Key Takeaways
- The USPTO has proposed a procedural change to end anonymous requests for ex parte reexamination in order to increase the agency’s role in prohibiting unlawful “second bites at the apple.”
- Under the proposal, requestors’ identities could be submitted confidentially to the USPTO by request.
- The comment period on this proposed rule ends on August 21, 2026.
Through a recent Notice of Proposed Rulemaking, the U.S. Patent and Trademark Office is seeking to end anonymous requests of ex parte reexamination filings. The USPTO says that this change is needed to ensure thorough enforcement of estoppel laws.
Ex parte reexamination (“EPR”) is a reexamination of an issued patent, between the USPTO and the patentee. The purpose of EPR is to reconsider issued patent claims that may be invalid based on prior art. Third parties are permitted to request EPRs—and the UPSTO relies heavily on third-party applications to identify patents that should be reviewed under EPR. By law, an applicant may request that their “identity[] be excluded from the patent file and kept confidential.” 35 U.S.C. § 301(e). As Congress explained in enacting that law, “[w]ithout the confidentiality provision, competitors of a patent owner might be reluctant to cite prior art to the [USPTO].” H.R. Rep. 96-1307, 6, 1980 U.S.C.C.A.N. 6460, 6465. By making applicants’ identities confidential, the USPTO gets the upside of robust EPR reporting, without any downsides to applicants.
Until now, 35 U.S.C. § 301(e) has been implemented through anonymous applications. Under 37 C.F.R. § 1.1501(d), EPR applications may be “submitted anonymously without any identification of the person making the submission.” Anonymous applications are filed through a USPTO-registered practitioner; the practitioner is publicly identified, but the applicant is not. The proposed rule seeks to change that by requiring disclosure of applicants’ identities to the USPTO.
The purpose for this change, the USPTO says, is for the agency to independently verify compliance with estoppel provisions under 35 U.S.C. § 315(e)(1) and § 325(e)(1), which govern inter partes review (IPR) and post-grant review (PGR) proceedings, respectively. They estop any party to an IPR or PGR from getting a “second bite at the apple” in other USPTO proceedings by re-raising arguments that were or could have been raised in the IPR or PGR, respectively.
Presently, EPR applicants (even anonymous applicants) must to certify compliance—they must state, under penalty of perjury, that the real party in interest is not estopped from raising the arguments in their EPR application. The USPTO no longer believes that this is sufficient due to perceived risks of wasted agency resources and unfairness to patent owners (who may be forced to defend against EPRs that should have been estopped).
Under the proposed approach, all EPR applicants would need to identify the “real party in interest,” but could request it be kept confidential. If that request were made, the real party in interest’s identity would not be part of the record. Only the USPTO would see the information which it would use to enforce the estoppel laws.
The comment period on this proposed rule ends on August 21, 2026.
This proposal follows a late-2025 proposed rule to tighten estoppel rules for IPR and PGR applicants. The 2025 proposed has not yet been made final, but the more-recent notice signals the USPTO’s ongoing interest in vigorously enforcing estoppel rules and protecting patent owners.
If you are interested in submitting a comment on the proposed rule or have questions about how this rule would impact you, please contact your Dinsmore IP attorney.