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). See37 CFR 1.501(d) and Manual of Patent Examining Procedure (MPEP) (9th ed., Rev. 01.2024, ( printed page 46039) November 2024) section 2214, subsection I. 35 U.S.C. 302 states “[a]ny person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301.” Under 35 U.S.C. 301(e), a person citing to the Office prior art or written statements may request that the “person's identity [ ] be excluded from the patent file and kept confidential.” When enacting Section 301(e), Congress explained that, “[w]ithout the confidentiality provision, competitors of a patent owner might be reluctant to cite prior art to the [Office].” H.R. Rep. 96-1307, 6, 1980 U.S.C.C.A.N. 6460, 6465. 37 CFR 1.501(d) further states “[i]f the person making the submission wishes his or her identity to be excluded from the patent file and kept confidential, the submission papers must be submitted anonymously without any identification of the person making the submission.”

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. 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). See Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act,77 FR 442 (Jan. 5, 2012) (“January 2012 Notice of Proposed Rulemaking”). Proposed § 1.510(b)(6) introduced a certification requirement that was adopted with some modification in a final rule. See Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act,77 FR 46615 (Aug. 6, 2012) (“August 2012 Final Rule”). As adopted, § 1.510(b)(6) requires that a third party request for ex parte reexamination contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post-grant review at 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1), respectively, do not bar the third party from requesting ex parte reexamination.

Proposed 37 CFR 1.510(b)(7) required identification of the real party(ies) in interest to a request for ex parte reexamination, but it was not adopted by the Office. See August 2012 Final Rule, 77 FR at 46621-22. At that time, the Office considered the certification requirement of § 1.510(b)(6), coupled with a party's obligations under 37 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.

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. 302 that are directed to patents ( printed page 46040) previously challenged in 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.

In view of these shortcomings, the § 1.510(b)(6) certification and the obligations of § 11.18(b) are no longer deemed sufficient to ensure compliance with the statutory estoppel provisions. The Office has determined that it needs the identity of all real party(ies) in interest to the reexamination request in order to effectively and efficiently evaluate 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) estoppel.

The Office is proposing to amend the rules of practice to add § 1.510(b)(7), requiring a 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, which statement would be retained in confidence upon request. Specifically, the Office is requiring identification of the requester and any other real parties in interest to the request. The Office recognizes the public's concerns about ensuring confidentiality of the requester's identity that are reflected in the comments to the January 2012 Notice of Proposed Rulemaking and will take appropriate steps to alleviate those concerns. When a third party requester files the proposed § 1.510(b)(7) statement according to parameters established by the Office and requests the statement 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. These measures would assist in providing the critical safeguarding of the confidential information desired by stakeholders and required by 35 U.S.C. 301(e) and 302, thereby reducing any chilling effect on the submission of ex parte reexamination requests. Furthermore, the Office recognizes that it may need to rely on the confidential real party(ies) in interest information in making determinations and decisions during the course of the reexamination proceeding. The Office will take reasonable steps to ensure that any decision will not disclose the confidential information.

The proposed § 1.510(b)(7) statement requiring identification of all real parties in interest to the ex parte reexamination request is expected to provide more efficient and effective evaluation of the estoppel provisions while still maintaining the confidentiality of a requester's identity as required by 35 U.S.C. 301(e) and 302. Also, the proposed § 1.510(b)(7) statement would better serve Congress's intent in enacting the Section 315(e)(1) and 325(e)(1) estoppel provisions to “significantly reduce the ability to use post-grant procedures for abusive serial challenges to patents.” 157 Cong. Rec. S936, S952 (daily ed. Feb. 28, 2011) (statement of Sen. Grassley). Further, the identification requirement in proposed § 1.510(b)(7) is consistent with the existing inter partes review and post-grant review practice of identifying all real parties in interest. See, e.g.,35 U.S.C. 312(a)(2) (requiring a petition for inter partes review to identify all real parties in interest).

The proposed § 1.510(b)(7) statement would also be beneficial should the Office implement the recently proposed changes to 37 CFR 42.108 (“Institution of inter partes review”) regarding the rules of practice before the Patent Trial and Appeal Board (PTAB). See Revision to Rules of Practice Before the Patent Trial and Appeal Board, 90 FR 48335 (Oct. 17, 2025) (“PTAB Notice of Proposed Rulemaking”). Proposed § 42.108(e)(5) would preclude inter partes review of a claim if it was found patentable following a prior ex parte reexamination request filed by someone other than the patent owner or the patent owner's real party in interest or privy. PTAB Notice of Proposed Rulemaking, 90 FR at 48341. A comment in response to proposed § 42.108(e)(5) raised concerns that a requester's ability to file an ex parte reexamination request anonymously would undercut this provision. See Comment PTO-P-2025-0025-2022, page 8 (available at www.regulations.gov/​docket/​PTO-P-2025-0025). This proposed § 1.510(b)(7) statement would ensure that the Office is aware of the identity of all real parties in interest to the ex parte reexamination request when determining whether 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 ( printed page 46041) real parties in interest). The statement would be required to be submitted electronically according to the parameters established by the Office and published on the website of the Office. To be consistent with 35 U.S.C. 301(e) and 302, proposed 37 CFR 1.510(b)(7) would further permit the statement identifying all real parties in interest to be excluded from the patent and reexamination files and kept confidential upon request. The requirements of proposed § 1.510(b)(7) would apply only to a third party request for reexamination, and would not apply to a reexamination request submitted by a party that identifies itself in the request as the patent owner. Although, § 1.11(d) requires all papers relating to a reexamination proceeding which have been entered of record in the patent or reexamination file to be open to inspection by the general public, the statement under proposed § 1.510(b)(7) would not be entered of record in the patent or reexamination file if a requester asks that it be kept confidential. Accordingly, confidential information submitted under proposed § 1.510(b)(7) would not be made available to the public under § 1.11(d).

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. Sturgell, 553 U.S. 880 (2008). For guidance in making this determination under § 1.510(b)(6) and proposed § 1.510(b)(7), parties may consult prevailing Federal Circuit precedent, precedential and informative Board decisions, and Office guidance, including the Office's Consolidated Trial Practice Guide concerning the determination of real parties in interest in PTAB proceedings. See Trial Practice Guide, October 2025, section I(D)(1), https://www.uspto.gov/​patents/​ptab/​trial-practice-guide.

V. Rulemaking Considerations

A. Administrative Procedure Act: This rulemaking would revise the procedures governing the filing of a request for ex parte reexamination with the Office 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. The proposed changes do not change the substantive criteria of patentability. Therefore, the changes in this rulemaking involve rules of agency practice and procedure and/or interpretive rules and do not require notice-and-comment rulemaking, pursuant to 5 U.S.C. 553(b)(A). See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) (explaining that interpretive rules “advise the public of the agency's construction of the statutes and rules which it administers” and do not require notice-and-comment when issued or amended); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice-and-comment rulemaking for “interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice”); In re Chestek PLLC, 92 F.4th 1105, 1110 (Fed. Cir. 2024) (noting that rule changes that “do[ ] not alter the substantive standards by which the USPTO evaluates trademark applications” are procedural in nature and thus “exempted from notice-and-comment rulemaking”); JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (“[T]he `critical feature' of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that it covers agency actions that do not themselves alter the rights or interests of parties, although [they] may alter the manner in which the parties present themselves or their viewpoints to the agency.' ” (quoting Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980))). However, the USPTO has chosen to seek public comment before implementing the rule to benefit from the public's input.

B. Regulatory Flexibility Act: For the reasons set forth herein, the Senior Counsel for Regulatory and Legislative Affairs, Office of General Law, of the USPTO has certified to the Chief Counsel for Advocacy of the Small Business Administration that changes in this rule will not have a significant economic impact on a substantial number of small entities. See5 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). 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. Executive Order 13175 (Tribal Consultation): This rulemaking will not: (1) have substantial direct effects on one or more Indian tribes; (2) impose substantial direct compliance costs on ( printed page 46042) Indian tribal governments; or (3) preempt tribal law. Therefore, a tribal summary impact statement is not required under Executive Order 13175 (Nov. 6, 2000).

H. Executive Order 13211 (Energy Effects): This rulemaking is not a significant energy action under Executive Order 13211 because this rulemaking is not likely to have a significant adverse effect on the supply, distribution, or use of energy. Therefore, a Statement of Energy Effects is not required under Executive Order 13211 (May 18, 2001).

I. Executive Order 12988 (Civil Justice Reform): This rulemaking meets applicable standards to minimize litigation, eliminate ambiguity, and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

J. Executive Order 13045 (Protection of Children): This rulemaking does not concern an environmental risk to health or safety that may disproportionately affect children under Executive Order 13045 (Apr. 21, 1997).

K. Executive Order 12630 (Taking of Private Property): This rulemaking will not effect a taking of private property or otherwise have taking implications under Executive Order 12630 (Mar. 15, 1988).

L. Congressional Review Act: Under the Congressional Review Act provisions of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801, et seq.), the USPTO will submit a report containing the final rule and other required information to the United States Senate, the United States House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this rulemaking are not expected to result in an annual effect on the economy of $100 million or more, a major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-based enterprises to compete with foreign-based enterprises in domestic and export markets. Therefore, this rulemaking is not expected to result in a “major rule” as defined in 5 U.S.C. 804(2).

M. Unfunded Mandates Reform Act of 1995: The changes set forth in this rulemaking do not involve a Federal intergovernmental mandate that will result in the expenditure by State, local, and tribal governments, in the aggregate, of $100 million (as adjusted) or more in any one year, or a Federal private sector mandate that will result in the expenditure by the private sector of $100 million (as adjusted) or more in any one year, and will not significantly or uniquely affect small governments. Therefore, no actions are necessary under the provisions of the Unfunded Mandates Reform Act of 1995. See2 U.S.C. 1501 et seq.

N. National Environmental Policy Act: This rulemaking will not have any effect on the quality of the environment and is thus categorically excluded from review under the National Environmental Policy Act of 1969. See42 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.

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

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

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

2. Section 1.501 is amended by revising paragraph (d) to read as follows:

3. Section 1.510 is amended by adding new paragraph (b)(7) to read as follows:

91 FR 46038