Patents > Patent Litigation

Duty to disclose "patent pending"; trade secret damages?

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PHInventor:
Under a mutual NDA, I disclosed various reductions-to-practice to a manufacturer. Many items have been described in my patent applications, and some are trade secrets.  I only labeled "Patents Pending" on one specific item; the rest did not specifically say "patent pending."

The manufacturer has ceased returning my calls and emails. For various reasons I do not want to make any further communications with this manufacturer.

Let's say the manufacturer comes out with a product that uses my patent-pending ideas. Let's also say that, in the future, I will be allowed claims that cover some aspects of the manufacturer's product.

1. In seeking damages for infringement of my allowed claims, would the fact that I failed to explicitly put "patent pending" on various items weaken my case? 

2. Would I have any strong argument for claiming damages from theft of my divulged trade secrets?  The NDA prohibits both parties from sharing information with third parties.  My only thought is that the manufacturer, in selling a product based on my divulged secrets, would be "sharing" with the public, but this seems to be a weak argument.

3. To strengthen my future positions on #1 and #2 above, are there any other communications I should make to make to the manufacturer at this point? 

PHInventor:
I should also note that my applications are published, but I have not disclosed the publications to the manufacturer.

MYK:
I'm guessing that this is tied in with your other question regarding trade secrets and NDAs.

If you want to be able to go after the manufacturer for royalties under provisional rights, you would need to provide actual notice to the manufacturer of your published applications.  See 35 USC 154(d).
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_154.htm

I can't answer the rest of your questions;  it mostly depends on the terms of your NDA and your state laws.

NJ Patent1:
PHI:   I'm in general agreement w/ MYK, with one comment.  "Marking" vel non (i.e. patent 1,234,567) only influences the date from which infringement damages might be calculated, not your absolute right to collect eventual damages. You did type "allowed claims".  Did you mean that, or just "claims published in a published application" (implicating provisional damages)?  If, in your opinion, or that of your counsel, claims to your issued patent (i.e. "allowed claims") are being infringed, then a so-called "cease and desist" letter is in order.  Just be ready for a possible Declaratory Judgement action re: invalidity, maybe noninfringement.  Things appear to be heading south.  IMO less said the better, unless it's attoney-to-attorney.  Pro se infringement litigation?  Well, it's been done, but ...

Robert K S:
If your applications are published, then the inventions they disclose are not trade secrets.

EDIT: I guess you understood that.  I was misreading the second sentence in your original post.

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