{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/utah", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/utah.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/utah", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/utah/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/utah/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "utah", "frontmatter": { "title": "Employee Invention Assignment in Utah", "description": "Utah's Employment Inventions Act (Utah Code sections 34-39-2 and 34-39-3) makes an assignment or license clause unenforceable only for an invention an employee created entirely on their own time that is not an employment invention, but that term is defined so broadly — reaching anything related to the employer's industry or anticipated research and development — that the own-time carve-out is materially narrower than California's; the Act requires no employee notice, and post-employment holdover clauses are enforceable only so far as reasonable.", "state": "Utah", "lastReviewed": "2026-06-30", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "Utah's Employment Inventions Act (Utah Code sections 34-39-2 and 34-39-3) makes an assignment or license clause unenforceable only for an invention the employee created entirely on their own time that is not an \"employment invention\" — but that term is defined so broadly, reaching anything related to the employer's industry or anticipated R&D, that the own-time carve-out is materially narrower than the California model; the Act requires no employee notice, and post-employment \"holdover\" clauses are enforceable only so far as reasonable.", "keyLaw": "Utah Code sections 34-39-2, 34-39-3 (Employment Inventions Act); Stanford v. Roche, 563 U.S. 776 (2011); Robbins v. Finlay, 645 P.2d 623 (Utah 1982)", "statutoryCarveOut": "statute", "defaultOwnership": "employee", "employeeNoticeRequired": "no", "holdoverClauseLimit": "reasonablenessOnly", "carveOutScope": "An invention the employee created entirely on their own time that is not an “employment invention” — but Utah Code section 34-39-2(1) defines “employment invention” disjunctively to include any invention related to the employer's industry or trade, or to its current or demonstrably anticipated business, research, or development, so the protected zone is much narrower than an own-time/own-resource/unrelated-to-business carve-out." }, "about": [ "Utah Employment Inventions Act", "Utah Code 34-39-3", "Utah employment invention definition", "Utah employee invention ownership", "Utah holdover trailing assignment", "Robbins v. Finlay", "Utah own-time invention carve-out narrow" ], "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 Utah employer require assignment of every invention?", "answerText": "Almost, but not quite. Utah's Employment Inventions Act, Utah Code section 34-39-3, refuses to enforce an assignment or license clause only against an invention the employee created entirely on their own time that is not an employment invention. The critical catch is the definition: Utah Code section 34-39-2(1) defines employment invention disjunctively, so an invention is an employment invention — and therefore fully assignable — if it satisfies any one of several tests, including merely being related to the industry or trade of the employer. An off-hours, own-resources invention that touches the employer's field is still fair game, which makes Utah's carve-out far narrower than California's.", "sources": [ { "id": "ut-34-39-3", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Utah Code § 34-39-3 (Employment Inventions Act)", "citation": "Utah Code § 34-39-3(1).", "url": "https://le.utah.gov/xcode/Title34/Chapter39/34-39-S3.html", "proposition": "Utah Code § 34-39-3(1) makes an employment agreement unenforceable against the employee to the extent it requires the employee to assign or license an invention that is both created entirely on the employee's own time and not an employment invention — reaching forced licenses as well as forced assignments.", "verbatimQuote": "An employment agreement between an employee and employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is: (a) created by the employee entirely on the employee's own time; and (b) not an employment invention.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/utah#src-ut-34-39-3" }, { "id": "ut-34-39-2", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Utah Code § 34-39-2 (Employment Inventions Act)", "citation": "Utah Code § 34-39-2(1)(b)–(d).", "url": "https://le.utah.gov/xcode/Title34/Chapter39/34-39-S2.html", "proposition": "Utah Code § 34-39-2(1) defines employment invention disjunctively, so an invention is an employment invention — and fully assignable — if it satisfies any single prong, including that it is merely related to the industry or trade of the employer, or to the employer's current or demonstrably anticipated business, research, or development.", "verbatimQuote": "the result of any work, services, or duties performed by an employee for the employer; (c) related to the industry or trade of the employer; or (d) related to the current or demonstrably anticipated business, research, or development of the employer", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/utah#src-ut-34-39-2" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a Utah employer notify the employee?", "answerText": "No. Unlike California, which requires written notice under Labor Code section 2872, and Washington, which requires one under RCW 49.44.140(3), Utah's Employment Inventions Act contains no notice, disclosure, or acknowledgment requirement. The Act operates purely on enforceability: a clause that overreaches the own-time carve-out is unenforceable to that extent, and a clause within the Act's bounds is valid without any notice to the employee. Section 34-39-3 instead speaks in terms of what an employer may and may not require as a condition of employment.", "sources": [ { "id": "ut-34-39-3-notice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Utah Code § 34-39-3 (Employment Inventions Act)", "citation": "Utah Code § 34-39-3(6)–(7).", "url": "https://le.utah.gov/xcode/Title34/Chapter39/34-39-S3.html", "proposition": "Utah Code § 34-39-3 lets an employer require a compliant assignment agreement as a condition of employment but bars requiring agreement to anything unenforceable under Subsection (1); the Act imposes no notice, disclosure, or acknowledgment requirement of any kind.", "verbatimQuote": "An employer may require employees to agree to an agreement within the scope of Subsection (2) as a condition of employment or the continuation of employment. (7) An employer may not require employees to agree to anything unenforceable under Subsection (1) as a condition of employment or the continuation of employment.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/utah#src-ut-34-39-3-notice" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in Utah?", "answerText": "The inventor. Absent a written assignment, federal patent law — which governs who holds title to a patentable invention in Utah as elsewhere — vests rights in the employee who conceived it. The U.S. Supreme Court restated that baseline in Stanford v. Roche, and although others may acquire an interest, that interest must trace back to the inventor. The Employment Inventions Act does not vest ownership in the employer; it only constrains what an assignment or license clause may demand. The one general-law exception is the hired-to-invent rule of United States v. Dubilier Condenser Corp.: an employee engaged specifically to make an invention must assign the patent that results.", "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/utah#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/utah#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. states the hired-to-invent rule: an employee engaged to make an invention who accomplishes that task during the term of service is bound to assign to the employer any patent obtained.", "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/utah#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 Utah?", "answerText": "Only so far as they are reasonable. The Employment Inventions Act sets no durational ceiling on post-employment assignments, and our review found no Utah appellate decision squarely deciding whether a holdover clause reaching inventions conceived after employment ends is enforceable. The operative lens is therefore Utah's general restrictive-covenant law: a trailing clause that functions to restrain the departed employee is tested for reasonableness, as Robbins v. Finlay frames it and System Concepts, Inc. v. Dixon applies it.", "sources": [ { "id": "robbins-reasonable", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Robbins v. Finlay", "citation": "Robbins v. Finlay, 645 P.2d 623 (Utah 1982).", "url": "https://www.courtlistener.com/opinion/1231169/robbins-v-finlay/", "deepLink": "https://www.courtlistener.com/opinion/1231169/robbins-v-finlay/#:~:text=Covenants%20not%20to%20compete%20are,or%20education%20of%20the%20employee.", "proposition": "Robbins v. Finlay states Utah's reasonableness test for a post-employment restrictive covenant: it is enforceable only if carefully drawn to protect the employer's legitimate interests, judged by factors including geographic extent, duration, the employee's duties, and the interest protected — the analogue a Utah court would most likely apply to an invention holdover clause.", "verbatimQuote": "Covenants not to compete are enforceable if carefully drawn to protect only the legitimate interests of the employer. The reasonableness of a covenant depends upon several factors, including its geographical extent; the duration of the limitation; the nature of the employee’s duties; and the nature of the interest which the employer seeks to protect such as trade secrets, the goodwill of his business, or an extraordinary investment in the training or education of the employee.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/utah#src-robbins-reasonable" }, { "id": "system-concepts-reasonable", "authorityType": "case-law", "tier": "primary-source-backed", "title": "System Concepts, Inc. v. Dixon", "citation": "System Concepts, Inc. v. Dixon, 669 P.2d 421 (Utah 1983).", "url": "https://www.courtlistener.com/opinion/1177500/system-concepts-inc-v-dixon/", "deepLink": "https://www.courtlistener.com/opinion/1177500/system-concepts-inc-v-dixon/#:~:text=The%20reasonableness%20of%20the%20restraints,case%20and%20the%20subject%20covenant.", "proposition": "System Concepts, Inc. v. Dixon holds that the reasonableness of a restrictive covenant is determined case-by-case on the particular facts, confirming that a Utah court would evaluate a holdover clause's scope and duration against the specific circumstances rather than a bright-line rule.", "verbatimQuote": "The reasonableness of the restraints in a restrictive covenant is determined on a case-by-case basis, taking into account the particular facts and circumstances surrounding the case and the subject covenant.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/utah#src-system-concepts-reasonable" }, { "id": "ut-34-39-2-practice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Utah Code § 34-39-2 (Employment Inventions Act)", "citation": "Utah Code § 34-39-2(1)(b)–(d).", "url": "https://le.utah.gov/xcode/Title34/Chapter39/34-39-S2.html", "proposition": "Utah Code § 34-39-2(1) defines employment invention disjunctively, so an invention is an employment invention — and fully assignable — if it satisfies any single prong, including that it is merely related to the industry or trade of the employer, or to the employer's current or demonstrably anticipated business, research, or development.", "verbatimQuote": "the result of any work, services, or duties performed by an employee for the employer; (c) related to the industry or trade of the employer; or (d) related to the current or demonstrably anticipated business, research, or development of the employer", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/utah#src-ut-34-39-2-practice" }, { "id": "ut-34-39-3-practice", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Utah Code § 34-39-3 (Employment Inventions Act)", "citation": "Utah Code § 34-39-3(1).", "url": "https://le.utah.gov/xcode/Title34/Chapter39/34-39-S3.html", "proposition": "Utah Code § 34-39-3(1) makes an employment agreement unenforceable against the employee to the extent it requires the employee to assign or license an invention that is both created entirely on the employee's own time and not an employment invention — reaching forced licenses as well as forced assignments.", "verbatimQuote": "An employment agreement between an employee and employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is: (a) created by the employee entirely on the employee's own time; and (b) not an employment invention.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/utah#src-ut-34-39-3-practice" } ] } ] } }