When facing a claim for misappropriation of trade secrets, defense counsel should not ignore the opportunity for using patents and patent-related materials to defeat the claim. Unfortunately, many attorneys handling trade secret cases, specifically those brought in state court, may not be familiar with patents. This is understandable, as the overwhelming majority of lawyers do not work regularly with patents or search for and analyze patent filings or other forms of prior art. Yet these documents can be invaluable when defending a trade secrets case. Often patents and patent-related materials can prove fatal to the claim by establishing that the allegedly secret information fails to meet the definition of a “trade secret” as set out in either the Texas Uniform Trade Secrets Act (“UTSA”), or the Federal Defend Trade Secrets Act (“DTSA”).

The key to being considered a “trade secret” is that information must in fact be a secret. According to Texas UTSA, a “trade secret” is information that “derives independent economic value, actual or potential, from not being generally known to, or being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.” Tex. Civ. Prac. & Rem. Code § 134A.002(6); see also 18 U.S.C. § 1839(3)(B). But proving that information is “generally known” or “readily ascertainable” can be challenging, particularly when the alleged trade secrets involve software processes, chemical formulas, or other forms of complicated technology. This is where an effective analysis of patent literature and other forms of prior art can be especially valuable.

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