Re: prior art and non-disclosure

Subject: Re: Re: prior art and non-disclosure

Comments:
: : : : Consider this scenario: : : Pretend that there is no Mexico-US co-mingling of cultures. Taco Bell etc. is not in existence. : : : : I, on my own, go to China and eat egg rolls. I come back to the US and I play with the food and independenly invent the burrito, and apply get a provisional patent application. I begin courting McDonald's for a license deal. : : Of course, I have McD sign a non-disclosure agreement. The non-disclosure agreement says I am the one who showed them the burrito and in so many words, own the rights to it (but not really, since it is not patented yet.) A strong non-disclosure agreement would read something like, "I am the one who showed McD the burrito. Before I came along, McD knew nothing about this. Therefore, if McD enters the burrito business, it must be under my license." : : Now, many books suggest having the licensee (McD) pay for the patent lawyers and fees. This makes good sense to me, since I don't have an extra $10,000 right now. These same books also recommend getting the license agreement to say that the licensee (McD) must pay to sue others for infringement. The logic behind this is again, the inventors lack of funds for legal fees. : : I just read another loong article, that said manufacturers typically cease royalties when infringement is discovered. This makes sense, because if the patent is weak, everyone could infringe it, making it almost worthless. : : Question 1: : : The above two points are in conflict. Would a licensee be motivated to write a weak patent, and then cry infringement, and then cease royalties? : : Suppose I get McD to sign a license agreement and they agree to pay for patent fees. I start getting rich. : : In the future, someone goes to Mexico, and it is discovered that there is prior art on my burrito, and Burger King begins selling burritos. : : Question 2: : : Would a non-disclosure really prevent McD from getting into the burrito business? Forever? : : Does anyone have any direct expereince with these issues. : Dear Bill, : It just does not work with the scenario as you have posted it. : M. Arthur Auslander : Auslander & Thomas-Intellectual Property Law Since 1909 : 3008 Johnson Ave., New York, NY 10463 : 7185430266, aus@auslander.com : ELAINE's Workshop® : E arly L egal A dvice I s N ot E xpensive™ : Reality Check®

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