By Sarah Fendrick —

Effective
October 14, 2009, the U.S. Patent and Trademark Office revised the rules of practice to remove changes arising from the claims and continuations rules from the Code of Federal Regulations.  The Federal Register
notice stated the changes in the claims and continuation rules "addressed
the Office's patent application pendency and quality issues, but did so with
provisions that were objectionable to a large segment of the patent user
community."  The rules changes
were initially published in the Federal Register in August of 2007.  However, the changes were never
implemented as the result of a preliminary injunction granted by the U.S.
District Court for the Eastern District of Virginia on October 31, 2007 and the
permanent injunction granted by the District Court on April 1, 2008.  The
government appealed this decision, which was overturned in substantial part by
the Federal Circuit earlier this year.  The Federal Circuit had accepted review en banc, but briefing was postponed on
motion of all parties.

The
Final Rule amends title 37, part 1 of the Code of Federal Regulations as
follows:

Sections
1.17(f), 1.26(a) and (b), 1.52(d)(2), 1.53(b) and (c)(4), 1.75(b) and (c),
1.76(b)(5), 1.78, 1.104(a)(1) and (b), 1.110, 1.114(a), and (d), 1.136(a)(1),
1.142(a), 1.145, and 1.495(g) have been amended to remove changes in these provisions
in the Claims and Continuations Final Rule.

Sections
1.105(a)(1)(ix), 1.114(f), (g), and (h), 1.117, 1.142(c) and 1.265 and
1.704(c)(11) have been removed.

Section
1.704(c)(12) has been redesignated as 1.704(c)(11).

According
to the notice, "the Office is now considering other initiatives that would
garner more of a consensus with the patent user community to address the
challenges it currently faces."