Patent Law Flashcards

1
Q

What is a Patent?

What are invention patentable?

A
  • monopoly granted by the US government covering a design or function
  • where the individual must enforce the patent, gov. will not enforce
  • and person entitled to patent unless gov. can prove your not entitled to one

should be able to get a patent with anything new and useful process, machine, manufacture, or compensation of matter and useful improvements thereof, subject conditions/requirement of this title

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2
Q

What do you get when you get a patent?

A
  • a monopoly which you can control the amount paid for the product from 20y after the date of filing
  • apply market economics and determine how much to charge based on how much the market can bear
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3
Q

Name the applications for a patent.
What’s the purpose of having different types?
What is the individual total cost generally associated with them?
Describe each type.

A

Protects patents in areas of marketability, so must chose wisely to acquire rights in the type not already USG protected or in public domain.

Plant, $5k
asexually reproduced plant (US rose with good stem spliced with EU rose with big bud)
Design, $1.5k
protected ornamentation (shoe tread, Statute of Liberty); requires picture and a little bit of explanation
Utility, $5k
function or use (rubik’s cube); requires design or drawings
Provisional, $2.5k
good for 1y; after 1y file a utility or dismiss; quick patent; no formal requirements such as a claim.

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4
Q

Discuss Patent Economics.

A

There is a monopoly. Inventor has invested in patent, now we need to get in the black. Consider: What’s the value, benefit, and cost.
Money and Business tend to control everything. Let’s make a million dollars, acquire the patent rights and find the market.

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5
Q

United States Patent System is based in constitutional law starting with Article * Section * Clause * stating…
Rationale?

A

Article 1 Section 8 Clause 8 stating congress shall have the right to promote science and the useful arts by securing for limited time their writings and discoveries (20 years)

Society as a whole can advance

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6
Q

American Inventors Protection Act

A

First to file rather than first to invent; April 2013

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7
Q

What are the elements to get a Patent?

A

• Patentable Subject Matter
o processed machine made or made by man
• Novelty
o exact same thing had not been done before; must be new
• Non-obviousness
o non-trivial extension of the arts is required; would someone skilled in the art try it; stiffest element bc once idea communicated it seems obvious
• Utility
o does it have a purpose or effect that is useful; does/changes something for some purpose or effect
• Enabled
o Provided enough information for one skilled in the art to practice the invention; “one skilled in the art”: someone who would understand the technology without lay explanation; pick up a patent; read it; and practice the invention without additional materials

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8
Q

Describe a Patent Description.

Procedure for creating the Patent Application.

Procedure when filing with USPTO.

A

• Start out with a patent #
• Date of patent
o effective date of when the monopoly went into play
• Title and what it covers
• Inventor and maybe assignee
• Split in 1995: before, 17 years after the date of issuance & after, 20 years after the date of filing

PatApp:
•	Cover Letter
•	Specification
o	directions; 
•	Drawings
o	explain to someone else how to use or make, here the use of pics is prevalent 
•	Claims	
•	Oath/Declaration
•	Power of Attorney
o	I hear by appoint Chris to go prosecute this at the PTO
•	Money Fees

USPTO:
• must tell them the type of patent
• original application- first time to file
• claims of priority
continuation- file again on an original patent
continuation in part- file again on an original patent but include new claims
Divisional- response to election/restriction action to divide the claims in the patent and prosecute parallel

Once filed get a receipt and application #; now can mark patent pending; keep #’s secret

Initial Examination

Assigned to Examination Group:
•	Examiner gets points off of:
o	reading the application
•	18 months
o	2 rounds of rejection
•	6 months per round
o	disposition
•	1 month
o	Issuance
•	4 month

You may appeal the patent if it does not go through (2 years) ($15-20k just to appeal)

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9
Q

35 USC 132: Objections, Rejections, and Election/restriction

A

o objections – you have the form wrong, relatively simple to fix; object to details in the claim

o rejections – things like anticipation or obviousness, subject matter, novelty, and enablement ; 101, 102, 103

o election/restriction – patent examiners specialized to certain areas, here you must either elect or restrict your invention to a single patent for a single invention; more than 1 invention then choose 1

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10
Q

What is not patentable?

A

Abstract Ideas, Laws of Nature, Physical phenomena

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11
Q

3 types of Utility Patents claims and 3 different types of utility.

A

Specific Utility: particular purpose; written description;
i.e.: claims to cure headaches; consider all cellular material or just the cellular material in a bamboo stick used to light the bulb

Credible: extremely efficient; works for what you say it is for; cannot claim something unproven;
i.e.: machine in perpetual motion

Substantial Utility: add to the stock of knowledge; arguing you need to be something more than what is already known
i.e.: cannot claim genetically altered mouse as snake food; but can claim the GMO mouse whose immune system can withstand a carcinogenic nut.

Types: cannot write a specific utility with general utility claim

General Utility - useful for any purpose

Specific Utility - useful for a particular purpose

Moral Utility - the ability to advance particular moral ideals of a particular sect of society

i. Why is it problematic?
ii. Because it imposes the morals of the majority on the rest of society. Morals are generally tied to religion.

i.e.: fraud, showing note thing and selling another

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12
Q

Where does anticipation stem from and define it.

Consider genus and species claims.

A

35 USC 102 - when the exact same invention is found in prior art; does not have to have the exact same thing to be anticipation but it has to be close;

Consider: what is determined by the claims must be new; claims define the meets and bounds of the invention; not in the claims then they don’t have a legal right to it.

If anticipated then claims “read on” the device. Read onto the claim are words of practice.

i.e.: consider a genus (broad) or species (narrow) claim. Genus requires more disclosure such as a similarity of structures, shared properties, properties which are different, and physical/chemical compounds; for this broad claim you must have nothing in the prior art disclosing anything within the scope, thus no other species within the genus claimed; whereas, a species claim can be valid even being in a prior art genus area, so long as the claim is not closely similar to prior claims.

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13
Q

35 USC 102 old section, then describe how the new section changes 102.

A

Novelty - US does not trust foreigners, has to be in writing if it comes from another country, first person to invent in this country even if the invention was invention in EU a year prior.

New- Now the first to file in the US and tells everyone to be quiet before. Although, the constitution requires it to be the inventor who gets the patent. Make a constitutional claim now if not the true inventor such as, “He himself did not invent the patent and therefore is in violation of the patent.”

(a) Must prove that someone else knew about it before you invented it, if so then you do not get the rights to the patent
(b) public use on sale
a. what is a public use – can occur even though public does not have access to device, it’s the benefit of the invention that gets tracked
i. exposed in public
b. what does it mean to be on sale – got the idea close enough to what is going to be sold
(c) did they abandon the invention
a. second person to file
(d) PCT & NAFT agreements that govern how patents work around the world that states if file in one country then must file in another country within 12 months
(e) Invention was described in
a. there is one grace period
(f) Derivative work of someone else; unless he himself did not invent the subject matter
(g) abandoned, compressed, or concealed

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14
Q

Consider the fake juice container on the store counter with the actual juice supply underneath which requires less cleaning and is lower health risk. ∆ brings a claim for moral utility of the patent because it commits fraud on the consumer. What’s the courts rationale behind consumer fraud and the patents moral utility?

Patent practice focuses on what?

Where and what should the ∆ filed additionally?

A

Just because it’s receiving fluid from underneath does not deprive a moral utility. In the patent world deceptive trade practices is a different issue. The USPTO looks to where the utility is (function/use) and looks past deceptive practices when the benefit of the utility is high.

Patent practice focuses on the legal and not illegal.

∆ should of filed a common law counterclaim of fraud.

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15
Q

35 USC 103

Describe it.

Describe the test.

What are the secondary considerations.

A

Nonobviousness

When a variation of the invention is found in the prior art and the current invention is obvious based upon a small amount of variation some skill in the art; consider whether if the something claimed advances the prior art in a direction where it was originally headed.

Note: obvious a change in substance changes the patent, but look something you would not expect

Test:
ascertain the scope of the prior art in 102;
ascertain the differences between the prior art & the invention (looking at subject matter as a whole not individual elements)

Secondary Considerations: Objective consideration
U.	Unexpected results 
C.	Copying by competitors 
C.	Commercial success (rubik's cube) 
P.	Proper failure of others
I.	Independent development
L.	Long felt unresolved need (selling of 1M units in 1 day)
L.	Licenses
S.	Skepticism
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16
Q

Consider public use with respect to Statutory bars.

Public v Private use

Experimental Use

On Sale bar

3p activities

Non-informing use

A

Public use (public benefit) means the inventor deprived benefit from the invention by use or sale of the product (any benefit received by inventor); Consider the number of people that saw the invention; intent of observer (allowed to look at everything or shown in manner to preserve a secret so people did not know what they were looking at); number of users in association of invention; extent of observers understanding invention

Public use applies when a private person benefits from the invention within the public (benefit received in public); consider the public use referring to society’s benefit; consider out how someone skilled in the art would get access to it

Private - inventor invents device brings to work but maintains control of the secret the entire time, this is not public use; rationalized due to instant pop craze (rubik’s cube)

Exp. Use- item was used in a public location but does not reveal public knowledge because its not public use that is prohibiting its public knowledge

i.e. roadway installed 6 prior patent filing to see how it would handle traffic, was considered experimental use.

On-sale- product is subject of commercial offer to sale and was ready for patenting; does not actually mean you have sold a physical product, but you have disclosed the invention and got cash for the invention.

3p- must consider how the information got into the public; info disseminated broadly or through exp. use

Non-inform.- take the patent and use in the public without the inventor knowing

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17
Q

A __________ ___ is considered an action that creates a statutory bar under the public use doctrine, but there are factors to discredit this. 11 factors.

A

Experimental Use

  • Control of the invention
  • Monitoring of the experiment
  • Purpose or intent in testing invention (red. to practice)
  • ascertaining the proper results
  • making alteration when deemed necessary
  • unrestricted use by others
  • compensation for use or for profit
  • payment of expenses
  • retention of ownership
  • whether the experiment was on the claimed item
  • markings or contracts of confidentiality and secrecy
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18
Q

If someone invents something and keeps it secret or hidden and then many years later someone else files for patent on it, who wins?

A

2nd person because first person kept it a secret (deprived society of the benefit) and second person filed first unless a fraudulent taking

Think of it as the first person to give information in exchange for a monopoly.

Party would want to argue abandonment, suppression, & concealment.

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19
Q

Look for novelty in an invention from what date?

A

Priority Date; can look back to parent patents date if referencing them

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20
Q

35 USC states “known or used by others,” what does this mean?

A

Referencing to public use available and accessible to other people (corsets) and private use where its not (rubix cube)

21
Q

Patent Interference parties.
Counts
Who has the burden?

A

Senior Party – person filed first
Junior Party – second person to file

Counts – COA in patent law; a claim inside the patent saying they invented something first; once filed then cannot file any additional evidence to address points

Party making the motion.

22
Q

What is required for a first inventor defense.

A

provision applies only if the party being sued had, acting in good faith, reduced the subject matter in question to practice at least one year before the effective filing date of the patent being sued on. (The effective filing date is defined as including validly claimed priority dates.)

First to Invent
• person shall be entitled to invention unless it was known and used by others
• cases are not clear whether known and use is equivalent to public use

Second inventor is entitled to patent unless he acquired a negative right to it

  1. You can buy rights to a patent (just like land)
    a. lease (buy rights, and rent)
  2. Date of invention controls
    a. unless someone has prior use

lag between 1st and 2nd; 1st gets presumption

23
Q

Under constitutional law you must be an inventor to have a patent. Consider conception. Consider Diligence. Reduction to Practice. Two inventors who gets priority considering conception, diligence, and reduction to practice.

*not relevant to new law.

A

Conception refers to the inventor having the idea and the means to carry the out (make it).

Diligence referes to amount of time an inventor spends making an invention; does not work continuously then abdomens invention; this being the deciding factor in most cases

Reduction to Practice refers to Constructive and Actual. Constructive allows someone skilled in the art to examine it and make it by filing it or through drawings. While actual refers someone actually constructing the invention physically or through a prototype.

Priority goes to the person who’s diligence can relate back the furthest; with conception and continued diligence over the person who has broken diligence;

Notes taken by attorney (reduction to practice) may help prove these two considerations

  1. C D———RTP
  2. CD—RTP
  3. C D——RTP
    Old law says:
    1 v 3: 3 wins
    2 v 3: 3 wins
    1 v 2: 1 wins
24
Q

Competing Claims: Corroborative Evidence and factors

A

A form of evidence that you did not create yourself; picture with a date or a purchasing department have the receipt needed.

Factors:

  1. relationship between the witness and prior users
  2. the time period the event in trial
  3. interest of corroboration witness in the subject matt in suit
  4. contradiction or impeachment of witness testimony
  5. extent and details of corroborating testimony
  6. witness familiarity with the subject matter of patented invention and prior use
  7. probability that a prior use could occur considering the state of the art at the time
  8. impact of invention on the industry, and the commercial value of its practice
25
Q

35 USC § 103
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

A

Statutory Interpretation
• as a whole
o non-analogous art and cannot pick out an individual element must take the whole thing at one time
• one skilled in the art
o classification that changes in every circumstances
o art area changes
• scope of prior art
o anything that is related to the prior art
• secondary considerations
o commercial success
o argument of engineering side v. real world side
• synergism
o is out there and is not followed
o argue un-expected results not synergism

26
Q

Factors when determining whether a person is someone of ordinary skill in the art?

What is suggest and combine.

A
  1. education level of the inventor
  2. type of problems encountered in the art
  3. prior art solutions to those problems
    a. somewhat versed in improvements
  4. Speed with which inventions are made
    a. how often new technology
  5. sophistication of the technology
    a. what comprises of people in the industry
  6. educational level of active works in the field
    a. education level of people doing this in the field

Hindsight Rule: means and suggests the direction which the invention is going; prior art suggest this of the notion: what we did and why we did it.

Means and suggests is a factor to consider whether there is a reas. expectation of success

27
Q

What does skillful mechanic mean?

A

The invention must be “more than the work of a skillful mechanic”
• Must be able to show the mechanic’s knowledge base at the time in question is not equivalent to our; show that it was simply assembled differently; burden on examiner to prove it was not.

28
Q

What is an analogous art? Factors?

A

Something similar or addresses the same problem & picking the right references in the right combination

Whether or not it is from the same field or endeavor; whether its directed at solving the same problem (can even be from a different field and solve the same problem)

29
Q

35 USC 112

A

Specification - ascertains anything in common or use and protects innocent from using

Factors: WEBD
Written Description - expressed format of the invention;locks them in at a specific time

Best Mode- best use the inventor views it at the time of filing; was there a preferred mode:
• inventors preference at the time of filing
• must give example in terms of whats necessary for practice; may introduce best mode and not tell them what’s best mode

Enablement- must be terms sufficient for one in the art to practice; does not require manufacturing drawings; just sufficient information to avoid the undue experiment exception
o theory does not matter so long as an example works

Definitive- experimentation is allowable but undue experimentation is not

30
Q

Factors for undue experimentation stemming from obviousness

A
  1. Quantity of experimentation
  2. direction/guidance provided for the experiment
  3. presence of working examples
  4. nature of the invention
  5. state of prior art
  6. skilled in the art
  7. predictability of the art
  8. the breadth of the claim
31
Q

Describe a Patent Claim structure.

Differentiate between Independent and Dependent claims.

What is a Omnibus claim?

What is a Jepson Claim?

What is a whereby clause?

A

A claim has is a ‘single sentence’ starting with a ‘capital letter and ending in period’. It has a ‘preamble’, ‘transition phrase’ and has a ‘body with elements’.

Independent claims start with a single sentence beginning with a capital and ending with a period, thus they stand out. Dependent claims are the 2nd claim referencing and reading in conjunction with the independent claim; add additional limitations to previous claims or other independent claims.

Multiple dependent claims reference more than one independent claims and cannot come after a previous dependent claim. Must use the words “OR.”

Omnibus claim - Used in order to skirt treaty law, even if not enforceable in the US.

Jep- begins with the phrase: “the improvement which comprises” admits there is a body of prior art, but this claim adds something else to improve it.

Whereby- Whereby only adds how the items interact; Adds nothing good to the legal description in the patent claim (no additional limitations, only describe an advantage of the item); potentially ruin the claim if it is wrong; soon as it is introduce into a claim then not allowed to introduce any other claim elements – must finish phrase once start with whereby

32
Q

Patent claims have three parts, describe.

A

Preamble - generally is a broad concept or idea

Transitional Phrase - tells whether other things can or cannot be added to body
Language: “comprising of” is considered open language including at a minimum the previous claims and additional items do not matter; “consisting of” is considered closed language (adding an additional item does not infringe a claim that only has anything but what you are claiming); “Essentially consisting of” is considered closed to items that materially change the combination (chemistry application)

Body - everything else that comprises the claim (elements); use “a” to introduce the first time then use “the” to talk about subsequently

33
Q

Define reissue, broadening reissue, reexamination, and certificate of correction

A

Reissue- submit new prior art because of a question of patentability; proper so long as it issues narrower claims

Broadening reissue- expand scope of what your claims protect within 2 years of issuance

Note: get a broad claim in then malpractice if you don’t get the narrower claims in as well.

Reexamination- consider a new patent because of a question of patentability; must be filed within 2y; USPTO can bring this up at any time or 3p can bring it

COC- USPTO publishes your application; your client wants to fix that; used for minor typographical errors; submit fee along with explanation that it was a mistake made in good faith

34
Q

Recapture rule

A

cannot regain a claim that was previously abandoned to gain allowance of the patent application. This is a defense in an infringement action as it allows the defendant to attack the validity of a reissue patent

35
Q

Define Doctrine of intervening rights

A

results from an examination proceeding; no reissued patent can go after claims if they were not in the original patent

36
Q

Inequitable Conduct (fraud): Did you lie to USPTO and was there a material deficiency?

Who has the duty?

Effect: Three levels of penalties for inequitable conduct and Three options for disclosing material information, what to do if someone has cited a patent against you?

How do you purge?

Duty of Disclosure 37 CFR 156

Cumulative references

A

intentional failure to disclose material info. which results in unenforceability of the entire patent; fraud on the patent office; only exist in US

Material to patentability: not cumalitive; establishes a prima facie case or refutes position application taken on patentability; aware of something help examiners case then disclose

Who: inventor, attorney or agent, every other person involved with application

Effect:
Level - Makes patent unenforceable; Invalidate patent justifies an award of attorneys fees; Invalidate patent and Justifies attorneys fess and justifies antitrust claim

Disclosing- Expressly advise examiner; Advise examiner of what the facts are; Overcome it and establish patentability

a. There is a duty to disclose all material information the individual filing for the patent knows to be material
b. This applies to inventor, inventor, agent, or anyone else associated with the patent application
c. Information is material when it is not cumulative: Not cumulative or is inconsistent with any position you took

CR- one that substantially reiterates verbatim the teachings of a reference that was either previously relied upon or discussed in a prior Office proceeding even though the title or the citation of the reference may be different

37
Q

What is double patenting?

A

Idea you cannot get tow patents for one patent; 1 patent covering device; two claims being the same

Consider:
Statutory (cannot be overcome) & Obviousness (can be overcome)

Provisional rejection- rejection has not matured

Claim by claim requirement; whole patent is not invalid just the one patent

38
Q

Can you extend a patent monopoly and how?

A

Under 35 USC 156

May extend for up 5 years if:
•	interference takes place
•	successful appeal
•	FDA approval
•	secrecy order
o	defense dept. delay
•	may get additional days if take a longer than usual time but this number of days they will decide what days those are; for delays of PTO only; cannot be expired
39
Q

35 USC 154 What are your patent rights?

A

right to exclude other from making, using, offering for sale, importing, or selling invention throughout the US; if process then right to exclude others from using, offering for sale or selling throughout US or importing into US inventions made from that process

Begins on the date of filing and ends in 20 years

40
Q

Patent Infringement two types.

A

Literal Infringement- controlled by statutory language, specifically those rights granted by 154

Doctrine of Equivalents- equitable doctrine where we expand the scope of the claim (PH of 6 or 9)
o if you put limitation of 6-9; we have to ask question why you put in 6 then if you don’t put in the claim documentation; if documentation then might extend it to 5.8, 5.9… look for a deviation of 10%

41
Q

35 USC 217

35 USC 171

35 USC 161

A

whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

Protects Infringement on design patents ornamentation

Protects Infringement on plant patents going to their asexuality

42
Q

Patent Damages: Laches and Equitable Estoppel

A

two main defenses to infringement that arise from not taking action:
“Laches” is a defense based upon the passage of time before litigating.

“Equitable estoppel” infringement is barred when a person has relied they are not going to get sued for infringement; last six years, then the amount of evidence is required

43
Q

Attempting to interpret a patent claim, what should you use?

A

claim cannot be interpreted without going beyond the claim itself

Specifications- manner/process of making and utilizing patent so anyone skilled in the art can use it

Drawings- visual representation can flesh out words with the same limitations as the specification

File Wrapper- contains the entire record; procedural history

44
Q

Shop Rights

A

done on company time and company resources, thus the company should get the rights

45
Q

Remedies & Damages

Injunction
Actual
Willful (9) factors

A

inj.- accords to principles of equity

Act.- damages adequate to compensate for infringement, but no more than reas. royalty cost (3-6%); enhanced damages and attorneys fees (may award up to 3x the amount found)

Will.-

o look at deliberate copying
o good faith belief on invalidity based on non-infringement opinion
o behavior in litigation
o defenders size and financial condition
o closeness of the case
o duration of the misconduct (know they were doing it and continued to do it anyways)
o remedial action by the ∆ (make changes to get away from patent)
o ∆ motivation for harm (hurt yourself short term to kill someone else, to help you long term)
o whether the ∆ attempted to conceal the misconduct (dirty hands, destroy all evidence)

46
Q

There is a difference between doctrine of equivalents (judicial) and equivalents in 112 paragraph 6.

A

112- Means Plus Function Claims; puts together all the detail in paper your writing up on the application

Doctrine of Equivalents- equitable doctrine where we expand the scope of the claim beyond whats specified in claim

47
Q

Given that patent trademark and copyright law all exist, and the constitutional mandate of the mandate of patent law to science and the useful arts. Why do we have this distinction?

A

to promote progress; clause in the Constitution that allows for the establishment of the USPTO; The USPTO’s mission is empowering U.S. innovators to protect great ideas with patents;

48
Q

Be able to know the term of patents and whether or not that is good or bad?

A

Pros: allow inventor time to recoup investment; award them with control over a market for a reasonable period of time; encourages people to license patent

Cons: slows the advancement of society; potential to slow down technology because one person has rights to a key portion of advancement; patent trolls

49
Q

Patent filings may be what: (4)

A

Original application- first time to file
continuation- file again on an original patent
continuation in part- file again on an original patent but include new claims
Divisional- response to election/restriction action to divide the claims in the patent and prosecute parallel