{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "new-jersey", "frontmatter": { "title": "Employee Invention Assignment in New Jersey", "description": "New Jersey's invention-assignment statute (N.J.S.A. 34:1B-265, effective April 1, 2018) 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 research and development nor results from the employee's work; it imposes no notice requirement; and post-employment holdover clauses are enforceable only so far as reasonable under Ingersoll-Rand v. Ciavatta.", "state": "New Jersey", "lastReviewed": "2026-06-30", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "New Jersey's invention-assignment statute (N.J.S.A. 34:1B-265, effective April 1, 2018) 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 under Ingersoll-Rand v. Ciavatta.", "keyLaw": "N.J.S.A. 34:1B-265; Ingersoll-Rand Co. v. Ciavatta, 110 N.J. 609 (1988); Kinkade v. New York Shipbuilding Corp., 21 N.J. 362 (1956)", "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, facilities, or information (including trade-secret information), that neither relates to the employer's business or actual/demonstrably anticipated R&D nor results from work performed on the employer's behalf." }, "about": [ "N.J.S.A. 34:1B-265 invention assignment", "New Jersey employee invention ownership", "New Jersey no invention-assignment notice", "Ingersoll-Rand v. Ciavatta holdover", "Kinkade v. New York Shipbuilding", "New Jersey trailing assignment", "New Jersey 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 New Jersey employer require assignment of every invention?", "answerText": "No. New Jersey's invention-assignment statute, N.J.S.A. 34:1B-265, effective April 1, 2018, carves out a category of inventions that an assignment clause simply cannot reach: anything the employee develops entirely on their own time, without using the employer's equipment, supplies, facilities, or information, including any trade-secret information, that neither relates to the employer's business or actual or demonstrably anticipated research or development nor results from work performed on the employer's behalf. To the extent a clause purports to capture those own-time inventions, it is deemed against the public policy of the state and unenforceable.", "sources": [ { "id": "nj-1b-265", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.J.S.A. 34:1B-265", "citation": "N.J.S.A. 34:1B-265(a)(1).", "url": "https://codes.findlaw.com/nj/title-34-labor-and-workmens-compensation/nj-st-sect-34-1b-265/", "proposition": "N.J.S.A. 34:1B-265(a)(1) makes an assignment clause inapplicable to an invention the employee develops entirely on their own time, without using the employer's equipment, supplies, facilities, or information (including trade-secret information), unless the invention relates to the employer's business or actual or demonstrably anticipated research or development, or results from work the employee performed on the employer's behalf.", "verbatimQuote": "Any provision in an employment contract between an employee and employer, which provides that the employee shall assign or offer to assign any of the employee's rights to an invention to that employer, shall not apply to an invention that the employee develops entirely on the employee's own time, and without using the employer's equipment, supplies, facilities or information, including any trade secret information, except for those inventions that: (a) relate to the employer's business or actual or demonstrably anticipated research or development; or (b) result from any work performed by the employee on behalf of the employer.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-nj-1b-265" }, { "id": "nj-1b-265-void", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.J.S.A. 34:1B-265", "citation": "N.J.S.A. 34:1B-265(a)(2).", "url": "https://codes.findlaw.com/nj/title-34-labor-and-workmens-compensation/nj-st-sect-34-1b-265/", "proposition": "N.J.S.A. 34:1B-265(a)(2) declares that a provision purporting to apply to an employee invention within the statutory carve-out is deemed against the public policy of the state and shall be unenforceable.", "verbatimQuote": "To the extent any provision in an employment contract applies, or intends to apply, to an employee invention subject to this subsection, the provision shall be deemed against the public policy of this State and shall be unenforceable.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-nj-1b-265-void" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a New Jersey employer notify the employee?", "answerText": "No. This is the key contrast with California, which requires a written notice under Labor Code § 2872, and Washington, which requires one under RCW 49.44.140(3). New Jersey's § 34:1B-265 contains no notice, disclosure, or burden-shifting requirement of any kind. Its consequences are that a provision overreaching the carve-out is against public policy and unenforceable, and that an employer may not require such a void provision as a condition of employment; the validity of a compliant clause does not depend on any notice to the employee.", "sources": [ { "id": "nj-1b-265-notice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.J.S.A. 34:1B-265", "citation": "N.J.S.A. 34:1B-265(b).", "url": "https://codes.findlaw.com/nj/title-34-labor-and-workmens-compensation/nj-st-sect-34-1b-265/", "proposition": "N.J.S.A. 34:1B-265(b) bars an employer from requiring a void provision as a condition of employment or continued employment, but the statute imposes no notice, disclosure, or burden-shifting requirement — a compliant assignment clause's validity does not turn on any notice to the employee.", "verbatimQuote": "No employer shall require a provision made void and unenforceable by this act as a condition of employment or continued employment.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-nj-1b-265-notice" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in New Jersey?", "answerText": "The inventor. Absent a written assignment, the baseline rule under federal patent law — which governs who holds title to a patentable invention in New Jersey 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. New Jersey's own law agrees: in Kinkade v. New York Shipbuilding Corp., the Supreme Court held that the mere fact of employment gives the employer no title, that the invention belongs to the employer only where the employee was engaged to invent, and that otherwise the employer takes at most an equitable shop right to use — not own — the invention.", "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/new-jersey#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/new-jersey#src-stanford-traceback" }, { "id": "kinkade-inventor-owns", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Kinkade v. New York Shipbuilding Corp.", "citation": "Kinkade v. New York Shipbuilding Corp., 21 N.J. 362 (1956).", "url": "https://www.courtlistener.com/opinion/2333623/kinkade-v-new-york-shipbuilding-corp/", "deepLink": "https://www.courtlistener.com/opinion/2333623/kinkade-v-new-york-shipbuilding-corp/#:~:text=the%20mere%20fact%20that%20an,or%20title%20to%20the%20invention.", "proposition": "Kinkade v. New York Shipbuilding Corp. holds that the mere fact an invention was conceived and developed while the inventor was employed by another does not give the employer any right in or title to the invention.", "verbatimQuote": "the mere fact that an invention was conceived and developed while the inventor was employed by another does not give to the employer any right in or title to the invention.", "date": "1956-05-21", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-kinkade-inventor-owns" }, { "id": "kinkade-shopright", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Kinkade v. New York Shipbuilding Corp.", "citation": "Kinkade v. New York Shipbuilding Corp., 21 N.J. 362 (1956).", "url": "https://www.courtlistener.com/opinion/2333623/kinkade-v-new-york-shipbuilding-corp/", "deepLink": "https://www.courtlistener.com/opinion/2333623/kinkade-v-new-york-shipbuilding-corp/#:~:text=In%20the%20first%20case%20the,non%2Dexclusive%20right%20to%20the%20invention.", "proposition": "Kinkade v. New York Shipbuilding Corp. recognizes the shop right rule: where the employee developed the invention during working hours with the aid of fellow employees and the employer's machinery and materials, the employer has an irrevocable but non-exclusive right to the invention — a right to use, not ownership.", "verbatimQuote": "In the first case the invention belongs to the employer; in the second instance, and this is the “shop right rule,” the employer has an irrevocable but non-exclusive right to the invention.", "date": "1956-05-21", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-kinkade-shopright" }, { "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": "Dubilier states the hired-to-invent doctrine: an employee engaged to make an invention who succeeds during the term of service is bound to assign the resulting patent to the employer.", "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": "1933-04-10", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-dubilier-hired-to-invent" } ] }, { "slug": "holdover-clause-limit", "label": "Are post-employment trailing-assignment clauses enforceable?", "heading": "Are trailing-assignment (holdover) clauses enforceable in New Jersey?", "answerText": "Only so far as they are reasonable. New Jersey settled this in Ingersoll-Rand Co. v. Ciavatta, where the Supreme Court held that a post-employment holdover clause requiring an employee to assign inventions made after leaving is enforceable only when reasonable, applying the same three-prong Solari/Whitmyer test used for noncompetition covenants: the restraint must protect a legitimate interest of the employer, impose no undue hardship on the employee, and not be injurious to the public. Courts strictly construe such trailing-assignment provisions, and Ciavatta itself declined to enforce the clause because it worked an undue hardship on the departed employee.", "sources": [ { "id": "ciavatta-holdover", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Ingersoll-Rand Co. v. Ciavatta", "citation": "Ingersoll-Rand Co. v. Ciavatta, 110 N.J. 609 (1988).", "url": "https://www.courtlistener.com/opinion/1916343/ingersoll-rand-co-v-ciavatta/", "deepLink": "https://www.courtlistener.com/opinion/1916343/ingersoll-rand-co-v-ciavatta/#:~:text=In%20sum%2C%20we%20conclude%20that,the%20three%2Dprong%20test%20of%20Solari%2FWhitmyer.", "proposition": "Ingersoll-Rand Co. v. Ciavatta holds that a post-employment holdover agreement is enforceable only when reasonable, and that reasonableness is determined by the three-prong Solari/Whitmyer test New Jersey applies to noncompetition covenants.", "verbatimQuote": "In sum, we conclude that holdover agreements are enforceable when reasonable, and that in determining if the post-termination restriction is reasonable, we will apply the three-prong test of Solari/Whitmyer.", "date": "1988-07-27", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-ciavatta-holdover" }, { "id": "ciavatta-reasonable", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Ingersoll-Rand Co. v. Ciavatta", "citation": "Ingersoll-Rand Co. v. Ciavatta, 110 N.J. 609 (1988).", "url": "https://www.courtlistener.com/opinion/1916343/ingersoll-rand-co-v-ciavatta/", "deepLink": "https://www.courtlistener.com/opinion/1916343/ingersoll-rand-co-v-ciavatta/#:~:text=a%20court%20will%20find%20a,not%20injurious%20to%20the%20public.%E2%80%9D", "proposition": "Ingersoll-Rand Co. v. Ciavatta states the Solari/Whitmyer three-prong reasonableness test: a covenant is reasonable if it protects the legitimate interests of the employer, imposes no undue hardship on the employee, and is not injurious to the public.", "verbatimQuote": "a court will find a noncompetition covenant reasonable if it “simply protects the legitimate interests of the employer, imposes no undue hardship on the employee and is not injurious to the public.”", "date": "1988-07-27", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-ciavatta-reasonable" }, { "id": "ciavatta-strict", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Ingersoll-Rand Co. v. Ciavatta", "citation": "Ingersoll-Rand Co. v. Ciavatta, 110 N.J. 609 (1988).", "url": "https://www.courtlistener.com/opinion/1916343/ingersoll-rand-co-v-ciavatta/", "deepLink": "https://www.courtlistener.com/opinion/1916343/ingersoll-rand-co-v-ciavatta/#:~:text=Moreover%2C%20courts%20strictly%20construe%20contractual,be%20fair%2C%20reasonable%2C%20and%20just.", "proposition": "Ingersoll-Rand Co. v. Ciavatta holds that courts strictly construe contractual provisions requiring assignment of post-employment inventions, which must be fair, reasonable, and just.", "verbatimQuote": "Moreover, courts strictly construe contractual provisions that require assignment of post-employment inventions; they must be fair, reasonable, and just.", "date": "1988-07-27", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-ciavatta-strict" }, { "id": "nj-1b-265-void-practice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.J.S.A. 34:1B-265", "citation": "N.J.S.A. 34:1B-265(a)(2).", "url": "https://codes.findlaw.com/nj/title-34-labor-and-workmens-compensation/nj-st-sect-34-1b-265/", "proposition": "N.J.S.A. 34:1B-265(a)(2) declares that a provision purporting to apply to an employee invention within the statutory carve-out is deemed against the public policy of the state and shall be unenforceable.", "verbatimQuote": "To the extent any provision in an employment contract applies, or intends to apply, to an employee invention subject to this subsection, the provision shall be deemed against the public policy of this State and shall be unenforceable.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-jersey#src-nj-1b-265-void-practice" } ] } ] } }