“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.” – USPTO NPRM
The U.S. Patent and Trademark Office (USPTO) today published a Federal Register Notice proposing to amend the rules of practice to require that third-party requests for ex parte reexamination of a patent 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.”
In October 2025, USPTO Director John Squires sent a memo to all administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) designating Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (precedential) as precedential and informing APJs that the agency was restoring the practice of requiring petitioners before the PTAB to identify all RPIs prior to institution. The change was intended to address the exploitation of PTAB proceedings by foreign state-backed actors arising as an unintended consequence of less stringent RPI standards enforced by previous administrations.
In February 2026, the Office also de-designated Proppant Express Invests., LLC v. Oren Techs., LLCIPR2017-01917, Paper 86 (PTAB Feb. 13, 2019); and Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11 (PTAB Feb. 14, 2019) due to their conflict with the Corning Optical decision.
With respect to ex parte reexaminations, an RPI who wishes to remain anonymous can 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 Notice today 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 proposed rule would 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 Notice of Proposed Rulemaking (NPRM) also explained that the Office would “take reasonable steps to ensure that any decision will not disclose the confidential information.”
According to the NPRM, “the Office is currently receiving a significant number of ex parte reexamination requests under 35 U.S.C. 302 that are directed to patents previously challenged in between parties 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 inability of the Office to know the identity of RPIs can also lead to inefficiencies for the Office, said the NPRM, and “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.”
Comments must be submitted by August 21, 2026, through the Federal eRulemaking Portal at: https://www.regulations.gov/ docket number PTO-P-2025-0545.
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