Employee Invention Assignment in Ohio

Can an Ohio employer require assignment of every invention?

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 A.1.

“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.”

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 A.2.

“Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.”

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.

Must an Ohio employer notify the employee?

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 B.1.

“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.”

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.

Who owns an invention by default in Ohio?

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 C.3.

“Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.”

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 C.2.

“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.”

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 C.1.

“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.”

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 C.4.

“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.”

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 C.5.

“Employee’s rights and interests therein shall pass to the Company at the time of conception of [sic] acquisition thereof by Employee.”

Are trailing-assignment (holdover) clauses enforceable in Ohio?

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 D.1.

“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.”

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 D.2.

“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.”

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 D.3.

“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 D.4. There is also no bright-line temporal cap in Ohio: reasonableness is the test, not any fixed number of months.

“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.”