{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/new-york", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-york.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-york", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-york/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/new-york/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "new-york", "frontmatter": { "title": "Employee Invention Assignment in New York", "description": "New York's Labor Law § 203-f (effective September 15, 2023) voids any clause forcing an employee to assign a true own-time, own-resource invention unrelated to the employer's business, but unlike California it imposes no employee-notice requirement. Absent a written assignment the inventor owns by default under Cahill v. Regan, and post-employment holdover clauses are judged by ordinary restrictive-covenant reasonableness.", "state": "New York", "lastReviewed": "2026-06-30", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "New York's Labor Law § 203-f (effective September 15, 2023) voids any clause forcing an employee to assign a true own-time, own-resource invention unrelated to the employer's business, but unlike California it requires no employee notice; absent a written assignment the inventor owns by default under Cahill v. Regan, and post-employment holdover clauses are judged by ordinary restrictive-covenant reasonableness.", "keyLaw": "N.Y. Lab. Law § 203-f; Cahill v. Regan, 5 N.Y.2d 292 (1959)", "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 trade secret information, that neither relates to the employer's business or actual or demonstrably anticipated research and development nor results from the employee's work" }, "about": [ "N.Y. Labor Law § 203-f", "New York own-time invention carve-out", "New York no employee-notice requirement", "Cahill v. Regan hired to invent", "New York shop right", "New York holdover trailing assignment", "Stanford v. Roche default ownership" ], "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 York employer require assignment of every invention?", "answerText": "No. New York Labor Law § 203-f, effective September 15, 2023, carves out a category of inventions that an assignment clause simply cannot reach: anything the employee developed entirely on their own time, without the employer's equipment, supplies, facilities, or trade secret information, that neither relates to the employer's business or actual or demonstrably anticipated research and 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 unenforceable.", "sources": [ { "id": "ny-203f-carveout", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.Y. Labor Law § 203-f", "citation": "N.Y. Lab. Law § 203-f(1).", "url": "https://www.nysenate.gov/legislation/laws/LAB/203-F", "proposition": "N.Y. Labor Law § 203-f(1) makes an assignment clause inapplicable to an invention the employee developed entirely on their own time without the employer's equipment, supplies, facilities, or trade secret information, unless the invention relates to the employer's business or actual or demonstrably anticipated research or development, or results from the employee's work.", "verbatimQuote": "Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either:", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-ny-203f-carveout" }, { "id": "ny-203f-exceptions", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.Y. Labor Law § 203-f", "citation": "N.Y. Lab. Law § 203-f(1)(a)–(b).", "url": "https://www.nysenate.gov/legislation/laws/LAB/203-F", "proposition": "N.Y. Labor Law § 203-f(1)(a)-(b) returns an otherwise-carved-out own-time invention to the employer's reach where it either relates to the employer's business or actual or demonstrably anticipated research or development, or results from any work the employee performed for the employer.", "verbatimQuote": "(a) relate at the time of conception or reduction to practice of the invention to the employer's business, or actual or demonstrably anticipated research or development of the employer; or (b) result from any work performed by the employee for the employer.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-ny-203f-exceptions" }, { "id": "ny-203f-void", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.Y. Labor Law § 203-f", "citation": "N.Y. Lab. Law § 203-f(2).", "url": "https://www.nysenate.gov/legislation/laws/LAB/203-F", "proposition": "N.Y. Labor Law § 203-f(2) declares that a provision purporting to require assignment of an invention excluded under subdivision one is against the public policy of the state and shall be unenforceable.", "verbatimQuote": "To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision one of this section, such provision is against the public policy of this state and shall be unenforceable.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-ny-203f-void" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a New York 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 York's § 203-f contains no notice, disclosure, or burden-shifting requirement of any kind. Its only consequence is that a provision overreaching the carve-out is against public policy and unenforceable; the validity of a compliant clause does not depend on any notice to the employee.", "sources": [ { "id": "ny-203f-void-notice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.Y. Labor Law § 203-f", "citation": "N.Y. Lab. Law § 203-f(2).", "url": "https://www.nysenate.gov/legislation/laws/LAB/203-F", "proposition": "N.Y. Labor Law § 203-f(2) makes an overreaching assignment provision against public policy and unenforceable, and conditions nothing on notice to the employee — the statute imposes no notice, disclosure, or burden-shifting requirement.", "verbatimQuote": "To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision one of this section, such provision is against the public policy of this state and shall be unenforceable.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-ny-203f-void-notice" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in New York?", "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 York 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 York's leading case, Cahill v. Regan, supplies the parallel employee-invention rule: the employee owns unless hired to invent or assigned a specific inventive task, and even when the employee keeps title the employer may obtain a shop right where the employee used the employer's time, facilities, and materials.", "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-york#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-york#src-stanford-traceback" }, { "id": "cahill-hired-to-invent", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Cahill v. Regan", "citation": "Cahill v. Regan, 5 N.Y.2d 292 (1959).", "url": "https://www.courtlistener.com/opinion/5670270/cahill-v-regan/", "deepLink": "https://www.courtlistener.com/opinion/5670270/cahill-v-regan/#:~:text=If%20an%20employee%20is%20hired,be%20assigned%20to%20the%20other.", "proposition": "Cahill v. Regan holds that an employee owns their invention unless hired to invent or given the task of devoting their efforts to a particular problem, in which case the resulting invention is the employer's and must be assigned.", "verbatimQuote": "If an employee is hired to invent or is given the task of devoting his efforts to a particular problem, the resulting invention is the employer’s, and any patent obtained by the employee must be assigned to the other.", "date": "1959-03-05", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-cahill-hired-to-invent" }, { "id": "cahill-shop-right", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Cahill v. Regan", "citation": "Cahill v. Regan, 5 N.Y.2d 292 (1959).", "url": "https://www.courtlistener.com/opinion/5670270/cahill-v-regan/", "deepLink": "https://www.courtlistener.com/opinion/5670270/cahill-v-regan/#:~:text=Since%20the%20servant%20uses%20his,which%20embodies%20his%20own%20property", "proposition": "Cahill v. Regan recognizes the equitable shop right: where the employee used the employer's time, facilities, and materials to reach a concrete result, the employer is in equity entitled to use the invention, even when the employee retains title.", "verbatimQuote": "Since the servant uses his master’s time, facilities and materials to attain a concrete result, the latter is in equity entitled to use that which embodies his own property", "date": "1959-03-05", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-cahill-shop-right" } ] }, { "slug": "holdover-clause-limit", "label": "Are post-employment trailing-assignment clauses enforceable?", "heading": "Are trailing-assignment (holdover) clauses enforceable in New York?", "answerText": "Only so far as they are reasonable. Section 203-f does not cap post-employment assignment periods, and no reported New York appellate decision squarely decides whether a trailer clause reaching inventions first conceived after employment ends is enforceable. The operative policy lens is ordinary restrictive-covenant law: an aggressive holdover clause that functions as a disguised noncompete is tested under BDO Seidman v. Hirshberg's three-part reasonableness standard, and De Long Corp. v. Lucas warns that future-improvement assignment language must be very plain before a court will read it to bind an inventor's later work.", "sources": [ { "id": "delong-very-plain", "authorityType": "case-law", "tier": "primary-source-backed", "title": "De Long Corp. v. Lucas", "citation": "De Long Corp. v. Lucas, 176 F. Supp. 104 (S.D.N.Y. 1959).", "url": "https://www.courtlistener.com/opinion/1484646/de-long-corporation-v-lucas/", "deepLink": "https://www.courtlistener.com/opinion/1484646/de-long-corporation-v-lucas/#:~:text=the%20language%20of%20the%20contract,the%20mind%20of%20the%20inventor", "proposition": "De Long Corp. v. Lucas holds that for an agreement to bind an inventor to assign future improvements, the contract language must be very plain and evidence unmistakably that such an agreement was in the inventor's mind.", "verbatimQuote": "the language of the contract must be very plain and evidence unmistakably that such an agreement was in the mind of the inventor", "date": "1959-07-30", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-delong-very-plain" }, { "id": "delong-mortgage", "authorityType": "case-law", "tier": "primary-source-backed", "title": "De Long Corp. v. Lucas", "citation": "De Long Corp. v. Lucas, 176 F. Supp. 104 (S.D.N.Y. 1959).", "url": "https://www.courtlistener.com/opinion/1484646/de-long-corporation-v-lucas/", "deepLink": "https://www.courtlistener.com/opinion/1484646/de-long-corporation-v-lucas/#:~:text=The%20law%20does%20not%20look,bind%20all%20its%20future%20products%E2%80%9D.", "proposition": "De Long Corp. v. Lucas disfavors covenants that place a mortgage on a man's brain to bind all its future products, declining to read an open-ended post-employment claim on an inventor's future output.", "verbatimQuote": "The law does not look favorably upon covenants which place “a mortgage on a man’s brain, to bind all its future products”.", "date": "1959-07-30", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-delong-mortgage" }, { "id": "bdo-three-prong", "authorityType": "case-law", "tier": "primary-source-backed", "title": "BDO Seidman v. Hirshberg", "citation": "BDO Seidman v. Hirshberg, 93 N.Y.2d 382 (1999).", "url": "https://www.courtlistener.com/opinion/2117265/bdo-seidman-v-hirshberg/", "deepLink": "https://www.courtlistener.com/opinion/2117265/bdo-seidman-v-hirshberg/#:~:text=A%20restraint%20is%20reasonable%20only,legitimate%20interest%20of%20the%20employer", "proposition": "BDO Seidman v. Hirshberg sets New York's three-part reasonableness test for a restrictive covenant, requiring as the first prong that the restraint be no greater than is required for the protection of the legitimate interest of the employer.", "verbatimQuote": "A restraint is reasonable only if it: (1) is no greater than is required for the protection of the legitimate interest of the employer", "date": "1999-05-13", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-bdo-three-prong" }, { "id": "bdo-violation", "authorityType": "case-law", "tier": "primary-source-backed", "title": "BDO Seidman v. Hirshberg", "citation": "BDO Seidman v. Hirshberg, 93 N.Y.2d 382 (1999).", "url": "https://www.courtlistener.com/opinion/2117265/bdo-seidman-v-hirshberg/", "deepLink": "https://www.courtlistener.com/opinion/2117265/bdo-seidman-v-hirshberg/#:~:text=A%20violation%20of%20any%20prong%20renders%20the%20covenant%20invalid.", "proposition": "BDO Seidman v. Hirshberg holds that a violation of any prong of the reasonableness test renders the covenant invalid.", "verbatimQuote": "A violation of any prong renders the covenant invalid.", "date": "1999-05-13", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-bdo-violation" }, { "id": "ny-203f-void-practice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "N.Y. Labor Law § 203-f", "citation": "N.Y. Lab. Law § 203-f(2).", "url": "https://www.nysenate.gov/legislation/laws/LAB/203-F", "proposition": "N.Y. Labor Law § 203-f(2) declares that a provision purporting to require assignment of an invention excluded under subdivision one is against the public policy of the state and shall be unenforceable.", "verbatimQuote": "To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision one of this section, such provision is against the public policy of this state and shall be unenforceable.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/new-york#src-ny-203f-void-practice" } ] } ] } }