{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/delaware", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/delaware.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/delaware", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/delaware/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/delaware/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "delaware", "frontmatter": { "title": "Employee Invention Assignment in Delaware", "description": "Delaware's invention-assignment statute (19 Del. C. § 805) voids any clause forcing an employee to assign an invention developed entirely on their own time and resources that neither relates to the employer's business or R&D nor results from the employee's work; it imposes no employee-notice requirement, the inventor owns by default under federal patent law, and post-employment holdover clauses are limited only by reasonableness.", "state": "Delaware", "lastReviewed": "2026-06-30", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "Delaware's invention-assignment statute (19 Del. C. section 805) voids any clause forcing an employee to assign an invention developed entirely on their own time, without the employer's resources, that neither relates to the employer's business or R&D nor results from the employee's work; it imposes no notice requirement; and post-employment “holdover” clauses are enforceable only so far as reasonable.", "keyLaw": "19 Del. C. section 805; Stanford v. Roche, 563 U.S. 776 (2011); Personalized User Model, LLP v. Google, Inc., 797 F.3d 1341 (Fed. Cir. 2015)", "statutoryCarveOut": "statute", "defaultOwnership": "employee", "employeeNoticeRequired": "no", "holdoverClauseLimit": "reasonablenessOnly", "carveOutScope": "An invention the employee developed entirely on their own time, without the employer's equipment, supplies, facility, or trade-secret information, that neither relates to the employer's business or actual/demonstrably anticipated R&D nor results from the employee's work." }, "about": [ "19 Del. C. § 805 invention assignment", "Delaware employee invention ownership", "Delaware no invention-assignment notice", "Delaware holdover trailing assignment", "Personalized User Model v. Google", "Stanford v. Roche", "Delaware own-time invention carve-out" ], "translations": [ { "language": "中文", "status": "planned" }, { "language": "Español", "status": "planned" }, { "language": "Português", "status": "planned" }, { "language": "Deutsch", "status": "planned" } ], "relatedForm": { "slug": "openagreements-confidentiality-invention-assignment-agreement" } }, "questions": [ { "slug": "statutory-carve-out", "label": "Can the employer require assignment of every invention?", "heading": "Can a Delaware employer require assignment of every invention?", "answerText": "No. Delaware's invention-assignment statute, 19 Del. C. § 805, carves out a category of inventions that an assignment clause cannot reach: anything the employee developed entirely on their own time without using the employer's equipment, supplies, facility, or trade secret information, unless the invention relates to the employer's business or actual or demonstrably anticipated research or development, or results from the employee's work. To the extent a provision purports to reach those own-time inventions, it is against the public policy of the State and is unenforceable.", "sources": [ { "id": "de-805", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "19 Del. C. § 805", "citation": "19 Del. C. § 805.", "url": "https://codes.findlaw.com/de/title-19-labor/de-code-sect-19-805/", "proposition": "19 Del. C. § 805 makes an assignment clause inapplicable to an invention the employee developed entirely on the employee's own time without using the employer's equipment, supplies, facility, or trade secret information, unless the invention relates to the employer's business or actual or demonstrably anticipated research or development, or results from any work the employee performed for the employer.", "verbatimQuote": "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.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-de-805" }, { "id": "de-805-void", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "19 Del. C. § 805", "citation": "19 Del. C. § 805.", "url": "https://codes.findlaw.com/de/title-19-labor/de-code-sect-19-805/", "proposition": "19 Del. C. § 805 provides that a provision purporting to apply to the type of own-time invention the statute excludes is against the public policy of the State and is unenforceable.", "verbatimQuote": "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. An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-de-805-void" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a Delaware employer notify the employee?", "answerText": "No. This is a key contrast with California, which requires a written notice under Labor Code § 2872, and Washington, which requires one under RCW 49.44.140(3). Section 805 contains no notice, disclosure, or burden-shifting requirement of any kind. Its only consequences are that a provision overreaching the carve-out is against public policy and unenforceable, and that an employer may not impose such an unenforceable provision as a condition of employment; the validity of a compliant clause does not depend on any notice to the employee.", "sources": [ { "id": "de-805-notice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "19 Del. C. § 805", "citation": "19 Del. C. § 805.", "url": "https://codes.findlaw.com/de/title-19-labor/de-code-sect-19-805/", "proposition": "19 Del. C. § 805 makes an overreaching assignment provision unenforceable and bars an employer from imposing it as a condition of employment, but imposes no notice, disclosure, or burden-shifting requirement on the employer.", "verbatimQuote": "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. An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-de-805-notice" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in Delaware?", "answerText": "The inventor. Absent a written assignment, the baseline rule under federal patent law — which governs who holds title to a patentable invention in Delaware as elsewhere — is that rights belong to the employee who conceived it. The U.S. Supreme Court restated that premise in Stanford v. Roche, and although others may acquire an interest, that interest must trace back to the inventor. The narrow exception is the hired-to-invent doctrine of United States v. Dubilier Condenser Corp.: an employee engaged to make a particular invention must assign it, but an employee under general employment is not so bound.", "sources": [ { "id": "stanford-inventor", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems", "citation": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).", "url": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/", "deepLink": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/#:~:text=Since%201790%2C%20the%20patent%20law,invention%20belong%20to%20the%20inventor.", "proposition": "Stanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor.", "verbatimQuote": "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.", "date": "2011-06-06", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-stanford-inventor" }, { "id": "stanford-traceback", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems", "citation": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).", "url": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/", "deepLink": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/#:~:text=Thus%2C%20although%20others%20may%20acquire,trace%20back%20to%20the%20inventor.", "proposition": "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 — so an employer takes title only through an assignment from the employee-inventor.", "verbatimQuote": "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.", "date": "2011-06-06", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-stanford-traceback" }, { "id": "dubilier-hired-to-invent", "authorityType": "case-law", "tier": "primary-source-backed", "title": "United States v. Dubilier Condenser Corp.", "citation": "United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).", "url": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/", "deepLink": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/#:~:text=One%20employed%20to%20make%20an,his%20employer%20any%20patent%20obtained.", "proposition": "United States v. Dubilier Condenser Corp. holds that an employee engaged to make a particular invention who accomplishes that task during the term of service is bound to assign to the employer any patent obtained.", "verbatimQuote": "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.", "date": "1933-05-08", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-dubilier-hired-to-invent" }, { "id": "dubilier-general-employment", "authorityType": "case-law", "tier": "primary-source-backed", "title": "United States v. Dubilier Condenser Corp.", "citation": "United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).", "url": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/", "deepLink": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/#:~:text=On%20the%20other%20hand%2C%20if,an%20assignment%20of%20the%20patent.", "proposition": "United States v. Dubilier Condenser Corp. holds that where the employment is general, an employee who conceives an invention within that field is not required to assign the patent absent an agreement to do so.", "verbatimQuote": "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.", "date": "1933-05-08", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-dubilier-general-employment" }, { "id": "pum-assignment", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Personalized User Model, LLP v. Google, Inc.", "citation": "Personalized User Model, LLP v. Google, Inc., 797 F.3d 1341 (Fed. Cir. 2015).", "url": "https://www.courtlistener.com/opinion/2827946/personalized-user-model-llp-v-google-inc/", "deepLink": "https://www.courtlistener.com/opinion/2827946/personalized-user-model-llp-v-google-inc/#:~:text=Google%20asserted%20that%20Konig%20owed,therefore%20was%20a%20rightful%20co%2Downer.", "proposition": "In Personalized User Model, LLP v. Google, Inc. (Fed. Cir., applying Delaware law), the employer's claim to inventions conceived during employment rested on the employee's contractual duty to assign, pleaded as a breach-of-contract counterclaim for the failure to assign.", "verbatimQuote": "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.", "date": "2015-08-18", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-pum-assignment" } ] }, { "slug": "holdover-clause-limit", "label": "Are post-employment trailing-assignment clauses enforceable?", "heading": "Are trailing-assignment (holdover) clauses enforceable in Delaware?", "answerText": "Only so far as they are reasonable. Section 805 caps nothing about post-employment assignment periods — it speaks only to own-time inventions during the carve-out analysis — and we found no on-point Delaware decision in our review deciding whether a trailer clause reaching inventions first conceived after employment ends is enforceable. Because Delaware treats an overbroad restraint on an employee's post-employment activity under general restrictive-covenant reasonableness principles, a Delaware court would most likely test an aggressive holdover clause that functions as a disguised restraint on future work under that same reasonableness lens rather than enforce it as written.", "sources": [ { "id": "de-805-holdover", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "19 Del. C. § 805", "citation": "19 Del. C. § 805.", "url": "https://codes.findlaw.com/de/title-19-labor/de-code-sect-19-805/", "proposition": "19 Del. C. § 805 limits only an assignment clause's reach over own-time, own-resource inventions and imposes no durational cap or other constraint on post-employment trailing-assignment (holdover) clauses.", "verbatimQuote": "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.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-de-805-holdover" }, { "id": "de-805-void-practice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "19 Del. C. § 805", "citation": "19 Del. C. § 805.", "url": "https://codes.findlaw.com/de/title-19-labor/de-code-sect-19-805/", "proposition": "19 Del. C. § 805 provides that a provision purporting to apply to the type of own-time invention the statute excludes is against the public policy of the State and is unenforceable.", "verbatimQuote": "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. An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-de-805-void-practice" }, { "id": "pum-assignment-practice", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Personalized User Model, LLP v. Google, Inc.", "citation": "Personalized User Model, LLP v. Google, Inc., 797 F.3d 1341 (Fed. Cir. 2015).", "url": "https://www.courtlistener.com/opinion/2827946/personalized-user-model-llp-v-google-inc/", "deepLink": "https://www.courtlistener.com/opinion/2827946/personalized-user-model-llp-v-google-inc/#:~:text=Google%20asserted%20that%20Konig%20owed,therefore%20was%20a%20rightful%20co%2Downer.", "proposition": "In Personalized User Model, LLP v. Google, Inc. (Fed. Cir., applying Delaware law), the employer's claim to inventions conceived during employment rested on the employee's contractual duty to assign, pleaded as a breach-of-contract counterclaim for the failure to assign.", "verbatimQuote": "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.", "date": "2015-08-18", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/delaware#src-pum-assignment-practice" } ] } ] } }