Can an Ohio employer require assignment of every invention?
There is no statutory ceiling. Ohio has no private-employment invention-assignment statute — nothing like California Labor Code § 2870 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, Ohio's common-law ownership rules, and the federal patent and copyright overlay. The employee-invention statutes Ohio does have run the opposite direction and stop at the public sector, vesting ownership in state institutions rather than protecting employees. On a touch screen, a tap shows all 2 sources in this group.
A full-text review of the Ohio Revised Code surfaces no invention-assignment provision applicable to private employment. The invention-specific statutes Ohio has enacted point the other way: R.C. 3345.14 vests sole ownership of inventions made by state college and university employees — in the scope of employment, from institutional research, or with institutional funding, equipment, or infrastructure — in the institution itself, and R.C. 339.062 mirrors that rule for charter county hospitals. Those are employer-ownership statutes for state entities, the opposite polarity of an employee carve-out, and they do not reach private employers. R.C. 1345.61 et seq. regulates consumer invention-promotion companies, not employment, and the Ohio Uniform Trade Secrets Act, R.C. 1333.61 et seq., supplies the trade-secret backdrop rather than any limit on what an assignment clause may capture. So a private Ohio employer starts from contract law, not a statutory ceiling.
What fills the statutory gap is Ohio common law. In Gemco Engineering & Mfg. Co. v. Henderson, the Supreme Court of Ohio resolved a dispute over two employee inventions entirely through the common-law ownership rules — asking whether the employee was hired to invent and what equity gives the employer, not whether any statute limited the parties' bargain .
The substantive default that Ohio contract and common law operate 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 an Ohio employer can, in principle, contract for assignment more broadly than a California or Washington employer, because no statute carves own-time inventions out of 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 operates as a restraint on the former employee it is tested under Ohio's reasonableness limits on post-employment restraints, discussed in the trailing-clause question below. There is simply no statutory own-time safe harbor for the employee to invoke and no statutory ceiling for the drafter to code around.
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Gemco Engineering & Mfg. Co. v. Henderson resolves employee-invention ownership entirely under Ohio common law — the court asked whether the employee was hired to invent and held that he owned his inventions — showing that the reach of an assignment clause in Ohio is a matter of contract and common law, not a statutory carve-out.
This court is in agreement with the Court of Appeals in finding, under the evidence, that Henderson was not employed by Gemco to invent, and that he is the owner of the inventions of both the mounter and demounter, subject to any assignment or assignments thereof which Henderson may have theretofore made.
See Gemco Engineering & Mfg. Co. v. Henderson, 151 Ohio St. 95 (1949).
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 an Ohio employer notify the employee?
Not applicable. Because Ohio 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). Disclosure and assignment duties in Ohio are creatures of the contract, and Ohio courts enforce them according to the agreement's plain language .
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; Ohio 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 Ohio does not have.
Where Ohio does impose disclosure and assignment duties, they come from the agreement itself. In Precision Strip, Inc. v. Dircksen, Ohio's Third District Court of Appeals enforced the plain language of an employment agreement's invention provision, holding that the contract itself fixed when ownership of an invention passed to the employer .
For a multistate employer the takeaway is the inverse of the notice states: an Ohio 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.
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Precision Strip, Inc. v. Dircksen enforced the plain language of an invention-assignment agreement, holding that the parties' contract itself determined that ownership passed automatically — so in Ohio, disclosure and assignment duties arise from the agreement rather than from any notice-requiring statute.
clearly and unambiguously establishes the parties agreed that ownership of the intellectual property at issue automatically passed to Precision Strip at the time it was conceived by Dircksen.
See Precision Strip, Inc. v. Dircksen, 2020-Ohio-6668 (3d Dist.).
Who owns an invention by default in Ohio?
The inventor, unless hired to invent. Absent a written assignment, the employee who conceived the invention owns it. The Supreme Court of Ohio has held that an employee who was not employed to invent owned his inventions outright — with the employer taking at most a shop right, a non-exclusive right to use the invention rather than ownership of it, in a device developed in the employer's shop at the employer's expense. 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 .
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 .
Ohio applies these rules directly. In Gemco Engineering & Mfg. Co. v. Henderson, an employee had designed two related devices — a tire mounter developed in the employer's shop at the employer's expense, and a tire demounter developed at home on his own time. The Supreme Court of Ohio found he was not employed to invent, and that he therefore owned both inventions .
Gemco also marks the boundary of the employer's equitable fallback. For the device developed in the shop at the employer's expense, the employer received a shop right — the ability to make, use, and sell the device, but not title to it; for the invention developed at home on the employee's own time, no shop right arose at all .
Because ownership starts with the inventor and no Ohio statute fills the gap, the dependable path for an employer is written present-assignment language that transfers title automatically, rather than a future promise to assign. Ohio's Third District has enforced exactly that drafting: in Precision Strip, Inc. v. Dircksen, clause language passing the employee's rights to the company at the time of conception transferred ownership automatically, with no requirement that the employer first request a written assignment .
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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).
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).
Gemco Engineering & Mfg. Co. v. Henderson holds that an employee who was not employed to invent owned both of his inventions, anchoring Ohio's common-law default that the employee-inventor owns absent hired-to-invent facts or an express assignment.
This court is in agreement with the Court of Appeals in finding, under the evidence, that Henderson was not employed by Gemco to invent, and that he is the owner of the inventions of both the mounter and demounter, subject to any assignment or assignments thereof which Henderson may have theretofore made.
See Gemco Engineering & Mfg. Co. v. Henderson, 151 Ohio St. 95 (1949).
Gemco Engineering & Mfg. Co. v. Henderson holds that when an employee not hired to invent develops an invention in the employer's shop at the employer's expense, equity gives the employer a shop right — a right to make, use, and sell the invention — rather than ownership.
Where an employee, even though not hired to invent, develops an invention in his employer's shop at the expense of his employer, equity will intervene to protect the employer against later exclusive adverse claims of the employee-inventor by giving the employer a shop right in the invention thereby enabling the employer to make, use and sell the device invented by the employee.
See Gemco Engineering & Mfg. Co. v. Henderson, 151 Ohio St. 95 (1949).
Precision Strip, Inc. v. Dircksen enforced present-transfer assignment language under which the employee's rights passed to the company at the time of conception, holding that ownership transferred automatically without any assignment-request condition precedent.
Employee’s rights and interests therein shall pass to the Company at the time of conception of [sic] acquisition thereof by Employee.
See Precision Strip, Inc. v. Dircksen, 2020-Ohio-6668 (3d Dist.).
Are trailing-assignment (holdover) clauses enforceable in Ohio?
Only if reasonable — and the on-point authority is thin. No Ohio statute caps how long a trailing clause may run, so the governing test is Ohio's general reasonableness standard for post-employment restraints. The one decision to face a trailing invention-assignment clause directly — a federal district court applying Ohio law — voided a five-year disclose-and-assign holdover as against public policy, and no Ohio state appellate decision found in our review has squarely ruled on such a clause. On a touch screen, a tap shows all 2 sources in this group.
The decision squarely on point applied Ohio reasonableness doctrine and voided the clause. In GTI Corp. v. Calhoon, the United States District Court for the Southern District of Ohio measured a clause requiring a former employee to disclose and assign ideas and improvements conceived for five years after termination against the three-part reasonableness test drawn from the Supreme Court of Ohio's restrictive-covenant precedent, and held the five-year holdover void .
The statewide framework an Ohio court would apply today is Raimonde v. Van Vlerah, which states the controlling three-prong reasonableness standard for restraints arising from employment .
Raimonde also abandoned Ohio's old blue-pencil rule in favor of judicial modification, so an overbroad restraint may be narrowed to a reasonable scope rather than struck wholesale .
“Courts are empowered to modify or amend employment agreements to achieve such results.”
Two caveats keep this cell honest. First, GTI is a federal district court applying Ohio law , and it predates Raimonde — it applied the same three prongs through the Supreme Court of Ohio's earlier restrictive-covenant precedent that Raimonde later formalized — so while it is the clearest demonstration of how the reasonableness test operates on a trailing assignment, it does not bind Ohio's state courts. No Ohio state appellate decision found in our review squarely decides whether a trailing invention-assignment clause is enforceable or how long a tail may run. Second, the modern appellate decision closest to the territory, Precision Strip, Inc. v. Dircksen, enforced an assignment agreement that included a six-month post-employment tail, but it decided only ownership of an invention conceived during employment — it did not rule on the tail's validity . There is also no bright-line temporal cap in Ohio: reasonableness is the test, not any fixed number of months.
Treat a trailing invention-assignment clause in Ohio as a post-employment restraint a court will test for reasonableness, not as boilerplate that rides along with the rest of the agreement. A federal court applying Ohio law voided a five-year disclose-and-assign holdover as an unreasonable restriction on the former employee's ability to use general skill and knowledge , and Ohio's controlling framework judges any such restraint by whether it is no greater than required to protect the employer, imposes no undue hardship on the employee, and does not injure the public — with courts empowered to cut an overbroad clause down rather than enforce it as written . Because no Ohio appellate decision found in our review fixes how long a tail may safely run, keep any holdover narrow, brief, and tied to inventions derived from the employer's confidential information or from work the employee performed during employment.
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GTI Corp. v. Calhoon, a federal district court applying Ohio law, held that a clause requiring a former employee to disclose and assign ideas conceived for five years after termination unreasonably restricted his right to use his general skill and knowledge and was void against public policy — the direct demonstration that Ohio's reasonableness test governs trailing invention-assignment clauses.
The provision of the contract requiring defendant Calhoon to disclose and assign to plaintiff any ideas or improvements conceived by him for five years after termination of his employment with plaintiff unreasonably restricts Calhoon’s right to utilize his general skill and knowledge in subsequent employment and is void against public policy.
See GTI Corp. v. Calhoon, 309 F. Supp. 762 (S.D. Ohio 1969).
Raimonde v. Van Vlerah states Ohio's controlling three-prong reasonableness standard for post-employment restraints — no greater than required for the employer's protection, no undue hardship on the employee, and not injurious to the public — the framework an Ohio court would apply to a trailing invention-assignment clause.
A covenant restraining an employee from competing with his former employer upon termination of employment is reasonable if it is no greater than is required for the protection of the employer, does not impose undue hardship on the employee, and is not injurious to the public.
See Raimonde v. Van Vlerah, 42 Ohio St.2d 21 (1975).
Raimonde v. Van Vlerah abandons the blue-pencil rule and empowers Ohio courts to modify or amend an overbroad employment restraint to a reasonable scope rather than strike it wholesale.
Courts are empowered to modify or amend employment agreements to achieve such results.
See Raimonde v. Van Vlerah, 42 Ohio St.2d 21 (1975).
Precision Strip, Inc. v. Dircksen — the modern Ohio appellate decision closest to the holdover question — decided only that ownership of an invention conceived during employment passed automatically under the agreement's present-transfer language; it enforced an agreement containing a six-month post-employment tail without ruling on the tail's validity.
clearly and unambiguously establishes the parties agreed that ownership of the intellectual property at issue automatically passed to Precision Strip at the time it was conceived by Dircksen.
See Precision Strip, Inc. v. Dircksen, 2020-Ohio-6668 (3d Dist.).
What does federal law require a confidentiality and invention assignment agreement in Ohio 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.
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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).