Employee Invention Assignment in Delaware

Can a Delaware employer require assignment of every invention?

The statute frames the carve-out as a limit on what an assignment promise can do. However broadly the contract is written, it does not reach an invention the employee made on their own time and with their own resources unless one of two statutory exceptions applies A.1.

“Any provision in an employment agreement which provides that the employee shall assign or offer to assign any of the employee's rights in an invention to the employee's employer shall not apply to an invention that the employee developed entirely on the employee's own time without using the employer's equipment, supplies, facility or trade secret information, except for those inventions that: (1) Relate to the employer's business or actual or demonstrably anticipated research or development; or (2) Result from any work performed by the employee for the employer.”

The two exceptions are joined disjunctively. An own-time invention falls back within the employer's reach if it either relates to the employer's business or anticipated research or development, or results from the employee's work A.1.

“(1) Relate to the employer's business or actual or demonstrably anticipated research or development; or”

“(2) Result from any work performed by the employee for the employer.”

The statute then supplies the teeth. A provision that tries to require assignment of an invention the statute excludes is not merely unenforceable as written but declared against the public policy of the State A.2.

“To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable.”

Section 805 closely tracks California Labor Code § 2870 — the own-time, own-resource carve-out and the same two business-or-work exceptions. We found no Delaware decision construing § 805 in our review, so its precise scope is not yet settled by state case law; its operative remedy, however, is plain on the face of the statute, which renders the offending provision unenforceable to the extent it overreaches. Because the statute speaks only of unenforceability and does not authorize a court to rewrite a violating clause, a Delaware drafter should not assume a court will blue-pencil an overbroad provision into a compliant one rather than simply declining to enforce it.

Must a Delaware employer notify the employee?

The statute is short and self-contained. It defines which inventions an assignment clause cannot reach and states the consequences of overreaching — unenforceability plus a bar on conditioning employment on an unenforceable provision. Nowhere does § 805 condition the carve-out, or the validity of a permissible assignment clause, on the employer giving the employee any notice B.1.

“An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.”

The contrast with the two notice states is worth flagging, because a multistate employer that built its form around the California § 2872 or Washington RCW 49.44.140(3) notice may carry that language into Delaware and assume it is required here. It is not. The absence of a notice requirement cuts the other way too: a Delaware employer cannot cure an overbroad assignment clause by giving notice of the carve-out, because § 805 makes the offending provision unenforceable regardless of what the employee was told. The statute's silence on notice means the work is done entirely by the scope of the assignment language itself.

Who owns an invention by default in Delaware?

Stanford v. Roche anchors the default. The Court held that the Bayh-Dole Act did not displace the long-standing rule that an invention belongs to its inventor, treating that premise as the baseline against which any assignment must be measured C.1.

“Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.”

Because ownership starts with the inventor, an employer's title is derivative: it exists only if and to the extent the employee assigned it. Any third-party interest in the invention must trace back to that inventor-grantor C.3.

“Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.”

The hired-to-invent exception is old and narrow. In Dubilier, the Supreme Court held that an employee engaged to accomplish a specific inventive task must assign the resulting patent to the employer C.2.

“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.”

But Dubilier drew the line firmly on the other side for general employment: an employee hired to a broad field of effort, who happens to invent within it, is not required to assign the patent absent an agreement C.4.

“On the other hand, if the employment be general, albeit it cover a field of labor and effort in the performance of which the employee conceived the invention for which he obtained a patent, the contract is not so broadly construed as to require an assignment of the patent.”

Because these background rules leave the employer empty-handed outside the narrow hired-to-invent case, the dependable path is a written assignment — and the form of that language matters in Delaware. In Personalized User Model, LLP v. Google, Inc., the Federal Circuit, applying Delaware law, addressed an employer that relied on a promise to assign inventions conceived during employment; its remedy was a breach-of-contract counterclaim for the employee's failure to assign, which the court held time-barred, affirming judgment as a matter of law against the employer C.5.

“Google asserted that Konig owed a duty to transfer ownership to SRI of any inventions conceived during his employment with SRI; that Konig breached the employment agreement by failing to assign his interest in the related patents to SRI; and that Google (by way of SRI) therefore was a rightful co-owner.”

The lesson is that a mere promise to assign leaves the employer with a fragile contract claim that can be lost, whereas a present-assignment (hereby assigns) clause — present-tense language that transfers legal title automatically on conception — gives clean title without a later enforcement suit, operating within the boundaries § 805 imposes.

Are trailing-assignment (holdover) clauses enforceable in Delaware?

Start with what the statute does not do. Section 805 governs which inventions an assignment clause may reach, voiding any provision that purports to capture a qualifying own-time invention, but it sets no durational ceiling on post-employment trailing assignments and says nothing about a clause reaching inventions conceived after the employment relationship ends D.1.

“shall not apply to an invention that the employee developed entirely on the employee's own time without using the employer's equipment, supplies, facility or trade secret information”

Because the statute is silent on holdover duration, the governing constraint is not statutory but the general Delaware rule that a contractual restraint on an employee's ability to work is enforceable only to the extent it is reasonable. There is no on-point Delaware invention-holdover authority in our review, so this is a prediction rather than a settled holding: by analogy to Delaware's treatment of restrictive covenants, a trailer clause that sweeps in an ex-employee's genuinely independent post-employment inventions — and so operates as a disguised restraint on future work — is at serious risk, while a clause narrowly tied to inventions conceived during employment, or to a short and defined trailing period for inventions derived from the employer's confidential information, stands on far firmer ground.