USPTO Proposes Rule to Require Disclosure of EPRx Real Party in Interest

Need to know

The USPTO has issued a proposed rule that would require third-party requests for EPRx to include a statement by the requester identifying all RPIs to the request. According to the Office, RPI identification under the proposed rule will allow it to independently evaluate whether a requester is estopped under the statutory estoppel provisions of the AIA.  

On July 22, 2026, the U.S. Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that would require third-party requests for ex parte reexamination (EPRx) to include a statement by the requester identifying all real parties in interest (RPIs) to the request. The requirement would apply only to third-party requests for EPRx; it would not apply to requests submitted by parties who identify themselves as the patent owner. Currently, third-party requesters may submit EPRx requests anonymously without identifying RPIs. The USPTO explains that the proposed RPI disclosure requirement would provide it with a mechanism to independently evaluate whether the requester is estopped under 35 U.S.C. §§ 315(e)(1) or 325(e)(1).  

Background

After a final written decision is issued in an inter partes review (IPR) or post-grant review (PGR), the petitioner is estopped from requesting EPRx or from requesting or maintaining any other proceeding before the Office that challenges the same patent claims on any ground the petitioner raised or reasonably could have raised in that IPR or PGR. 35 U.S.C. §§ 315(e)(1), 325(e)(1). This estoppel extends to any RPI or privy of the petitioner.

While the USPTO requires petitions for IPR and PGR to identify RPIs, it merely requires third-party EPRx requests to contain a certification that the estoppel provisions of §§ 315(e)(1) and 325(e)(1) do not bar the requester from seeking EPRx. Moreover, the Office currently allows EPRx requesters to remain anonymous when filing requests by using the services of a registered practitioner, who certifies that the requester is not estopped. As such, current practice does not require third-party EPRx requesters to disclose the identities of RPIs.  

Rationale  

The proposed rule notes that the USPTO is receiving a significant number of EPRx requests directed to patents previously challenged in IPR and PGR, raising the risk that the estoppel provisions of §§ 315(e)(1) and 325(e)(1) may apply to the RPIs to those requests. It explains that, because the issue of whether a party is an RPI can be disputed, there is a possibility that reliance on certifications alone, even if provided in good faith, could result in the Office ordering EPRx on a request that otherwise should be estopped. In view of that shortcoming, among others, the Office deems requester certifications no longer sufficient to ensure compliance with the estoppel provisions of the AIA. Notice, § III.

Preservation of public anonymity

The USPTO’s proposed rule would allow EPRx requests to keep disclosed RPIs confidential. Under 35 U.S.C. § 301(e), a person citing prior art or written statements to the USPTO may request that the person’s identity be excluded from the patent file and kept confidential. In the Office’s view, § 301(e) requires keeping the requester’s identity confidential only from the public, not the Office. Thus, while the rule would require disclosure of the identity of all RPIs, it also would allow for the RPI identification statement to be excluded from the patent and reexamination files and kept confidential upon request. The Office intends to provide robust data security measures to ensure that RPI statements are kept confidential. 

Possible impact for pending EPRx requests

Under the proposed rules, it is unclear whether the RPI requirement will be enforced retroactively, and it remains unclear what recourse, if any, may be available for a requester to supplement the record if an anonymous EPRx request is pending upon adoption of the proposed rule. If a final rule is adopted, the final rule may provide further guidance on this issue. For now, EPRx requesters should conduct diligence similar to that conducted in IPR and PGR proceedings and be prepared to provide RPI information in EPRx request submissions. Relatedly, patent owners should consider advancing RPI-based arguments in their EPRx papers if and when a final rule is issued.    

Takeaways

If the proposed rules are adopted, each EPRx request would need to include an RPI statement whether or not the request is filed anonymously. Determining the appropriate RPIs is not always trivial and may require inquiries about control, funding, and leadership of multiple corporate entities.

In addition, if it is important to maintain the confidentiality of one or more RPIs to a request, an EPRx requester should ensure to affirmatively request confidentiality of the RPI information, since the USPTO’s standard procedure would make RPI information public.

The Office is seeking public comment on the proposed rule, with comments being due by August 21.