An invention-assignment agreement is the promise an employer asks a worker to make to assign the rights in inventions the worker creates. How far that promise can reach depends on the law of the governing state, and whether the signed document actually transfers patent, copyright, and trademark rights depends on federal law. This note explains the rules that apply across states and links to the 50-state survey for the jurisdiction-specific detail.
What inventions can an employer require an employee to assign?
An employer can require an employee to assign inventions that relate to the employer's business or research, or that result from the employee's work for the employer, but in a state with an own-time carve-out statute it cannot claim an invention the employee developed entirely on their own time without the employer's equipment, supplies, facilities, or trade-secret information . Where California's statute applies, a clause that purports to capture those own-time inventions is void to that extent . Other states differ on whether the carve-out is statutory at all, and the 50-state survey records each state's rule.
The carve-out operates as a ceiling on what an assignment promise can do, not a matter of drafting around. However broadly the contract is written, in a section 2870 state it does not reach an invention the employee made on their own time and with their own resources unless the invention relates to the employer's business or anticipated R&D, or results from the employee's work .
The exact contours of the carve-out, and whether it is statutory at all, vary by state, so the 50-state survey records each jurisdiction's rule. What is uniform is the core idea: an invention an employee makes wholly on their own time and resources, unrelated to the employer's business and not flowing from their work, sits on the employee's side of the line.
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Section 2870(a) makes an assignment clause inapplicable to an invention the employee developed entirely on their own time without the employer's equipment, supplies, facilities, or trade-secret information, unless the invention relates to the employer's business or anticipated research and development, or results from the employee's work.
Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either: (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or (2) Result from any work performed by the employee for the employer.
See Cal. Lab. Code § 2870(a).
Who owns an invention by default, absent a written assignment?
As a default rule of U.S. patent law, rights in an invention belong to the inventor, which in the employment setting is the employee who conceived it, as the Supreme Court reaffirmed in Stanford v. Roche . Any interest an employer acquires must, as a general rule, trace back to the employee-inventor . Two common-law doctrines give an employer rights without an express assignment, and both are narrow: the hired-to-invent doctrine reaches only an invention the employee was employed to make , and the shop right gives the employer a non-exclusive right to practice the invention rather than title to it .
Stanford v. Roche anchors the default. The Court treated the inventor-ownership premise as the baseline against which any claimed assignment must be measured, holding that even a federal funding statute did not displace it .
Because ownership starts with the inventor, an employer's title is purely derivative: it exists only if and to the extent the employee assigned it, and any third party's interest must trace back to that inventor-grantor .
The two common-law doctrines narrow this default without displacing it. Under the hired-to-invent doctrine, an employee employed to make an invention who succeeds during the term of service is bound to assign the resulting patent to the employer . The shop right applies where an employee conceives and perfects an invention during working hours with the employer's materials and appliances. In that case the employer receives a non-exclusive right to practice the invention and has no claim to a conveyance of the invention itself .
A written present-assignment (hereby assigns) clause does not depend on either doctrine. Its present-tense language transfers covered future inventions to the assignee as they arise , so the assignee gains equitable title without a further signed assignment . The state-by-state default and the scope of these doctrines are tracked in the 50-state survey.
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Stanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor.
Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Stanford v. Roche holds that, in most circumstances, an employer obtains an employee-inventor's rights only if the inventor expressly grants them.
In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776, 786 (2011).
Stanford v. Roche holds that although others may acquire an interest in an invention, that interest as a general rule must trace back to the inventor.
Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
The Federal Circuit held that the inventor's hereby-assign language effected a present assignment of his future inventions to Cetus.
In contrast to the CPA, the VCA’s language of “do hereby assign” effected a present assignment of Holodniy’s future inventions to Cetus.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 842 (Fed. Cir. 2009).
The Federal Circuit held that, under the inventor's present assignment, Cetus immediately gained equitable title to his inventions.
Therefore, Cetus immediately gained equitable title to Holodniy’s inventions.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 842 (Fed. Cir. 2009).
United States v. Dubilier Condenser Corp. holds that an employee hired to make an invention who succeeds during the term of service is bound to assign the resulting patent to the employer.
One employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained.
See United States v. Dubilier Condenser Corp., 289 U.S. 178, 187 (1933).
United States v. Dubilier Condenser Corp. describes the shop right: an employee who conceives and perfects an invention during working hours with the employer's materials and appliances must give the employer a non-exclusive right to practice it.
Recognition of the nature of the act of invention also defines the limits of the so-called shop-right, which shortly stated, is that where a servant, during his hours of employment, working with his master's materials and appliances, conceives and perfects an invention for which he obtains a patent, he must accord his master a non-exclusive right to practice the invention.
See United States v. Dubilier Condenser Corp., 289 U.S. 178, 188 (1933).
United States v. Dubilier Condenser Corp. holds that a shop right gives the employer no claim to a conveyance of the invention, which remains the employee's.
But the employer in such a case has no equity to demand a conveyance of the invention, which is the original conception of the employee alone, in which the employer had no part.
See United States v. Dubilier Condenser Corp., 289 U.S. 178, 189 (1933).
What makes an assignment actually transfer patent, copyright, and trademark rights?
Federal law requires a written instrument for a patent assignment, an instrument of conveyance, or a note or memorandum of the transfer, in writing and signed by the owner of the rights conveyed or the owner's duly authorized agent for a copyright ownership transfer other than by operation of law, and a duly executed writing for an assignment of a registered or applied-for trademark . A registered or applied-for trademark can be assigned only with the goodwill of the business it represents . For inventions not yet made, the Federal Circuit treats present-tense words such as hereby assign as a present transfer and agree to assign as only a promise. On a touch screen, a tap shows all 2 sources in this group. Recording is a separate step that does not make an assignment valid. Timely recording protects patent and trademark assignments against certain later purchasers, and copyright priority between conflicting transfers also depends on the work being registered and the recorded document identifying it. On a touch screen, a tap shows all 4 sources in this group.
Words of promise and words of transfer can lead to different owners. In Stanford v. Roche, the Federal Circuit held that the researcher's agreement with Stanford University, in which he agreed to assign his inventions, was only a promise to assign them in the future . His later agreement with a company, Cetus, which said he did hereby assign his inventions, was a present assignment of his future inventions and immediately gave Cetus equitable title to them. On a touch screen, a tap shows all 2 sources in this group. The Supreme Court, reviewing the case on other questions, expressly declined to pass on that reading of the two agreements, so the promise-versus-transfer rule rests on Federal Circuit law rather than a Supreme Court holding . An agreement meant to capture future inventions automatically therefore uses present-tense words such as hereby assigns, not only agrees to assign. On a touch screen, a tap shows all 2 sources in this group.
For patents, 35 U.S.C. § 261 requires an assignment to be in writing . An unrecorded patent assignment is void against a later purchaser or mortgagee who gives value and lacks notice unless the assignment is recorded in the U.S. Patent and Trademark Office (USPTO) within three months of its date or before the later transaction .
For copyright, 17 U.S.C. § 204(a) provides that a transfer other than one occurring by operation of law is not valid unless the owner or the owner's authorized agent signs a writing . For a work made for hire, the employer or commissioning party is treated as the author and owns the copyright unless the parties expressly agree otherwise in a signed writing . The statutory definition covers an employee's work prepared within the scope of employment . Whether the person who created the work counts as an employee is decided under the general common law of agency, which weighs several factors, including the hiring party's right to control the manner and means of the work . No single factor decides the question, and a contract label alone does not establish employee status . The definition also covers a specially commissioned work only when the work falls within one of nine listed categories and the parties sign a written work-for-hire agreement . Software is not a separately listed category. Code written by someone who is an independent contractor under that test is a work made for hire only if it fits one of the listed categories and both parties sign a written work-for-hire agreement, so a contract label alone does not make it one . Where the code does not qualify as a work made for hire, a contractual transfer of the copyright requires a written assignment, or a written note or memorandum of the transfer, signed by the copyright owner or the owner's authorized agent . The invention-assignment review checklist pairs work-for-hire language with an assignment backstop for that reason. Copyright transfers may be recorded with the Copyright Office. Between two conflicting transfers, the first one signed has priority if it is recorded within one month after signing in the United States, within two months after signing outside the United States, or before the later transfer is recorded . That priority rule counts only recording that gives constructive notice, which requires that the work be registered and that the recorded document identify the work specifically enough to be found by a reasonable search . Otherwise a later transfer prevails only if it is recorded first in that way and was taken in good faith, for value or a binding promise to pay royalties, and without notice of the earlier transfer .
For trademarks, 15 U.S.C. § 1060(a) permits assignment of a registered mark or pending application only with the goodwill of the business connected to the mark . Before the applicant files an amendment to allege use or a verified statement of use, an intent-to-use application can be assigned only to a successor to the applicant's ongoing and existing business, or to the part of that business to which the mark pertains . A trademark assignment must be in writing and duly executed . Recording the assignment at the USPTO within three months or before a later purchase protects the assignment against a later purchaser for value without notice .
As a practical step before a financing or acquisition, a company can review the chain of ownership for the intellectual property it claims to own and obtain any missing assignments from whoever still holds those rights, taking into account rights already assigned or owned as a work made for hire. On a touch screen, a tap shows all 3 sources in this group. Trademark assignments carry the goodwill and respect the intent-to-use limit. On a touch screen, a tap shows all 2 sources in this group. The same review can check that patent and trademark assignments were recorded with the USPTO within the deadlines above, and, where priority against a conflicting copyright transfer matters, whether the work is registered and the transfer was recorded with the Copyright Office. On a touch screen, a tap shows all 4 sources in this group.
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The Federal Circuit holds that contract language agreeing to assign is a promise to assign rights in the future, not an immediate transfer.
We have held that the contract language “agree to assign” reflects a mere promise to assign rights in the future, not an immediate transfer of expectant interests.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 841 (Fed. Cir. 2009).
The Federal Circuit held that language stating the inventor does hereby assign effected a present assignment of his future inventions.
In contrast to the CPA, the VCA’s language of “do hereby assign” effected a present assignment of Holodniy’s future inventions to Cetus.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 842 (Fed. Cir. 2009).
The Federal Circuit held that, under the inventor's present-assignment agreement, Cetus immediately gained equitable title to his inventions.
Therefore, Cetus immediately gained equitable title to Holodniy’s inventions.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 842 (Fed. Cir. 2009).
The Supreme Court in Stanford v. Roche expressly declined to review the Federal Circuit's construction of the assignment agreements.
Because the Federal Circuit’s interpretation of the relevant assignment agreements is not an issue on which we granted certiorari, we have no occasion to pass on the validity of the lower court’s construction of those agreements.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Reid holds that employee status for work-made-for-hire purposes is decided under the general common law of agency, which considers the hiring party's right to control the manner and means of the work among other factors.
In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party’s right to control the manner and means by which the product is accomplished.
See Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 751 (1989).
Reid holds that none of the agency-law factors for employee status is determinative on its own.
No one of these factors is determinative.
See Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 752 (1989).
Section 205(d) gives the first-executed of two conflicting copyright transfers priority if it is recorded, in the manner that gives constructive notice under section 205(c), within one month (two months if executed abroad) or before the later transfer is recorded.
As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice under subsection (c), within one month after its execution in the United States or within two months after its execution outside the United States, or at any time before recordation in such manner of the later transfer.
See 17 U.S.C. § 205(d).
Section 205(c) makes Copyright Office recordation constructive notice only if the recorded document specifically identifies the work and the work has been registered.
Recordation of a document in the Copyright Office gives all persons constructive notice of the facts stated in the recorded document, but only if- (1) the document, or material attached to it, specifically identifies the work to which it pertains so that, after the document is indexed by the Register of Copyrights, it would be revealed by a reasonable search under the title or registration number of the work; and (2) registration has been made for the work.
See 17 U.S.C. § 205(c).
Section 205(d) lets a later copyright transfer prevail only if it is recorded first in the required manner and taken in good faith, for value or a binding promise to pay royalties, and without notice of the earlier transfer.
Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.
See 17 U.S.C. § 205(d).
Section 261 requires patent assignments to be made through a written instrument.
Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.
See 35 U.S.C. § 261.
Section 261 protects a patent assignment against a later purchaser or mortgagee for value without notice when the assignment is timely recorded.
An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
See 35 U.S.C. § 261.
Section 204(a) generally requires a copyright transfer to be in a writing signed by the owner or authorized agent.
A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.
See 17 U.S.C. § 204(a).
Section 201(b) identifies the author and owner of a work made for hire.
In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
See 17 U.S.C. § 201(b).
Section 101 defines a work made for hire as an employee's work within the scope of employment, or a specially commissioned work in one of nine listed categories that the parties agree in a signed writing to treat as a work made for hire.
A "work made for hire" is- (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
See 17 U.S.C. § 101.
Section 1060(a)(1) requires a mark to be assigned with the connected business goodwill.
A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.
See 15 U.S.C. § 1060(a)(1).
Section 1060(a)(1) restricts assignment of an intent-to-use application before the required use filing, subject to a business-successor exception.
Notwithstanding the preceding sentence, no application to register a mark under section 1051(b) of this title shall be assignable prior to the filing of an amendment under section 1051(c) of this title to bring the application into conformity with section 1051(a) of this title or the filing of the verified statement of use under section 1051(d) of this title, except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.
See 15 U.S.C. § 1060(a)(1).
Section 1060(a)(3) requires a duly executed written trademark assignment.
Assignments shall be by instruments in writing duly executed.
See 15 U.S.C. § 1060(a)(3).
Section 1060(a)(4) protects a trademark assignment against a later purchaser for value without notice when the assignment is timely recorded.
An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.
See 15 U.S.C. § 1060(a)(4).
Must the employer give the employee written notice of the carve-out?
Whether the employer must give written notice of the own-time carve-out depends on the state: in California, Labor Code section 2872 requires an employer whose agreement was entered into after January 1, 1980, and requires the employee to assign or offer to assign invention rights to provide, when the agreement is made, written notice that it does not apply to an invention qualifying fully under section 2870 . Other states differ on whether a notice is required, and the 50-state survey records each state's rule. California's statute also places the burden of proof on the employee who later claims the carve-out's protection .
The notice obligation is contemporaneous: the written notification must accompany the agreement when it is made. It does not change which inventions are carved out — the carve-out statute does that — but it ensures the employee is told the carve-out exists .
The allocation of proof cuts the other way. When a dispute arises, the employee who wants the benefit of the own-time carve-out must establish that the invention qualifies — the statute puts that burden on the employee, not the employer .
Because both the notice duty and the burden allocation are creatures of each state's statute, they do not travel automatically across borders. The 50-state survey records which jurisdictions require a written carve-out notice and how each allocates proof.
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Section 2872 requires an employer whose agreement contains an assignment provision to give the employee, at the time the agreement is made, a written notification that the agreement does not apply to an invention qualifying fully under section 2870.
If an employment agreement entered into after January 1, 1980, contains a provision requiring the employee to assign or offer to assign any of his or her rights in any invention to his or her employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention which qualifies fully under the provisions of Section 2870.
See Cal. Lab. Code § 2872.
Section 2872 places the burden of proof on the employee claiming the benefit of section 2870's own-time carve-out.
In any suit or action arising thereunder, the burden of proof shall be on the employee claiming the benefits of its provisions.
See Cal. Lab. Code § 2872.
How far can a post-employment holdover clause reach?
How far a holdover (trailing-assignment) clause can reach depends on the state, and in California a clause reaching inventions conceived after employment ended is void: in Whitewater West Industries v. Alleshouse, the Federal Circuit held such a provision void under California Business and Professions Code section 16600 . The court applied the same statute that voids employee non-competes, because forcing a former worker to hand over inventions made after they leave restrains them from practicing their profession . Other states differ on whether to void such a clause, narrow it, or enforce a short post-employment tail tied to trade-secret use, and the 50-state survey records each state's limit.
The former employee in Whitewater left, then invented and patented new technology without using any of his former employer's trade secrets. The court refused to enforce the trailing-assignment clause against him, holding the provision void under California law .
The legal engine is section 16600. A clause that forces a worker to assign inventions made after they leave restrains them from engaging in their lawful profession and is void to that extent .
The carve-out statute reinforces the same boundary from the other direction: a provision that purports to require assignment of an invention the statute excludes is not just unenforceable but declared against public policy .
How far a holdover clause can reach is one of the sharpest points of state-to-state divergence.
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Whitewater West v. Alleshouse holds the former employer's assignment provision void under California law.
In particular, we reverse the judgment of breach of contract because we hold that the assignment provision is void under California law.
See Whitewater W. Indus., Ltd. v. Alleshouse, 981 F.3d 1045 (Fed. Cir. 2020).
Whitewater decided how California law treats an assignment provision where the former employee used no confidential information and conceived the inventions after employment.
The question for us is how California has resolved the issue— where there is no use of confidential information and the conceptions of the inventions post-date employment.
See Whitewater W. Indus., Ltd. v. Alleshouse, 981 F.3d 1045 (Fed. Cir. 2020).
Whitewater grounds its holding in Business and Professions Code section 16600, which voids every contract that restrains a person from engaging in a lawful profession, trade, or business.
First, California Business and Professions Code § 16600 states: “Except as provided in this chapter, every contract by which anyone is restrained from engaging in a lawful profession, trade, or business of any kind is to that extent void.”
See Whitewater W. Indus., Ltd. v. Alleshouse, 981 F.3d 1045 (Fed. Cir. 2020) (quoting Cal. Bus. & Prof. Code § 16600).
Section 2870(b) makes a provision that purports to require assignment of an otherwise-excluded own-time invention against the public policy of the state and unenforceable.
To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is against the public policy of this state and is unenforceable.
See Cal. Lab. Code § 2870(b).
Section 2872 requires an employer whose agreement contains an assignment provision to give the employee, at the time the agreement is made, a written notification that the agreement does not apply to an invention qualifying fully under section 2870.
If an employment agreement entered into after January 1, 1980, contains a provision requiring the employee to assign or offer to assign any of his or her rights in any invention to his or her employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention which qualifies fully under the provisions of Section 2870.
See Cal. Lab. Code § 2872.
Using one assign-everything form across states can leave a California agreement without the written notice of the own-time carve-out that California requires , or with a holdover clause that claims inventions conceived after employment without use of the former employer's confidential information, as the provision Whitewater held void did . The 50-state survey records each state's notice rule and holdover limit.