Publishing a patent application inevitably reveals technical information to the public. But that does not necessarily mean everything related to the patented technology becomes public as well.
For companies that combine patents with confidential research and development, the more difficult question is where the public disclosure ends and the remaining trade secrets begin. A recent dispute involving Praxis Precision Medicines illustrates why companies should be able to answer that question long before litigation starts.
A Patent Can Reveal the Technology Without Revealing Everything
Praxis develops treatments for neurological disorders. It alleged that years of research into compounds targeting a particular potassium channel produced confidential information, including candidate compounds, chemical structures, experimental results, comparisons, and related know-how.
The complication was that Praxis had also published a patent application describing the same general family of compounds and later published scientific research discussing related compounds and experimental results.
According to Praxis, a former scientific advisor who had access to its confidential research later helped establish Actio Biosciences, which pursued a competing drug-development program. Praxis alleged that compounds appearing in Actio's later patent applications closely resembled 14 compounds that Praxis had kept confidential. Actio and the advisor disputed those allegations and argued that its work could have been developed independently from information Praxis had already made public.
The Important Question Is What the Public Could Actually Learn
Trade secret law generally cannot protect information that has already been made public. The defendants therefore argued that Praxis's own publications had disclosed enough information that the supposedly secret compounds could be worked out through legitimate scientific methods.
The court was not prepared to reach that conclusion at the beginning of the case. It found that the relationship between the publicly disclosed compounds and the 14 allegedly confidential compounds presented factual and technical questions that required further development. The fact that related technology appeared in a patent application did not, by itself, establish that the additional compounds were publicly available or readily ascertainable.
This does not mean that Praxis proved it had valid trade secrets. Nor did the court find that Goldstein disclosed them or that Actio copied Praxis's work. The decision merely allowed the trade secret and related contract claims to proceed to discovery.
The Practical Problem Is Maintaining the Boundary
The ruling highlights a recurring problem in technology development. A company may deliberately disclose part of an innovation through patents, papers, regulatory materials, presentations, product releases, or other publications while continuing to develop improvements and related information internally.
That strategy can work, but only if the confidential layer remains genuinely distinct from what has been disclosed.
For a software company, for example, a published architecture might coexist with confidential training data, tuning methods, deployment techniques, or performance results. A manufacturer might patent a process while retaining confidential tolerances, test results, tooling methods, or yield improvements. A life-sciences company may publicly disclose a class of compounds while continuing to protect candidate selection, assay results, unsuccessful experiments, optimization work, and later-developed structures.
The important question is not simply whether the confidential information concerns the same technology as a patent. It is whether someone using legitimate public sources could readily obtain the supposedly secret information.
Document What Remains Confidential
Praxis also illustrates why that distinction should be documented as R&D progresses.
When important information is disclosed publicly, companies should be able to identify what the disclosure actually teaches and what related information remains internal. Records showing when additional information was developed, where it was stored, who could access it, and what confidentiality obligations applied can become important if the technology later appears in a competitor's work.
Confidentiality agreements also matter. Praxis alleged that its former advisor was subject to agreements governing the use of confidential information, company materials, and work product. The court allowed those contract claims to continue alongside the trade secret claims, although it did not determine whether any contract was ultimately breached.
The broader lesson is that patent strategy and trade secret strategy should not operate independently. When a company decides what to publish, it should also identify what it intends not to publish and preserve the records and controls necessary to explain that distinction later.
For the more detailed legal analysis of the court's ruling, see the original Technology & Information Law Blog discussion of Praxis v. Goldstein. Praxis v. Goldstein: Patent Disclosure and the Limits of Early Trade Secret Dismissal
About the Author: Charles Gideon Korrell is a technology-transactions attorney and strategic advisor whose practice focuses on technology licensing, commercial transactions, intellectual property strategy, and related matters. More information about his practice is available at GideonKorrell.com. He publishes the Technology & Information Law Blog at TechInfoLaw.com, where he provides more detailed analysis of judicial decisions and legal developments affecting technology and intellectual property.