PTAB Bar Association Submits Comments to USPTO's Proposed Rule on Identifying RPIs in Ex Parte Reexams

On Friday, August 21, 2026, the PTAB Bar Association submitted Comments to the USPTO’s Notice of Proposed Rulemaking (“NPRM”) entitled Requirement to Identify All Real Parties in Interest to a Third Party Request for an Ex Parte Reexamination, published at 91 Fed. Reg. 46038 (Docket No. PTO–P–2025–0545, July 22, 2026).  The proposed rule would require a third-party requester to disclose its own identity, as well as that of any real party in interest (RPI). 
 
The Association’s Comments questioned the need for the proposed rule, noting that the Office had previously rejected a similar rule in favor of the current 37 C.F.R. § 1.510(b)(6) requirement that a requester certify that no estoppel exists. If the Office believes that the self-certifications are no longer reliable, it was unclear how a new rule requiring self-identification of RPIs would address that concern. 
 
Ex parte reexaminations were intended, among other things, to allow parties to anonymously clear the way for market competition and investment, and the proposed rule is contrary to that purpose. Moreover, Congress chose (1) to not require a requester to identity RPIs, or even itself, and (2) expressly provided for confidentiality in 35 U.S.C. § 301(e), making the proposed rule a potentially ultra vires act. Given this background and the possible chilling effects on requesters, the potential negative unintended consequence of the proposed rule outweighs comparatively little gain.
 
The Association’s Comments also raised privacy concerns, encouraging the Office to take all practical measures to protect the identity of reexamination requesters in accordance with Section 301(e) and the applicable exemptions under the Freedom of Information Act, should the proposed rule go forward. 
 
Finally, the Comments proposed four alternatives for the Office to consider. 

• First, the Office could codify the approach reflected in its February 2026 notice “Filing Anonymous Requests for Ex Parte Reexamination Directed to Previously-Challenged Patents,” which allows for anonymous requests by requiring an affirmative statement that the RPI for the request is not the petitioner, RPI, or privy to the petitioner in a prior IPR and/or PGR proceeding when such a prior proceeding exists. 
• Second, the Office could consider a requirement to identify RPIs that is triggered only when a prior IPR or PGR resulted in a final written decision involving at least one claim for which reexamination is requested. 
• Third, the Office could require a requester to identify related Office proceedings, rather than identify all RPIs in every case, a practice many requesters already follow but which is not specifically required by rule. The Office could then require an enhanced estoppel certification or a confidential RPI statement only for the subset of requests where estoppel could possibly apply. 
• Fourth, the Office could reserve the ability to request additional confidential information regarding RPI upon a particularized showing or Office-identified concern.