{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/texas", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/texas.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/texas", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/texas/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/texas/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "texas", "frontmatter": { "title": "Employee Invention Assignment in Texas", "description": "Texas has no employee-invention-assignment statute, so the inventor owns by default under federal patent law and a Texas employer must rely on precise present-tense assignment language to take title; a post-employment \"holdover\" clause that restrains future work is policed only as a covenant not to compete under Tex. Bus. & Com. Code ch. 15, where Texas courts reform overbroad restraints rather than void them.", "state": "Texas", "lastReviewed": "2026-06-30", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "Texas has no employee-invention-assignment statute; the inventor owns by default under federal patent law, so a Texas employer must rely on precise present-tense assignment language, and a post-employment \"holdover\" clause is policed only as a restraint of trade under Texas reasonableness law.", "keyLaw": "No Texas invention-assignment statute; Stanford v. Roche, 563 U.S. 776 (2011); United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933); Tex. Bus. & Com. Code § 15.50", "statutoryCarveOut": "none", "defaultOwnership": "employee", "employeeNoticeRequired": "n/a", "holdoverClauseLimit": "reasonablenessOnly", "carveOutScope": "No statutory carve-out; freedom of contract limited only by common-law contract defenses and, for post-employment reach, Texas restraint-of-trade reasonableness under Tex. Bus. & Com. Code ch. 15" }, "about": [ "Texas no invention-assignment statute", "Texas hired-to-invent doctrine", "Texas shop right", "Texas holdover trailing assignment", "present vs future assignment Texas", "Tex. Bus. & Com. Code § 15.50" ], "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 Texas employer require assignment of every invention?", "answerText": "There is no Texas statute on the subject either way. Unlike California (Labor Code section 2870) or Washington (RCW 49.44.140), Texas has no employee-invention-assignment statute and therefore no protected category of own-time inventions that a clause is forbidden to reach. Scope is set entirely by the assignment contract, against a federal-law backdrop in which the inventor owns the invention unless and until it is assigned — so what the employer can require is a matter of contract drafting and the ordinary limits on restraints of trade, not a statutory carve-out.", "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 — the federal default that governs in a state, like Texas, with no invention-assignment statute.", "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/texas#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 a Texas 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/texas#src-stanford-traceback" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a Texas employer notify the employee?", "answerText": "No. Texas has no invention-assignment statute, so no statutory notice or carve-out-disclosure requirement applies; a clause's validity does not depend on any notice to the employee. There is no own-time carve-out to disclose and nothing for the employer to warn the employee about — the only question is whether the assignment language is effective to transfer the inventor's default title.", "sources": [ { "id": "stanford-notice", "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 that rights in an invention belong to the inventor absent an effective assignment — so in Texas, with no notice statute, a clause's validity turns on the assignment language transferring the inventor's default title, not on any notice to the employee.", "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/texas#src-stanford-notice" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in Texas?", "answerText": "The inventor. Absent a written assignment, the baseline rule under federal patent law — which governs who holds title to a patentable invention in Texas 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. Texas recognizes two narrow common-law overlays that can give an employer rights without an express assignment — the hired-to-invent doctrine and the shop right — but neither is a substitute for a precise present-tense assignment clause.", "sources": [ { "id": "stanford-inventor-default", "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/texas#src-stanford-inventor-default" }, { "id": "stanford-traceback-default", "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/texas#src-stanford-traceback-default" }, { "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": "Dubilier states the hired-to-invent doctrine: an employee engaged 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": "1933-04-10", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/texas#src-dubilier-hired-to-invent" }, { "id": "wommack-shop-right", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Wommack v. Durham Pecan Co.", "citation": "Wommack v. Durham Pecan Co., 715 F.2d 962 (5th Cir. 1983).", "url": "https://www.courtlistener.com/opinion/423930/wommack-v-durham-pecan-co/", "deepLink": "https://www.courtlistener.com/opinion/423930/wommack-v-durham-pecan-co/#:~:text=The%20classic%20shop%20rights%20doctrine,an%20implied%20nonexclusive%2C%20royalty%2Dfree%20license.", "proposition": "Wommack, a Texas dispute, defines the shop right: where an employee uses the employer's time, tools, and the services of other employees to make and reduce an invention to practice, the employer is the recipient of an implied nonexclusive, royalty-free license — a license, not ownership.", "verbatimQuote": "The classic shop rights doctrine ordains that when an employee makes and reduces to practice an invention on his employer’s time, using his employer’s tools and the services of other employees, the employer is the recipient of an implied nonexclusive, royalty-free license.", "date": "1983-09-26", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/texas#src-wommack-shop-right" }, { "id": "ddb-present-assignment", "authorityType": "case-law", "tier": "primary-source-backed", "title": "DDB Techs., L.L.C. v. MLB Advanced Media, L.P.", "citation": "DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284 (Fed. Cir. 2008).", "url": "https://www.courtlistener.com/opinion/210069/ddb-technologies-v-mlb-advanced-media/", "deepLink": "https://www.courtlistener.com/opinion/210069/ddb-technologies-v-mlb-advanced-media/#:~:text=would%20have%20been%20automatically%20assigned,the%20part%20of%20the%20company.", "proposition": "DDB Technologies holds that under a present-assignment clause, inventions within its scope are automatically assigned by operation of law with no further act required — the basis for preferring present-tense (does hereby assign) language over a future promise to assign.", "verbatimQuote": "would have been automatically assigned to Schlumberger by operation of law with no further act required on the part of the company.", "date": "2008-02-13", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/texas#src-ddb-present-assignment" } ] }, { "slug": "holdover-clause-limit", "label": "Are post-employment trailing-assignment clauses enforceable?", "heading": "Are trailing-assignment (holdover) clauses enforceable in Texas?", "answerText": "Only to the extent they are reasonable. No Texas statute caps invention-assignment holdovers as such, but a post-employment trailing clause that forces an employee to hand over inventions made after they leave restrains future work, and a restraint on future work is analyzed as a covenant not to compete under Business and Commerce Code section 15.50: it is enforceable only to the extent its limitations on time, geographic area, and scope of activity are reasonable and impose no greater restraint than necessary to protect the employer's legitimate interest. And when a Texas restraint sweeps too broadly, the court reforms it to reasonable limits rather than voiding it. No Texas appellate decision found in our review squarely decides the precise post-employment reach a holdover invention-assignment clause may have.", "sources": [ { "id": "tx-1550", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Tex. Bus. & Com. Code § 15.50", "citation": "Tex. Bus. & Com. Code § 15.50(a).", "url": "https://statutes.capitol.texas.gov/Docs/BC/htm/BC.15.htm", "proposition": "Section 15.50(a) makes a covenant not to compete enforceable only to the extent its limitations as to time, geographic area, and scope of activity are reasonable and impose no greater restraint than necessary to protect the promisee's goodwill or other business interest — the reasonableness ceiling that governs a post-employment holdover assignment clause.", "verbatimQuote": "a covenant not to compete is enforceable if it is ancillary to or part of an otherwise enforceable agreement at the time the agreement is made to the extent that it contains limitations as to time, geographical area, and scope of activity to be restrained that are reasonable and do not impose a greater restraint than is necessary to protect the goodwill or other business interest of the promisee.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/texas#src-tx-1550" }, { "id": "marsh-reformation", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Marsh USA Inc. v. Cook", "citation": "Marsh USA Inc. v. Cook, 354 S.W.3d 764 (Tex. 2011).", "url": "https://www.courtlistener.com/opinion/2541088/marsh-usa-inc-v-cook/", "deepLink": "https://www.courtlistener.com/opinion/2541088/marsh-usa-inc-v-cook/#:~:text=If%20the%20trial%20court%20determines,by%20injunction%20with%20reasonable%20limitations.", "proposition": "Marsh USA Inc. v. Cook confirms that a Texas court confronted with an unreasonable or overbroad restraint reforms the agreement and enforces it within reasonable limits rather than voiding it.", "verbatimQuote": "If the trial court determines that any particular provision is unreasonable or overbroad, the trial court has the authority to reform the Agreement and enforce it by injunction with reasonable limitations.", "date": "2011-06-24", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/texas#src-marsh-reformation" }, { "id": "ddb-present-assignment-practice", "authorityType": "case-law", "tier": "primary-source-backed", "title": "DDB Techs., L.L.C. v. MLB Advanced Media, L.P.", "citation": "DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284 (Fed. Cir. 2008).", "url": "https://www.courtlistener.com/opinion/210069/ddb-technologies-v-mlb-advanced-media/", "deepLink": "https://www.courtlistener.com/opinion/210069/ddb-technologies-v-mlb-advanced-media/#:~:text=would%20have%20been%20automatically%20assigned,the%20part%20of%20the%20company.", "proposition": "DDB Technologies holds that under a present-assignment clause, inventions within its scope are automatically assigned by operation of law with no further act required — the basis for preferring present-tense (does hereby assign) language over a future promise to assign.", "verbatimQuote": "would have been automatically assigned to Schlumberger by operation of law with no further act required on the part of the company.", "date": "2008-02-13", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/texas#src-ddb-present-assignment-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 a Texas 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/texas#src-stanford-traceback-practice" } ] } ] } }