Can a Minnesota employer require assignment of every invention?
No. Minnesota Statutes section 181.78 carves out a category of inventions that an assignment clause simply cannot reach: anything the employee developed entirely on their own time, for which no equipment, supplies, facility, or trade-secret information of the employer was used, that neither relates directly 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.
Subdivision 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 .
The same subdivision 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 .
Like California but unlike some assign-everything jurisdictions, Minnesota also 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 subdivision 1 may not be required as a condition of employment or continuing employment .
Sources for this answer
Primary law
A.1 Minn. Stat. § 181.78Minn. Stat. § 181.78, subdivision 1 makes an assignment clause inapplicable to an invention the employee developed entirely on their own time without the employer's equipment, supplies, facility, or trade-secret information, unless the invention relates directly to the employer's business or to its actual or demonstrably anticipated research or development, or results from the employee's work.
Any 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 shall 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, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer.
See Minn. Stat. § 181.78, subd. 1.
Primary law
A.2 Minn. Stat. § 181.78Minn. Stat. § 181.78, subdivision 1 declares that any provision purporting to apply to an own-time, own-resource invention outside the statute's exceptions is to that extent against the public policy of the state and void and unenforceable.
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.
See Minn. Stat. § 181.78, subd. 1.
Primary law
A.3 Minn. Stat. § 181.78Minn. Stat. § 181.78, subdivision 2 bars an employer from requiring a provision made void and unenforceable by subdivision 1 as a condition of employment or continuing employment.
No employer shall require a provision made void and unenforceable by subdivision 1 as a condition of employment or continuing employment.
See Minn. Stat. § 181.78, subd. 2.
Must a Minnesota employer notify the employee?
Yes. Minnesota Statutes section 181.78, subdivision 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 invention. The notice tracks the subdivision 1 carve-out word for word, and the obligation is mandatory for any agreement entered into after August 1, 1977.
The notice obligation is contemporaneous, not eventual: the written notification must accompany the agreement when it is made. It does not change which inventions are carved out — subdivision 1 does that — but it ensures the employee is told the carve-out exists .
What the statute does not spell out is the consequence of skipping the notice. No Minnesota case found in our review decides whether a missing subdivision 3 notification, by itself, voids an otherwise valid assignment clause. Courts in other own-time-carve-out states have treated the omission of the parallel written notice as a reason to withhold enforcement, but that persuasive authority is not Minnesota law. Because the safe course is clear, a prudent employer should treat the subdivision 3 notice as a hard requirement and deliver it at signing rather than litigate the remedy for its absence.
Sources for this answer
Primary law
B.1 Minn. Stat. § 181.78Minn. Stat. § 181.78, subdivision 3 requires an employer whose agreement contains an 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 outside the statute's exceptions.
If an employment agreement entered into after August 1, 1977 contains a provision requiring the employee to assign or offer to assign any of the employee's rights in any invention to an 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, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer.
See Minn. Stat. § 181.78, subd. 3.
Who owns an invention by default in Minnesota?
The inventor. Absent a written assignment, the baseline rule under federal patent law — which governs who holds title to a patentable invention in Minnesota 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. A Minnesota employer therefore depends on a written present-assignment clause to take title, and Minnesota courts do enforce a valid one — the Eighth Circuit, applying Minnesota law, upheld exactly such an agreement in Eaton Corp. v. Giere.
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 .
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 .
A written assignment closes that gap, and Minnesota enforces one. In Eaton Corp. v. Giere, a departing engineer built a competing transaxle he had begun designing while employed; the Eighth Circuit, applying Minnesota law, affirmed summary judgment for the employer on its breach-of-employee-agreement claim, holding the device fell within the agreement because it related to the employer's business and resulted from the engineer's work .
Minnesota, like other states, also recognizes a narrow common-law overlay — the hired-to-invent doctrine, under which an employer takes rights where the employee was engaged specifically to invent or to solve the particular problem the invention solves. The U.S. Supreme Court described the rule in United States v. Dubilier Condenser Corp.: one employed to make an invention who succeeds in that task is bound to assign the resulting patent .
That doctrine is fact-intensive and turns on what the employee was actually hired to do, so it is no substitute for an express clause. The dependable path is a written present-assignment (hereby assigns) clause — present-tense language that transfers legal title automatically on conception, rather than a future promise to assign — drafted to stay within the boundaries section 181.78 imposes.
Sources for this answer
Case law · 2011-06-06
C.1 Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular SystemsStanford 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).
Case law · 2011-06-06
C.3 Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular SystemsStanford 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).
Case law
C.2 Eaton Corp. v. GiereEaton Corp. v. Giere, applying Minnesota law, affirmed summary judgment for the employer on its breach-of-employee-agreement claim (Count II), enforcing the invention-assignment agreement against a former engineer whose competing device related to and resulted from his work at the employer.
We find the district court’s decision should be affirmed on both Count II (breach of employment agreement) and on Count III (violation of fiduciary duty).
See Eaton Corp. v. Giere, 971 F.2d 136 (8th Cir. 1992).
Case law · 1933-05-08
C.4 United States v. Dubilier Condenser Corp.United States v. Dubilier Condenser Corp. states the hired-to-invent rule: an employee engaged to make an invention who succeeds in that task is bound to assign the resulting patent to the employer, because the employee produced only what he was employed to invent.
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.
See United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).
Are trailing-assignment (holdover) clauses enforceable in Minnesota?
Only so far as reasonable — and a 2023 statute now shadows them. Minnesota has no statute that caps a post-employment trailing-assignment clause, so a court would judge an overbroad holdover under ordinary restrictive-covenant reasonableness. But since 2023, section 181.988 has voided covenants not to compete outright, excepting agreements designed to protect trade secrets, so a trailing clause that operates as a de facto non-compete risks being struck as a void non-compete, while one tightly tethered to trade-secret protection can survive.
Start with the statutory landscape. Section 181.78 governs what an assignment clause may reach during employment, but it says nothing about a clause reaching inventions conceived after the employment relationship ends. Traditionally, a Minnesota court asked to enforce such a trailing clause would treat it as a restrictive covenant and test it for reasonableness in time and scope — no more than necessary to protect a legitimate employer interest.
Section 181.988 changes the backdrop. Enacted in 2023, it makes any covenant not to compete void and unenforceable, subject only to narrow sale-of-business and dissolution exceptions .
“Any covenant not to compete contained in a contract or agreement is void and unenforceable.”
The statute does not sweep in every restraint, though. Its definition of a covenant not to compete expressly excludes agreements aimed at protecting confidential information — a nondisclosure agreement, or an agreement designed to protect trade secrets or confidential information, is not a covenant not to compete under the section .
That exclusion is the live drafting frontier for holdover clauses. A trailing-assignment provision that reaches broadly into a departed employee's later inventions — regardless of whether any trade secret was used — functions as a restraint on the employee's ability to work in the field, and a Minnesota court could most likely recharacterize it as a de facto covenant not to compete now void under section 181.988. A clause drawn narrowly to capture only inventions that draw on the former employer's trade secrets, by contrast, fits within the express trade-secret exclusion and stands a far better chance of surviving. No Minnesota decision found in our review has yet applied section 181.988 to a trailing invention-assignment clause, so the reclassification risk is a predictive one — but it is real enough that a drafter should avoid an aggressive holdover rather than rely on one.
Sources for this answer
Primary law
D.1 Minn. Stat. § 181.988Minn. Stat. § 181.988, subdivision 2 makes any covenant not to compete contained in a contract or agreement void and unenforceable, subject only to narrow sale-of-business and dissolution exceptions.
Any covenant not to compete contained in a contract or agreement is void and unenforceable.
See Minn. Stat. § 181.988, subd. 2(a).
Primary law
D.2 Minn. Stat. § 181.988Minn. Stat. § 181.988, subdivision 1 excludes from the definition of a covenant not to compete a nondisclosure agreement or an agreement designed to protect trade secrets or confidential information, so a narrowly trade-secret-tethered restraint is not caught by the ban.
A covenant not to compete does not include a nondisclosure agreement, or agreement designed to protect trade secrets or confidential information.
See Minn. Stat. § 181.988, subd. 1(a).
Do not paper a Minnesota employee with an out-of-state invention-assignment form. A form built for an assign-everything jurisdiction will usually omit the section 181.78, subdivision 3 written notice of the own-time carve-out, and it often contains an aggressive post-employment trailing-assignment (holdover) clause. Confirm the agreement carries the subdivision 3 notice at signing and limit the assignment to what section 181.78 actually allows. And since 2023, treat an aggressive holdover with new caution: a trailing clause that operates as a de facto restraint on the employee's future work risks being struck as a void covenant not to compete under section 181.988 unless it is narrowly tied to protecting the employer's trade secrets.