{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "new-mexico", "frontmatter": { "title": "Employee Invention Assignment in New Mexico", "description": "New Mexico has no employee-invention-assignment statute, so an assignment clause is bounded only by ordinary contract law, the common-law default rules, and the federal patent and copyright overlay — not a California-style own-time carve-out or notice requirement. Absent a written assignment the inventor owns unless hired to invent; the Federal Circuit applying New Mexico law has held that state contract law governs transfers of patent rights, and a post-employment holdover clause's enforceability is unsettled.", "state": "New Mexico", "lastReviewed": "2026-07-01", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "New Mexico has no employee-invention-assignment statute, so an assignment clause is bounded only by ordinary contract law, the common-law default rules, and the federal patent and copyright overlay — not a California-style own-time carve-out or notice requirement; absent a written assignment the inventor owns unless hired to invent, the Federal Circuit applying New Mexico law has held that state contract law governs transfers of patent rights, and the enforceability of a post-employment holdover clause is unsettled and would be judged under New Mexico's general restraint-of-trade reasonableness.", "keyLaw": "No New Mexico invention-assignment statute; Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003); Stanford v. Roche, 563 U.S. 776 (2011)", "statutoryCarveOut": "none", "defaultOwnership": "employee", "employeeNoticeRequired": "n/a", "holdoverClauseLimit": "unsettled", "carveOutScope": "New Mexico has no statutory own-time carve-out; the reach of an assignment clause is limited only by ordinary contract law, the common-law inventor-owns default (subject to the hired-to-invent exception and the employer's shop right), and the federal patent and copyright overlay." }, "about": [ "New Mexico invention assignment", "New Mexico no invention-assignment statute", "New Mexico employee invention ownership", "Regents of the University of New Mexico v. Knight", "New Mexico hired to invent", "New Mexico shop right", "New Mexico holdover trailing assignment" ], "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 Mexico employer require assignment of every invention?", "answerText": "There is no statutory ceiling. Unlike California or New York, New Mexico 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 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.", "sources": [ { "id": "regents-governs", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Regents of the Univ. of N.M. v. Knight", "citation": "Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003).", "url": "https://www.courtlistener.com/opinion/781129/the-regents-of-the-university-of-new-mexico-v-galen-d-knight-and-pg/", "deepLink": "https://www.courtlistener.com/opinion/781129/the-regents-of-the-university-of-new-mexico-v-galen-d-knight-and-pg/#:~:text=State%20law%20governs%20contractual%20obligations,including%20those%20relating%20to%20patents.", "proposition": "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.", "verbatimQuote": "State law governs contractual obligations and transfers of property rights, including those relating to patents.", "date": "2003-02-25", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico#src-regents-governs" }, { "id": "stanford-baseline", "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, the baseline against which any assignment clause is measured.", "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-mexico#src-stanford-baseline" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a New Mexico employer notify the employee?", "answerText": "Not applicable. 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.", "sources": [ { "id": "regents-obligation", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Regents of the Univ. of N.M. v. Knight", "citation": "Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003).", "url": "https://www.courtlistener.com/opinion/781129/the-regents-of-the-university-of-new-mexico-v-galen-d-knight-and-pg/", "deepLink": "https://www.courtlistener.com/opinion/781129/the-regents-of-the-university-of-new-mexico-v-galen-d-knight-and-pg/#:~:text=State%20law%20governs%20contractual%20obligations,including%20those%20relating%20to%20patents.", "proposition": "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.", "verbatimQuote": "State law governs contractual obligations and transfers of property rights, including those relating to patents.", "date": "2003-02-25", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico#src-regents-obligation" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in New Mexico?", "answerText": "The inventor, unless hired to invent. Absent a written assignment, the baseline under federal patent law — which governs who holds title to a patentable invention in New Mexico as elsewhere — is that rights belong to the employee who conceived it. The narrow exception is the employee hired to invent, whose resulting invention the employer may claim.", "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-mexico#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-mexico#src-stanford-traceback" }, { "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": "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.", "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": "1933-05-08", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico#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 Mexico?", "answerText": "Unsettled. No New Mexico decision found in our review squarely decides whether a trailing clause reaching inventions first conceived after employment ends is enforceable, 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.", "sources": [ { "id": "lovelace-reasonable", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Lovelace Clinic v. Murphy", "citation": "Lovelace Clinic v. Murphy, 76 N.M. 645, 417 P.2d 450 (1966).", "url": "https://www.courtlistener.com/opinion/1196089/lovelace-clinic-v-murphy/", "deepLink": "https://www.courtlistener.com/opinion/1196089/lovelace-clinic-v-murphy/#:~:text=All%20of%20the%20physician%20and,or%20the%20associate%20are%20reasonable.", "proposition": "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.", "verbatimQuote": "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.", "date": "1966-08-08", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico#src-lovelace-reasonable" }, { "id": "regents-governs-practice", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Regents of the Univ. of N.M. v. Knight", "citation": "Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003).", "url": "https://www.courtlistener.com/opinion/781129/the-regents-of-the-university-of-new-mexico-v-galen-d-knight-and-pg/", "deepLink": "https://www.courtlistener.com/opinion/781129/the-regents-of-the-university-of-new-mexico-v-galen-d-knight-and-pg/#:~:text=State%20law%20governs%20contractual%20obligations,including%20those%20relating%20to%20patents.", "proposition": "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.", "verbatimQuote": "State law governs contractual obligations and transfers of property rights, including those relating to patents.", "date": "2003-02-25", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-mexico#src-regents-governs-practice" }, { "id": "stanford-traceback-practice", "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-mexico#src-stanford-traceback-practice" } ] } ] } }