# Employee Invention Assignment in Illinois[^about] Illinois's Employee Patent Act (765 ILCS 1060/2) 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; the employer must give written notice of that carve-out at signing; and post-employment holdover clauses are enforceable only so far as reasonable. ## Can an Illinois employer require assignment of every invention? {#statutory-carve-out} **Short answer.** No. The Illinois Employee Patent Act, 765 ILCS 1060/2, carves out a category of inventions that an assignment clause simply cannot reach: anything the employee developed entirely on their own time, without the employer's equipment, supplies, facilities, or trade-secret information, that neither relates to the employer's business or actual or demonstrably anticipated research or development nor results from the employee's work. To the extent a clause purports to capture those own-time inventions, it is against the public policy of the state and void — and the employee bears the burden of proving that the invention qualifies [^il-1060-2][^il-1060-2-burden]. Subsection (1) 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 [^il-1060-2]. "A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer."[^il-1060-2] The same subsection 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 public policy [^il-1060-2]. "Any provision which purports to apply to such an invention is to that extent against the public policy of this State and is to that extent void and unenforceable."[^il-1060-2] The allocation of proof, however, runs against the employee. When a dispute arises, the employee who wants the benefit of the own-time carve-out must establish that the invention qualifies — the statute places that burden on the employee, not the employer [^il-1060-2-burden]. "The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection."[^il-1060-2-burden] Subsection (2) closes the obvious workaround. An employer cannot demand the void assignment anyway by making the employee sign it to keep the job — a provision made void and unenforceable by subsection (1) may not be required as a condition of employment or continuing employment [^il-1060-2-condition]. "An employer shall not require a provision made void and unenforceable by subsection (1) of this Section as a condition of employment or continuing employment."[^il-1060-2-condition] ## Must an Illinois employer notify the employee? {#employee-notice} **Short answer.** Yes. Section 2(3) requires an employer whose agreement contains an invention-assignment provision to give the employee, at the time the agreement is made, a written notification that the agreement does not apply to a qualifying own-time, own-resource invention. The statute does not say what happens if the employer omits that notice, and no Illinois case in our review decides whether a missing notice voids an otherwise valid clause — so the cautious course is to treat the notice as mandatory [^il-1060-2-notice]. The notice obligation is contemporaneous, not eventual: the written notification must accompany the agreement when it is made, for any agreement entered into after January 1, 1984. It does not change which inventions are carved out — subsection (1) does that — but it ensures the employee is told the carve-out exists [^il-1060-2-notice]. "If an employment agreement entered into after January 1, 1984, contains a provision requiring the employee to assign any of the employee's rights in any invention to the 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 for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time"[^il-1060-2-notice] Because no Illinois decision in our review resolves the consequence of skipping the notice, a drafter should not gamble on the omission being harmless. The statute's text makes the notice a requirement, and pairing an assignment clause with the section 2(3) notification at signing removes any doubt. ## Who owns an invention by default in Illinois? {#default-ownership} **Short answer.** The inventor. Absent a written assignment, the baseline rule under federal patent law — which governs who holds title to a patentable invention in Illinois 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. Illinois's Employee Patent Act expressly preserves an employer's common-law shop rights against employees who never signed an agreement, and the *hired-to-invent* doctrine can give an employer title where the employee was engaged specifically to invent — but a written present-assignment clause remains the dependable route to ownership [^stanford-inventor-ownership][^stanford-traceback-ownership]. *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 [^stanford-inventor-ownership]. "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor."[^stanford-inventor-ownership] 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 [^stanford-traceback-ownership]. "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor."[^stanford-traceback-ownership] Illinois preserves one narrow overlay for the employee who never signed anything. Section 2(2) states that the Act does not preempt existing common law applicable to shop rights — the employer's non-exclusive, royalty-free license to use an invention its resources helped produce — for employees who never signed an employment agreement [^il-1060-2-shopright]. "This Act shall not preempt existing common law applicable to any shop rights of employers with respect to employees who have not signed an employment agreement."[^il-1060-2-shopright] The other non-contractual route is the *hired-to-invent* doctrine. As the U.S. Supreme Court explained in *United States v. Dubilier Condenser Corp.*, an employee engaged specifically to make an invention who accomplishes that task must assign the resulting patent, because the invention is the very thing the employee was hired to produce. But that doctrine is fact-intensive and confined to employees actually hired for inventive work, so an Illinois employer that wants dependable title relies instead on a written present-assignment (*hereby assigns*) clause — present-tense language that transfers legal title automatically on conception, rather than a future promise to assign — operating within the boundaries section 2 imposes [^dubilier-hired-ownership]. "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."[^dubilier-hired-ownership] ## Are trailing-assignment (holdover) clauses enforceable in Illinois? {#holdover-clause-limit} **Short answer.** Only so far as they are reasonable. Illinois has no statute that caps a post-employment trailing-assignment (*holdover*) clause, so its enforceability is governed by the general public-policy limits on invention-assignment covenants. The Seventh Circuit's decision in *Guth v. Minnesota Mining & Manufacturing Co.* is the leading statement of those limits: a provision that is limitless in time and in subject matter is contrary to public policy, but a court will enforce the covenants that are reasonable and sever those that are not [^guth-holdover][^guth-divisible]. The starting point is that an employer may contract for its employees' inventions, but only within limits. *Guth* recognized the employer's right to secure patentable discoveries by contract while making clear that the right is bounded [^guth-recognized]. "The right of an employer to contract for patentable discoveries made by its employee within certain limits is well recognized."[^guth-recognized] Where a clause exceeds those limits, it falls. The *Guth* court held that provisions reaching an unlimited span of time and any subject matter of invention — the classic overbroad holdover tail — are contrary to public policy, because such a covenant would effectively close the doors of future employment to the worker [^guth-holdover]. "those provisions of the contract which were limitless in extent of time and in subject matter of invention were contrary to public policy."[^guth-holdover] But the court did not throw out the whole agreement. It treated the contract as divisible and enforced the covenants that were reasonable while refusing the ones that were not — the same reasonableness-and-severance approach Illinois applies to restrictive covenants generally [^guth-divisible]. "Some of the covenants are contrary to public policy and non-enforceable. Others are valid and enforceable in a court of equity (although courts are not required in all cases to grant the specific performance of such contracts)."[^guth-divisible] Two caveats keep this from being a settled rule. *Guth* is a Seventh Circuit decision applying general public-policy principles rather than a modern Illinois Supreme Court holding squarely on post-employment trailing assignments, and we found no Illinois decision in our review that fixes a bright-line durational or subject-matter ceiling. A drafter should therefore treat reasonableness in time and scope as the operative constraint and avoid a limitless trailing tail, which *Guth* indicates a court would refuse to enforce as written. > [!NOTE] > **Practice note.** > > Do not paper an Illinois employee with an out-of-state invention-assignment form. A form built for an assign-everything jurisdiction will usually omit the section 2(3) written notice of the own-time carve-out, and it often contains an aggressive post-employment trailing-assignment (*holdover*) clause that reaches inventions limitless in time and subject matter — the kind *Guth* holds contrary to public policy. Confirm the agreement carries the section 2(3) notice at signing, limit the assignment to the categories section 2 actually allows, and pare any holdover tail back to a reasonable time and scope rather than relying on a limitless one [^il-1060-2-notice][^guth-holdover]. [^about]: By Steven Obiajulu, J.D. Published by [openagreements.org](https://openagreements.org). Last reviewed 2026-06-30. License: CC BY 4.0. Steven Obiajulu, J.D. is admitted in New York, not Illinois. This article synthesizes Illinois primary law and is not legal advice from a Illinois-admitted attorney. This article is for informational purposes only and does not create an attorney-client relationship. [^il-1060-2]: **765 ILCS 1060/2** — "A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this State and is to that extent void and unenforceable." *765 ILCS 1060/2(1).* [^il-1060-2-burden]: **765 ILCS 1060/2** — "The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection." *765 ILCS 1060/2(1).* [^il-1060-2-condition]: **765 ILCS 1060/2** — "An employer shall not require a provision made void and unenforceable by subsection (1) of this Section as a condition of employment or continuing employment." *765 ILCS 1060/2(2).* [^il-1060-2-notice]: **765 ILCS 1060/2** — "If an employment agreement entered into after January 1, 1984, contains a provision requiring the employee to assign any of the employee's rights in any invention to the 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 for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time" *765 ILCS 1060/2(3).* [^stanford-inventor-ownership]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^stanford-traceback-ownership]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^il-1060-2-shopright]: **765 ILCS 1060/2** — "This Act shall not preempt existing common law applicable to any shop rights of employers with respect to employees who have not signed an employment agreement." *765 ILCS 1060/2(2).* [^dubilier-hired-ownership]: **United States v. Dubilier Condenser Corp.** — "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 reason is that he has only produced that which he was employed to invent. His invention is the precise subject to the contract of employment." *United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).* [^guth-holdover]: **Guth v. Minnesota Mining & Mfg. Co.** — "those provisions of the contract which were limitless in extent of time and in subject matter of invention were contrary to public policy." *Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).* [^guth-divisible]: **Guth v. Minnesota Mining & Mfg. Co.** — "Some of the covenants are contrary to public policy and non-enforceable. Others are valid and enforceable in a court of equity (although courts are not required in all cases to grant the specific performance of such contracts)." *Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).* [^guth-recognized]: **Guth v. Minnesota Mining & Mfg. Co.** — "The right of an employer to contract for patentable discoveries made by its employee within certain limits is well recognized." *Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).*