Can a New Mexico employer require assignment of every invention?
In our review of New Mexico's statutes we found no statute limiting which of an employee's inventions an employer may require the employee to assign. Unlike California or New York, New Mexico has no employee-invention-assignment statute voiding 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 Circuit, applying New Mexico law, has confirmed that state contract law governs these transfers, and the baseline it 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 search of the New Mexico Statutes Annotated Chapter 50 (Employment Law) surfaces no invention-, patent-, or intellectual-property-assignment provision, and there is no Article 9A of the kind sometimes assumed — so a New Mexico employer starts from contract law, not a § 2870-style statutory ceiling on what an assignment promise may capture.
The controlling New Mexico-specific authority is Regents of the University of New Mexico v. Knight, in which the Federal Circuit, applying New Mexico law, held that ownership and transfer of patent rights are questions of state contract law .
The substantive default that state 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 New Mexico employer can, in principle, contract for assignment more broadly than a California or New York 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, where it functions as a restraint on the employee, to New Mexico's reasonableness limits on restraints. 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.
Sources for this answer
Regents of the Univ. of N.M. v. Knight, applying New Mexico law, holds that state law governs contractual obligations and transfers of property rights, including those relating to patents — so the reach of an assignment clause is a matter of state contract law, not a state statutory carve-out.
State law governs contractual obligations and transfers of property rights, including those relating to patents.
See Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003).
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 New Mexico employer notify the employee?
In our review of New Mexico's statutes we found no statute requiring an employer to give an employee notice of an own-time, own-resource invention carve-out. Because New Mexico 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 New Mexico enforces instead is contractual: disclosure and assignment duties arise from the terms of the agreement itself, and state contract law governs whether those duties bind .
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; New Mexico has enacted no such carve-out, 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 New Mexico does not have.
Where New Mexico does impose disclosure and assignment duties, they come from the contract, not a statute. Regents of the University of New Mexico v. Knight enforced a university policy requiring disclosure and assignment of inventions precisely because, under state contract law, the agreement created that obligation .
For a multistate employer the takeaway is the inverse of the notice states: a New Mexico 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
Regents of the Univ. of N.M. v. Knight holds that state contract law governs the obligation to disclose and assign patent rights, so in New Mexico any disclosure or assignment duty arises from the agreement itself rather than from a notice-requiring statute.
State law governs contractual obligations and transfers of property rights, including those relating to patents.
See Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003).
Who owns an invention by default in New Mexico?
Absent a written assignment, a New Mexico employee owns the patent rights in an invention the employee conceived, unless the employee was hired to invent it . That baseline comes from federal patent law, which governs who holds title to a patentable invention in New Mexico as elsewhere, and the narrow exception is the employee hired to invent, whose resulting invention the employer may claim. 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 .
Short of that, where the employee is neither hired 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's remedy under Dubilier is only an equitable shop right — a non-exclusive license to use the invention, not ownership of it. Because ownership therefore starts with the inventor and New Mexico has no statute filling the gap, the dependable path for an 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).
Are trailing-assignment (holdover) clauses enforceable in New Mexico?
A New Mexico court would most likely enforce a trailing-assignment clause reaching inventions conceived after employment ends only if the restrictions it imposes on the former employee are reasonable . No New Mexico decision found in our review squarely decides the question, and there is no statutory temporal cap because there is no invention-assignment statute at all. New Mexico's general rule is that restraints arising from an employment relationship are enforceable only if reasonable, so a New Mexico court would most likely test an aggressive holdover clause under that general reasonableness standard rather than any invention-specific rule .
Two gaps define the New Mexico picture. First, there is no statute: nothing caps the duration of a post-employment trailing assignment or otherwise limits what such a clause may reach. Second, our review found no New Mexico decision applying the reasonableness limits specifically to an invention-holdover clause, so the invention-specific application of the rule is genuinely open rather than settled.
What New Mexico does supply is a general reasonableness standard for restraints growing out of the employment relationship. Lovelace Clinic v. Murphy states that the rights and duties created by a contract of employment or association are enforceable only if the restrictions they impose on the employee are reasonable .
Extending that principle to holdover assignments is a prediction, not a holding. A New Mexico court asked to enforce a clause that sweeps in inventions an ex-employee conceives after leaving would most likely ask whether the restriction is reasonable — no broader than needed to protect the employer's legitimate interests and not an undue restraint on the former employee's ability to work. 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 New Mexico law and should not be treated as controlling here. The safe reading is that an overbroad trailer clause is at meaningful risk in New Mexico, but the precise standard for invention holdovers has not been decided.
Sources for this answer
Lovelace Clinic v. Murphy states New Mexico's general rule that the rights and duties created by a contract of employment or association are enforceable only if the restrictions they impose on the employee are reasonable.
All of the physician and surgeon cases either expressly hold or clearly indicate that the rights and duties created by the contract of employment or association are enforceable, if the restrictions thus imposed on the employee or the associate are reasonable.
See Lovelace Clinic v. Murphy, 76 N.M. 645, 417 P.2d 450 (1966).
Regents of the Univ. of N.M. v. Knight, applying New Mexico law, holds that state law governs contractual obligations and transfers of property rights, including those relating to patents — so the reach of an assignment clause is a matter of state contract law, not a state statutory carve-out.
State law governs contractual obligations and transfers of property rights, including those relating to patents.
See Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003).
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 New Mexico employee works like a California or New York one. There is no invention-assignment statute here, so there is no statutory carve-out to rely on and no notice safe harbor — the validity of the assignment turns entirely on the contract language and the general limits on restraints, and state contract law governs whether the transfer binds . 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 confidential information, because its enforceability is unsettled and an overbroad clause risks being struck as an unreasonable restraint under New Mexico's general reasonableness rule .
What does federal law require a confidentiality and invention assignment agreement in New Mexico 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.
Sources for this answer
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).