Employee Invention Assignment in Georgia

Can a Georgia employer require assignment of every invention?

Because there is no Georgia carve-out statute, start from the federal baseline that governs title to any patentable invention: rights begin with the inventor A.1.

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

An employer can contract around that default, but in Georgia the contract is read strictly against its author. Any ambiguity in the assignment language is resolved against the drafter — in the employment setting, almost always the employer A.2.

“any ambiguity in a contract is to be construed against the party who drafted it.”

Georgia does have statutes that touch employment restraints — the Restrictive Covenants Act (O.C.G.A. §§ 13-8-50 et seq.) and the Trade Secrets Act — but neither is an invention-assignment carve-out. The first polices post-employment restraints on competition; the second protects secrets. Neither tells an employer which inventions it may require an employee to assign. That question is answered by the contract, the federal inventor-owns default, and the construe-against-the-drafter rule.

Must a Georgia employer notify the employee?

The point is structural. Ownership of a patentable invention starts with the inventor and moves to the employer only through a valid assignment, so the questions that decide enforceability are whether the assignment language is present-tense and how it is construed — not whether the employer handed the employee a § 2872-style notice. A Georgia employer cannot cure an overbroad or merely prospective assignment clause by giving notice, and it gains nothing by omitting one; notice is simply not part of the Georgia analysis.

Who owns an invention by default in Georgia?

Title traces to the inventor. Because ownership starts there, an employer's claim is derivative: any interest it holds must run back to the employee who conceived the invention C.1.

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

The first common-law route to the employer is the hired-to-invent doctrine. Where an employee is engaged specifically to make a given invention and succeeds during the term of service, equity treats the resulting patent as the employer's; the U.S. Supreme Court stated the rule in United States v. Dubilier Condenser Corp. 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.”

The second route is the shop right — a non-exclusive, non-transferable, royalty-free license that arises where the employee used the employer's time, facilities, or materials to develop the invention. A shop right is ownership-by-license, not title, and like the hired-to-invent doctrine it is fact-intensive and narrow. Both are why a Georgia employer that wants clean title relies on a written present-assignment clause rather than a common-law theory.

Georgia is exacting about the words of that clause. Under the settled Georgia rule on assignment intent, a writing operates as a legal assignment only when its language shows the owner's intent to transfer the right at once, so that it becomes the property of the transferee — the standard First State Bank v. Hall Flooring Co. applied, drawing on Southern Mutual Life Insurance Co. v. Durdin, when it held that the writing before it did not convey legal title. A Georgia invention-assignment clause must clear that same exacting bar C.3.

“to transfer it instantly, so that it will be the property of the transferee.”

A clause framed around what the employee may later conceive or make points the other way. In Georgia-Pacific Corp. v. Lieberam, the Eleventh Circuit, applying Georgia law, read such language as referring only to a possibility rather than a completed transfer C.4.

“‘May’ appears to refer to a possibility: to something that might happen as opposed to something that has already occurred.”

Because a merely prospective clause is construed against the drafter, a Georgia employer should use present-tense hereby assigns wording that transfers legal title automatically on conception, rather than a future promise to assign that a court may read narrowly or decline to enforce.

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

Start with the absence of an on-point statute. The Georgia Restrictive Covenants Act (O.C.G.A. §§ 13-8-50 et seq.) governs restraints on competition, not invention assignment specifically, and the Trade Secrets Act protects secrets rather than ownership of inventions. No Georgia appellate decision found in our review squarely decides the precise bound on a post-employment trailing-assignment clause, so the analysis proceeds by analogy to restrictive-covenant law: a clause that forces a departed employee to hand over inventions made after they leave restrains their ability to work and is tested as a restraint.

Under the Act, a covenant restraining competition is enforceable only where it is reasonable in time, geographic area, and scope D.1.

“enforcement of contracts that restrict competition during the term of a restrictive covenant, so long as such restrictions are reasonable in time, geographic area, and scope of prohibited activities, shall be permitted.”

For a former employee, the Act supplies a durational yardstick: a restraint of two years or less is presumed reasonable, and anything longer is presumed unreasonable D.2.

“any restraint two years or less in duration and shall presume to be unreasonable in time any restraint more than two years in duration, measured from the date of the termination of the business relationship.”

A choice-of-law clause will not let an aggressive holdover escape that scrutiny. The Georgia Supreme Court held in Motorsports of Conyers, LLC v. Burbach that Georgia law remains the touchstone for whether a restrictive covenant is enforceable in Georgia courts, even where the contract selects another state's law D.3.

“Georgia law remains the touchstone for determining whether a given restrictive covenant is enforceable in our courts, even where the contract says another state’s law applies.”

A background principle cuts the same way. A departing employee keeps their general skill and knowledge; an assignment clause cannot reach what is simply the employee's own human capital D.4.

“all the skill he has acquired, all the knowledge he has obtained, and all the information that he has received, so long as nothing is taken that is the property of the employer.”

So the Georgia limit on holdover clauses is reasonableness, not a statute aimed at invention assignment and not an open void. 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 than an aggressive provision that sweeps in an ex-employee's independent post-employment inventions and thereby functions as a disguised restraint on competition — which a Georgia court would test, and may blue-pencil, under the Act rather than enforce as written.