Can a Maryland employer require assignment of every invention?
There is no statutory ceiling. Unlike California or Washington, Maryland has no employee-invention-assignment statute — nothing that voids an assignment of a true own-time, own-resource invention — so an assignment clause's reach is bounded only by ordinary contract law, the common-law inventor-owns default, and the federal patent and copyright overlay. The federal district court in Maryland has enforced a written invention-assignment agreement as an ordinary contract, and the baseline any such clause operates against is that rights in an invention belong to the inventor. On a touch screen, a tap shows all 2 sources in this group.
Because there is no statute on point, the limits come from general principles rather than a legislative carve-out. A full-text review of the Maryland Code's Labor and Employment article surfaces no employee-invention-, patent-, or intellectual-property-assignment provision. The employment-adjacent statutes Maryland does have run in other directions: Md. Code Ann., Lab. & Empl. § 3-716 voids noncompete and conflict-of-interest provisions as against Maryland public policy for lower-paid employees (the threshold is keyed to 150 percent of the State minimum wage), and the Maryland Uniform Trade Secrets Act, Md. Code Ann., Com. Law § 11-1201 et seq., governs the trade-secret overlay of a confidentiality-and-invention-assignment agreement. Neither addresses what an invention-assignment clause may capture.
The gap is a legislative choice, not an oversight. In 2020, House Bill 1466 would have voided assignment clauses reaching intellectual property an employee developed entirely on the employee's own time without employer equipment, supplies, facilities, or trade secrets — a California-style carve-out. The bill died in the House Economic Matters Committee after its March 10, 2020 hearing, and the Labor and Employment article section it would have created, § 3-717, is now occupied by an unrelated provision on facial recognition in job interviews. A Maryland employer therefore starts from contract law, not a § 2870-style statutory ceiling on what an assignment promise may reach.
The closest Maryland-forum authority treats the contract as doing exactly that work. In Crown Cork & Seal Co. v. Fankhanel, the U.S. District Court for the District of Maryland enforced a written invention-assignment agreement against a former employee, restating the settled framework under which the agreement — not any statute — determines who ends up owning an employment-related invention .
The substantive default that Maryland contract law operates against is the federal patent premise restated in Stanford v. Roche: absent an effective assignment, rights in an invention belong to the person who conceived it .
The practical consequence is that a Maryland employer can, in principle, contract for assignment more broadly than a California or Washington employer, because no statute carves out own-time inventions from the reach of the clause. But that breadth is not unlimited: an assignment clause is still an ordinary contract term, subject to general contract-law defenses, and to the extent it operates as a restraint on the former employee it runs into Maryland's restrictive-covenant reasonableness limits discussed below. There is simply no statutory own-time/own-resource safe harbor for the employee to invoke and no statutory ceiling for the drafter to code around.
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Crown Cork & Seal Co. v. Fankhanel — a District of Maryland decision enforcing a written invention-assignment agreement, quoting the Fourth Circuit's adoption of the trial court's formulation — restates that an invention made incidentally in the course of employment is the property of the employee unless he has agreed to transfer ownership to his employer, so in Maryland the reach of an assignment clause is a matter of the contract's words rather than any statutory carve-out.
an invention made incidentally by an employee in the course of his regular or general employment, and at his employer’s expense, is the property of the employee, unless he has agreed, either expressly or impliedly by virtue of some special terms of his employment, to transfer ownership to his employer
See Crown Cork & Seal Co. v. Fankhanel, 49 F. Supp. 611 (D. Md. 1943).
Stanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor, the baseline against which any assignment clause is measured.
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).
Must a Maryland employer notify the employee?
Not applicable. Because Maryland has no invention-assignment statute, there is no statutory carve-out to notify the employee about and no notice requirement of the kind California imposes under Labor Code § 2872 or Washington imposes under RCW 49.44.140(3). What Maryland enforces instead is contractual: an invention is the employee's property unless the agreement itself transfers it .
There is nothing to give notice of. A notice requirement exists in California and Washington precisely to alert the employee to a statutory own-time carve-out that limits the assignment; Maryland has enacted no such carve-out — the General Assembly declined the opportunity when 2020 House Bill 1466 died in committee — so there is no statutory line for a notice to mark. This is why the entry is marked not applicable rather than a bare no: the question presupposes a statutory carve-out that Maryland does not have.
Where a Maryland employee owes invention-ownership obligations, they come from the contract, not a statute. In Crown Cork & Seal Co. v. Fankhanel, the federal district court in Maryland enforced a written assignment agreement on exactly that footing, restating the framework under which the employee keeps an incidental invention unless the agreement says otherwise .
For a multistate employer the takeaway is the inverse of the notice states: a Maryland employer neither has to give a § 2872-style notice nor can rely on one to cure an overbroad clause. The enforceability of the assignment turns entirely on the contract language and the general limits on restraints, not on any statutory notice or disclosure formality.
Sources for this answer
Crown Cork & Seal Co. v. Fankhanel shows that in Maryland an employee's invention-ownership obligations arise from the agreement itself — an invention made incidentally in the course of employment is the employee's property unless he has agreed to transfer it — not from any statute an employer would have to give notice about.
an invention made incidentally by an employee in the course of his regular or general employment, and at his employer’s expense, is the property of the employee, unless he has agreed, either expressly or impliedly by virtue of some special terms of his employment, to transfer ownership to his employer
See Crown Cork & Seal Co. v. Fankhanel, 49 F. Supp. 611 (D. Md. 1943).
Who owns an invention by default in Maryland?
The inventor, unless hired to invent. Absent a written assignment, the baseline under federal patent law is that rights in an invention belong to the employee who conceived it; the narrow exception is the employee hired to invent, and the federal courts sitting in Maryland have applied that exception directly, holding that an employee directed to solve a specific problem is employed to invent as to that project. On a touch screen, a tap shows all 2 sources in this group.
Stanford v. Roche anchors the default. The Supreme Court held that even 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 is measured .
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 must trace back to that inventor-grantor .
The principal exception is the employee hired to invent. Under United States v. Dubilier Condenser Corp., an employee engaged to make a particular invention who succeeds during the term of service must assign the resulting patent to the employer .
Maryland's forum courts have applied that exception in its strong form. In Houghton v. United States, the Fourth Circuit — affirming the District of Maryland and adopting the trial court's statement as the correct rule — held that the hired-to-invent duty is not limited to employees whose contract named invention as the job: an employee directed to solve a specific problem within the scope of a general employment is treated the same way .
The court's own formulation makes the consequence explicit: for as long as the employee is engaged on the assigned problem, the results of the work at invention belong to the employer .
One caveat on the Maryland picture deserves emphasis: the ownership authorities here are federal. Houghton is a Fourth Circuit decision affirming the District of Maryland and applying the general common law of the pre-Erie era , and our review found no decision of Maryland's highest court addressing private employee-invention ownership. The answer above is therefore the shared federal baseline as applied in a Maryland forum, not a holding of Maryland's state appellate courts.
Short of hired-to-invent, where the employee is neither engaged to invent nor bound by a written assignment but has used the employer's time, tools, and materials to reach a concrete result, the employer gets only a shop right — a non-exclusive license to use the invention, not ownership of it .
Because ownership starts with the inventor and Maryland has no statute filling the gap, the dependable path for a Maryland employer is a written present-assignment (hereby assigns) clause that transfers legal title automatically on conception, rather than a future promise to assign that leaves the employer with a mere equitable claim.
Sources for this answer
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 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.
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).
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 (1933).
Houghton v. United States — the Fourth Circuit, affirming the District of Maryland and adopting the trial court's statement as the correct rule — holds that an employee who undertakes at the employer's direction to solve a specific problem within the scope of a general employment is employed and paid for that project as if it had been named in the contract of employment, so the hired-to-invent duty reaches directed projects, not only employees hired as inventors.
An employee, who undertakes upon the direction of his employer to solve a specific problem within the scope of his general employment, is as truly employed and paid for the particular project as if it had been described at the outset in the contract of employment.
See Houghton v. United States, 23 F.2d 386 (4th Cir. 1928).
Houghton v. United States holds that while an employee is engaged on a problem the employer directed him to solve, he is employed to invent, and the results of his efforts at invention belong to the employer.
During the period that he is so engaged, he is “employed to invent,” and the results of his efforts at invention belong to his employer in the same way as would the product of his efforts in any other direction.
See Houghton v. United States, 23 F.2d 386 (4th Cir. 1928).
United States v. Dubilier Condenser Corp. defines the limits of the shop right — where an employee uses the employer's time, materials, and appliances to conceive and perfect a patented invention, the employer is owed a non-exclusive right to practice the invention, not ownership of 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 (1933).
Erie Railroad Co. v. Tompkins holds that, except in matters governed by the Federal Constitution or Acts of Congress, the law applied in any case is the law of the State, and that there is no federal general common law.
Except in matters governed by the Federal Constitution or by Acts of Congress, the law to be applied in any case is the law of the State. And whether the law of the State shall be declared by its Legislature in a statute or by its highest court in a decision is not a matter of federal concern. There is no federal general common law.
See Erie R.R. Co. v. Tompkins, 304 U.S. 64 (1938).
Are trailing-assignment (holdover) clauses enforceable in Maryland?
Most likely only if reasonable — by analogy, not holding. No Maryland decision found in our review addresses a trailing clause reaching inventions first conceived after employment ends, and there is no statutory temporal cap because there is no invention-assignment statute at all. What Maryland does have is a canonical reasonableness rule for restraints arising out of employment, and a court asked to police an aggressive holdover clause would most likely test it within that framework .
Two gaps define the Maryland picture. First, there is no statute on invention assignments: nothing caps the duration of a post-employment trailing assignment or otherwise limits what such a clause may reach. Second, our review found no Maryland decision applying the state's restraint-of-trade limits to an invention-holdover clause — or even deciding whether such a clause is analyzed as an ownership provision, a restrictive covenant, or both — so the invention-specific application of those limits is genuinely open rather than settled.
The framework a Maryland court would bring to that analysis is well established. In MacIntosh v. Brunswick Corp., the Court of Appeals of Maryland (now the Supreme Court of Maryland) stated the general rule for restrictive covenants in employment contracts , in a formulation it drew from its earlier decision in Silver v. Goldberger .
Extending that rule to holdover assignments is a prediction, not a holding. A Maryland court asked to enforce a clause that sweeps in inventions an ex-employee conceives after leaving would most likely ask the MacIntosh questions — whether the reach is no wider than reasonably necessary to protect the employer's business, and whether it imposes undue hardship on the former employee or disregards the public interest — rather than apply any invention-specific rule. Out-of-state authority that has voided open-ended post-employment invention assignments applies other states' law and is at most analogous; it is not Maryland law and should not be treated as controlling here.
One adjacent statute is worth flagging. Md. Code Ann., Lab. & Empl. § 3-716 voids noncompete and conflict-of-interest provisions as against Maryland public policy for employees earning at or below 150 percent of the State minimum wage. No authority found in our review applies § 3-716 to an invention-assignment clause, but a trailing assignment broad enough to function as a practical restraint on a covered employee's ability to take new work would raise the open question whether it falls within the section's reach.
The safe reading is that an overbroad trailer clause is at meaningful risk in Maryland: the reasonableness framework is the only identified limit, its application to trailing assignments has not been decided, and no Maryland authority found in our review establishes that a court would trim an overbroad clause rather than refuse to enforce it — so the drafter should not count on judicial rescue.
Sources for this answer
MacIntosh v. Brunswick Corp. states Maryland's general rule — quoting Silver v. Goldberger — that a restrictive covenant in an employment contract will be sustained only if the restraint is confined within limits no wider as to area and duration than reasonably necessary to protect the employer's business, without undue hardship on the employee or disregard of the public interest; the framework a Maryland court would most likely apply by analogy to a post-employment trailing invention-assignment clause.
The general rule in Maryland is that restrictive covenants in a contract of employment, by which an employee as a part of his agreement undertakes not to engage in a competing business or vocation with that of his employer on leaving the employment, will be sustained “if the restraint is confined within limits which are no wider as to area and duration than are reasonably necessary for the protection of the business of the employer and do not impose undue hardship on the employee or disregard the interests of the public.”
See MacIntosh v. Brunswick Corp., 241 Md. 24, 215 A.2d 222 (1965).
Silver v. Goldberger states Maryland's general rule that a restrictive covenant in an employment contract will be sustained if the restraint is no wider in area and duration than reasonably necessary to protect the employer's business and does not impose undue hardship on the employee or disregard the public interest.
While a person may not be restrained from engaging in any business or vocation (useful to the community) which he is qualified to conduct or perform, the general rule is that restrictive covenants in a contract of employment, by which an employee as a part of his agreement undertakes not to engage in a competing business or vocation with that of his employer on leaving the employment, will be sustained if the restraint is confined within limits which are no wider as to area and duration than are reasonably necessary for the protection of the business of the employer and do not impose undue hardship on the employee or disregard the interests of the public.
See Silver v. Goldberger, 231 Md. 1, 188 A.2d 155 (1963).
Crown Cork & Seal Co. v. Fankhanel — a District of Maryland decision enforcing a written invention-assignment agreement, quoting the Fourth Circuit's adoption of the trial court's formulation — restates that an invention made incidentally in the course of employment is the property of the employee unless he has agreed to transfer ownership to his employer, so in Maryland the reach of an assignment clause is a matter of the contract's words rather than any statutory carve-out.
an invention made incidentally by an employee in the course of his regular or general employment, and at his employer’s expense, is the property of the employee, unless he has agreed, either expressly or impliedly by virtue of some special terms of his employment, to transfer ownership to his employer
See Crown Cork & Seal Co. v. Fankhanel, 49 F. Supp. 611 (D. Md. 1943).
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.
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).
Do not assume a Maryland employee works like a California or Washington one. There is no invention-assignment statute here, so there is no statutory carve-out to rely on and no notice safe harbor — an invention is the employee's property unless the agreement transfers it, so the validity of the assignment turns entirely on the contract language . Draft with present-assignment (hereby assigns) language so title passes automatically rather than resting on a future promise, and remember that ownership starts with the inventor, so an employer's rights are only as good as the words that transfer them . Keep any trailing or holdover assignment narrow, short, and tied to the employer's trade secrets or confidential information, because no Maryland decision found in our review has passed on such a clause and a court would most likely test it under the reasonableness limits Maryland applies to restraints in employment contracts .
What does federal law require a confidentiality and invention assignment agreement in Maryland to say about whistleblowers and pay?
An employee confidentiality, non-compete, or invention assignment agreement signed or updated now that governs trade secrets or other confidential information must give the Defend Trade Secrets Act whistleblower-immunity notice, and for employees the National Labor Relations Act covers, Section 7 of that Act protects concerted activity, including joining together over pay and working conditions, that a broad confidentiality clause can restrict. The employer may satisfy the notice duty by cross-referencing a qualifying policy document provided to the employee, but an employer that omits the notice may not be awarded exemplary damages or attorney fees under the Defend Trade Secrets Act in an action against an employee who was not given notice.
The notice describes a federal immunity: an individual cannot be held liable under federal or state trade-secret law for disclosing a trade secret in confidence to a government official or an attorney solely to report or investigate a suspected violation of law, or in a court filing made under seal. For an agreement signed or updated now, the duty to give that notice reaches any agreement with an employee that governs trade secrets or other confidential information, whatever else the agreement does.
Section 7 gives employees the National Labor Relations Act covers a statutory right to engage in concerted activity for mutual aid or protection, including joining together to improve pay and working conditions. For employees the Act covers, the Board's work-rule standard adopted in 2023 makes a rule presumptively unlawful if it has a reasonable tendency to chill employees from exercising their Section 7 rights; an employer can rebut that presumption only by showing a legitimate and substantial business interest it cannot serve with a more narrowly tailored rule. The 2023 standard may change, but the Section 7 right it enforces is statutory. State law may add its own requirements for the same clauses.
A form carried over without the immunity notice, or a cross-reference to a reporting policy the employee never received, leaves the confidentiality clause without a valid notice, so the Act's exemplary damages and attorney fees are unavailable against that employee. A Confidential Information definition that sweeps in pay and working conditions with no carve-out exposes the employer to an unfair-labor-practice finding for employees the Act covers.
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An individual is immune from criminal and civil liability under federal and state trade-secret law for disclosing a trade secret in confidence to a government official or an attorney solely to report or investigate a suspected violation of law, or in a court filing made under seal.
An individual shall not be held criminally or civilly liable under any Federal or State trade secret law for the disclosure of a trade secret that— (A) is made— (i) in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or (B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.
See 18 U.S.C. § 1833(b)(1).
An employer must give notice of the trade-secret whistleblower immunity in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.
An employer shall provide notice of the immunity set forth in this subsection in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.
See 18 U.S.C. § 1833(b)(3)(A).
An employer complies with the notice requirement by cross-referencing a policy document, provided to the employee, that sets out the employer's reporting policy for a suspected violation of law.
An employer shall be considered to be in compliance with the notice requirement in subparagraph (A) if the employer provides a cross-reference to a policy document provided to the employee that sets forth the employer's reporting policy for a suspected violation of law.
See 18 U.S.C. § 1833(b)(3)(B).
An employer that does not give the required notice may not be awarded exemplary damages or attorney fees in a trade-secret action against an employee who did not receive it.
If an employer does not comply with the notice requirement in subparagraph (A), the employer may not be awarded exemplary damages or attorney fees under subparagraph (C) or (D) of section 1836(b)(3) in an action against an employee to whom notice was not provided.
See 18 U.S.C. § 1833(b)(3)(C).
Section 7 gives employees the right to engage in concerted activities for mutual aid or protection, the statutory basis for keeping discussion of pay and working conditions outside confidentiality restrictions.
Employees shall have the right to self-organization, to form, join, or assist labor organizations, to bargain collectively through representatives of their own choosing, and to engage in other concerted activities for the purpose of collective bargaining or other mutual aid or protection, and shall also have the right to refrain from any or all of such activities except to the extent that such right may be affected by an agreement requiring membership in a labor organization as a condition of employment as authorized in section 158(a)(3) of this title.
See 29 U.S.C. § 157 (NLRA § 7).
The National Labor Relations Board protects the right of private-sector employees, with or without a union, to join together to improve wages, benefits, and working conditions.
Established in 1935, the National Labor Relations Board is an independent federal agency that protects employees from unfair labor practices and protects the right of private sector employees to join together, with or without a union, to improve wages, benefits and working conditions.
See NLRB Office of Public Affairs, news release of Feb. 21, 2023 (agency mission statement).
Under the work-rule standard the Board adopted in 2023, a rule with a reasonable tendency to chill employees from exercising their Section 7 rights is presumptively unlawful unless the employer proves a legitimate and substantial business interest it cannot advance with a more narrowly tailored rule.
Under the new standard adopted in Stericycle, the General Counsel must prove that a challenged rule has a reasonable tendency to chill employees from exercising their rights. If the General Counsel does so, then the rule is presumptively unlawful. However, the employer may rebut the presumption by proving that the rule advances a legitimate and substantial business interest and that the employer is unable to advance that interest with a more narrowly tailored rule.
See Stericycle, Inc., 372 NLRB No. 113 (2023); NLRB Office of Public Affairs, Board Adopts New Standard for Assessing Lawfulness of Work Rules (Aug. 2, 2023).