or Microsoft Word® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.

Please visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal

ts will be accepted in Adobe® portable document format (PDF) or Microsoft Word® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.

Please visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal. If electronic submission of, or access to, comments is not feasible due to a lack of access to a computer and/or the internet, please contact the USPTO using the contact information below for special instructions.

The docket for this rulemaking in the Federal eRulemaking Portal at https://www.regulations.gov contains a plain language summary of this proposed rule, as required by 5 U.S.C. 553(b)(4).

FOR FURTHER INFORMATION CONTACT:

Steven Fulk, Legal Advisor, at 571-270-0072, or Nicole Haines, Senior Legal Advisor, at 571-272-7717, with the Office of Patent Legal Administration, Office of the Deputy Commissioner for Patents.

SUPPLEMENTARY INFORMATION:

I. Introduction

Currently, a third party requester may submit an ex parte reexamination request anonymously without identifying the real party(ies) in interest to the request ( i.e., the identity of the requester and any other real parties in interest). See 37 CFR 1.501(d) and Manual of Patent Examining Procedure (MPEP) (9th ed., Rev. 01.2024,

Therefore, under the Office's current rules and procedures, the identity of the party(ies) seeking the reexamination may be concealed from both the public and the Office. While the Office recognizes the importance and continuing applicability of Section 301(e), that provision only requires keeping the requester's identity confidential from the public, not from the Office. Similarly, current 35 U.S.C. 315(e), which was enacted years after Sections 301 and 302, requires the Office to administer estoppels triggered by the identity of the party(ies) seeking reexamination

ile the Office recognizes the importance and continuing applicability of Section 301(e), that provision only requires keeping the requester's identity confidential from the public, not from the Office. Similarly, current 35 U.S.C. 315(e), which was enacted years after Sections 301 and 302, requires the Office to administer estoppels triggered by the identity of the party(ies) seeking reexamination. The Office is proposing to amend the rules of practice to require a third party request for ex parte reexamination to include a statement by the third party requester identifying all real parties in interest to the ex parte reexamination request. Upon request, that statement would be excluded from the patent and reexamination files and kept confidential.

II. Background

A. 2012 AIA Rulemaking

The Leahy-Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284 (2011)), effective in 2012, contains statutory estoppel provisions in 35 U.S.C. 315(e)(1) and 35 U.S.C. 325(e)(1) regarding proceedings before the Office. Specifically, these estoppel provisions prevent a petitioner in an inter partes review or post-grant review of a claim in a patent that results in a final written decision under 35 U.S.C. 318(a) or 328(a), or the real party in interest or privy of the petitioner, from requesting or maintaining a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review or post-grant review. When enacting the Leahy-Smith America Invents Act, a member of Congress stated “[t]he Office recognizes that it will need to change its regulations and require that ex parte reexamination requesters identify themselves to the Office in order for the Office to be able to enforce this new [estoppel] restriction.” 157 Cong. Rec. S1376 (Mar. 8, 2011) (Sen. Kyl).

In January 2012, the Office issued a Notice of Proposed Rulemaking that proposed new 37 CFR 1.510(b)(6) and (b)(7)

CFR 11.18 when transacting business before the Office, sufficient to ensure compliance with the statutory estoppel requirements. Id. Several comments in response to the 2012 proposed rule suggested that requiring identification of the real party(ies) in interest could have a chilling effect on the submission of ex parte reexamination requests. See Comment 20, August 2012 Final Rule, 77 FR at 46621. Several other comments pointed out that, should the Office retain the requirement for identification of the real party(ies) in interest, procedures for safeguarding anonymity are critical. See Comment 25, August 2012 Final Rule, 77 FR at 46622. Further, a number of comments suggested that the statement identifying the real party(ies) in interest be deleted because it is unnecessary in view of the certification in § 1.510(b)(6). Id.

Thus, as adopted, the 2012 rules allowed the identity of real party(ies) in interest to a request for ex parte reexamination to remain concealed from both the Office and the public.

B. Anonymous Requests for Ex Parte Reexamination

Currently, a real party in interest that wishes to remain anonymous when filing a request for reexamination under § 1.510 can do so by utilizing the services of a registered practitioner. See MPEP 2214, subsection I. In such an instance, the registered practitioner submitting a request for reexamination on behalf of the real party in interest to the request would be certifying, pursuant to § 1.510(b)(6), that the real party in interest was not estopped under 35 U.S.C. 315(e)(1) or 325(e)(1) from filing the request

10 can do so by utilizing the services of a registered practitioner. See MPEP 2214, subsection I. In such an instance, the registered practitioner submitting a request for reexamination on behalf of the real party in interest to the request would be certifying, pursuant to § 1.510(b)(6), that the real party in interest was not estopped under 35 U.S.C. 315(e)(1) or 325(e)(1) from filing the request.

Under 37 CFR 11.18(b), a party presenting a paper to the Office must certify, among other things, that: (1) all statements made therein are true or believed to be true, and that knowingly and willfully making any false or fraudulent statement is subject to criminal penalties; and (2) to the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office, and the legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law. As previously discussed, the certification requirement under § 1.510(b)(6), coupled with the party's § 11.18 certification obligations, had been considered sufficient to ensure compliance with the inter partes review and post-grant review statutory estoppel requirements.

However, this ability to file an anonymous request for ex parte reexamination is in tension with the estoppel provisions of 35 U.S.C. 315(e)(1) and 325(e)(1). 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.

III. Requirement To Identify All Real Parties in Interest to a Third Party Request for Ex Parte Reexamination

The Office is currently receiving a significant number of ex parte reexamination requests under 35 U.S.C

e)(1). 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.

III. Requirement To Identify All Real Parties in Interest to a Third Party Request for Ex Parte Reexamination

The Office is currently receiving a significant number of ex parte reexamination requests under 35 U.S.C. 302 that are directed to patents inter partes or post-grant review proceedings. Thus, there is risk that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) may apply to the real party(ies) in interest to an ex parte reexamination request. Additionally, because the issue of whether a party is a real party in interest can be a disputed question, there is a possibility that the Office's reliance on a party's 37 CFR 1.510(b)(6) certification 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). Under the current certification practice, the Office does not know the identity of the real party(ies) in interest to an anonymous request. That can lead to inefficient use of Office resources when considering whether estoppel applies, including when considering petitions by patent owners disputing a third party requester's § 1.510(b)(6) certification. Requiring disclosure to the Office of all real parties in interest to the request will promote complete and efficient evaluation of whether estoppel applies, thereby protecting patent owners from requests that are subject to estoppel. Ultimately, proceeding with a reexamination request where one or more parties should be estopped would not only be statutorily improper, but would waste Office resources in conducting an improper reexamination proceeding, and would be unfair to the patent owner to have to defend against a reexamination proceeding that should have been barred by statute

hether to allow an inter partes review to proceed.

The benefits of the proposed § 1.510(b)(7) identification requirement also extend to situations where there are no prior inter partes review or post-grant review proceedings involving the same patent. Gathering information regarding the real parties in interest to a third party request for ex parte reexamination would facilitate fraud mitigation. For example, the USPTO currently issues show cause orders in reexamination proceedings where an apparent misrepresentation has been made, such as unauthorized practice before the USPTO. Having the real party(ies) in interest information available upon filing of a request could eliminate ambiguities in such instances or permit the USPTO to act more efficiently when it is clear a misrepresentation was made in the request, thereby protecting the integrity of the U.S. patent system.

IV. Discussion of Specific Sections

The USPTO proposes to amend 37 CFR part 1 as follows:

Section 1.501(d)

Proposed § 1.501(d) would be revised to clarify that papers submitted “under this section” ( i.e., mere citations of prior art and written statements) can be submitted anonymously without any identification of the person making the submission. The language “under this section” would be added to distinguish citations of prior art and written statements submitted under § 1.501, which may still be submitted anonymously, from ex parte reexamination requests under § 1.510, which would now require identification of all real parties in interest to the request.

Section 1.510(b)

Proposed § 1.510(b)(7) would require a third party requester to submit a statement identifying all real parties in interest to the ex parte reexamination request ( i.e., the requester and any other

Determining whether a party is a real party in interest to the request is a highly fact-dependent question that is determined on a case-by-case basis. See Applications in Internet Time, LLC v. RPC Corp., 897 F.3d 1336 (Fed. Cir. 2018); see generally Taylor v

ation that changes in this rule will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b). This proposed rule would revise 37 CFR 1.510(b) to add a new provision requiring any third party request for ex parte reexamination to include a statement by a third party requester identifying all real parties in interest to the ex parte reexamination request. Third party requesters can be any person other than the owner of the patent being challenged. In fiscal year 2025, the USPTO received 452 requests for ex parte reexamination. In 174 (38%) of those 452 requests, the requesters paid the small entity fee. The USPTO will consider those 174 requesters who paid the small entity fee to be small entities for the purposes of this analysis. Ex parte reexamination requests could involve any patent issued in any technology area, thus the proposed new requirement may impact any industry. Although a substantial number of small entities may be impacted by the new requirement that third party requesters supply the identity of the real parties in interest, the proposed new requirement would result in only a de minimis additional burden on third party requesters over the current certification practice. This proposed rule does not impose any additional fees on impacted entities. Thus, for the foregoing reasons, the changes in this proposed rule will not have a significant economic impact on a substantial number of small entities.

C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be significant under section 3(f) Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review): The USPTO has complied with Executive Order 13563 (Jan. 18, 2011)

will not have a significant economic impact on a substantial number of small entities.

C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be significant under section 3(f) Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review): The USPTO has complied with Executive Order 13563 (Jan. 18, 2011). Specifically, and as discussed above, the USPTO has, to the extent feasible and applicable: (1) reasonably determined that the benefits of the rule justify its costs; (2) tailored the rule to impose the least burden on society consistent with obtaining the agency's regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector, and the public as a whole, and provided online access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens while maintaining flexibility and freedom of choice for the public; and (9) ensured the objectivity of scientific and technological information and processes.

E. Executive Order 14192 (Deregulation): This regulation is not an Executive Order 14192 regulatory action because it results in de minimis costs on respondents.

F. Executive Order 13132 (Federalism): This rulemaking pertains strictly to federal agency procedures and does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

G

ally excluded from review under the National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

O. National Technology Transfer and Advancement Act: The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does not contain provisions which involve the use of technical standards.

P. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq. ) (PRA) requires that the USPTO consider the impact of paperwork and other information collection burdens imposed on the public. The rules of practice pertaining to requests for ex parte reexamination have been reviewed and approved by the OMB under the PRA under OMB control number 0651-0064 (Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions). This OMB control number will be updated if necessary to reflect this action.

Notwithstanding any other provision of law, no person is required to respond to, nor shall any person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the PRA unless that collection of information displays a currently valid OMB control number.

Q. E-Government Act Compliance: The USPTO is committed to compliance with the E-Government Act to promote the use of the internet and other information technologies, to provide increased opportunities for citizen access to Government information and services, and for other purposes.

List of Subjects in 37 CFR Part 1

Administrative practice and procedure, Biologics, Courts, Freedom of information, Inventions and patents, Reporting and recordkeeping requirements, Small businesses.

For the reasons stated in the preamble, the USPTO proposes to amend 37 CFR part 1 as follows:

PART 1—RULES OF PRACTICE IN PATENT CASES

1. The authority citation for part 1 continues to read as follows:

Authority:

35 U.S.C. 2(b)(2), unless otherwise noted.

2