Can a West Virginia employer require assignment of every invention?
There is no statutory ceiling. Unlike California or New York, West Virginia has no employee-invention-assignment statute — nothing 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, the common-law inventor-owns default, and the federal patent and copyright overlay. The baseline that contract operates against is that rights in an invention belong to the inventor, and the leading West Virginia-connected decision enforced a written assignment according to its terms. On a touch screen, a tap shows all 2 sources in this group.
Because there is no statute on point, the limits come from general principles rather than a legislative carve-out. A full-text review of the West Virginia Code surfaces no invention-, patent-, or intellectual-property-assignment provision governing private employment. The legislature has acted in adjacent fields — the West Virginia Uniform Trade Secrets Act (W. Va. Code § 47-22-1 et seq.), technology-transfer provisions for public higher-education institutions (W. Va. Code §§ 18B-12-3, 18B-12-4), and a sector-specific statute limiting physician non-competes (W. Va. Code § 47-11E-1 et seq.) — but it has never regulated what an employment invention-assignment clause may reach. So a West Virginia employer starts from contract law, not a § 2870-style statutory ceiling.
The leading West Virginia-connected authority is University of West Virginia Board of Trustees v. VanVoorhies, a Federal Circuit decision arising from a West Virginia university dispute. Applying the ordinary federal and contract-law baseline rather than any West Virginia-specific doctrine, the court enforced a written assignment according to its terms — including the duty to assign a later continuation-in-part application .
The substantive default that contract law operates 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 a West Virginia employer can, in principle, contract for assignment more broadly than a California or Washington employer, because no statute carves out own-time inventions from 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 functions as a restraint on the employee, to West Virginia's reasonableness limits on post-employment restraints. There is simply no statutory own-time/own-resource safe harbor for the employee to invoke and no statutory ceiling for the drafter to code around.
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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, 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).
University of West Virginia Board of Trustees v. VanVoorhies — a Federal Circuit decision in a West Virginia university dispute, applying the ordinary federal and contract-law baseline — supports the rule that a written invention assignment is enforced according to its terms, including a duty to assign later continuation-in-part applications.
Because the '970 assignment expressly required VanVoorhies to assign all CIPs of the '970 application to WVU, we affirm the court's conclusion that VanVoorhies was required to assign the '340 CIP application to WVU, and that he breached his duty by refusing to do so.
See Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002).
Must a West Virginia employer notify the employee?
Not applicable. Because West Virginia 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). What gets enforced instead is contractual: disclosure and assignment duties arise from the words of the agreement itself, and in the leading West Virginia-connected case the operative words were a written present-tense grant .
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; West Virginia 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 West Virginia does not have.
Where duties do bind, they come from the contract, not a statute. In University of West Virginia Board of Trustees v. VanVoorhies, the Federal Circuit recited and gave effect to the operative granting language of the assignment the inventor had signed — the agreement's own words, not a court-made rule, carried the transfer .
That passage is the assignment's language as recited by the court, not the court's own holding — but it shows what did the work: a present-tense sell-assign-transfer grant whose scope the court then enforced. For a multistate employer the takeaway is the inverse of the notice states: a West Virginia 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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University of West Virginia Board of Trustees v. VanVoorhies shows that in West Virginia-connected practice the assignment duty comes from the contract itself — the court recited the agreement's present-tense granting language (quoted here as the contract's words, not the court's holding) and enforced the transfer according to those terms.
[T]he undersigned does (do) hereby sell, assign, transfer and set over unto said assignee, its successors and assigns, the entire right, title and interest in and to said invention or inventions, as described in the aforesaid application
See Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002).
Who owns an invention by default in West Virginia?
The inventor, unless hired to invent. Absent a written assignment, the baseline under federal patent law — which governs who holds title to a patentable invention in West Virginia as elsewhere — is that rights belong to the employee who conceived it. The narrow exception is the employee hired to invent, whose resulting invention the employer may claim. On a touch screen, a tap shows all 2 sources in this group.
No decision of the Supreme Court of Appeals of West Virginia addressing the hired-to-invent doctrine or the shop right was found in our review, so the default here rests on the federal common-law baseline rather than on a West Virginia-specific gloss. That baseline is well settled.
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 .
Because ownership starts with the inventor, an employer's title is derivative — it exists only if and to the extent the employee assigned it. Any third-party interest must trace back to that inventor-grantor .
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 .
Short of that, where the employee is neither hired to invent nor bound by a written assignment but has used the employer's time, tools, and materials to reach a concrete result, the employer's remedy under Dubilier is only an equitable shop right — a non-exclusive license to use the invention, not ownership of it. Because ownership therefore starts with the inventor, West Virginia has no statute filling the gap, and no West Virginia appellate decision found in our review adjusts the baseline, the dependable path for an employer is a written present-assignment (hereby assigns) clause that transfers legal title automatically on conception, rather than a future promise to assign that leaves the employer with a mere equitable claim.
Sources for this answer
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).
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.
Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back 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).
Are trailing-assignment (holdover) clauses enforceable in West Virginia?
They would most likely be tested for reasonableness — by analogy. No West Virginia decision found in our review addresses a trailing clause that reaches inventions first conceived after employment ends, and there is no statutory temporal cap because there is no invention-assignment statute at all. What West Virginia does have is a well-developed restrictive-covenant framework: a post-employment restraint that is facially unreasonable is utterly void, and a restraint added after employment begins requires new consideration. A West Virginia court asked to enforce an aggressive holdover clause would most likely bring that framework to it. On a touch screen, a tap shows all 2 sources in this group.
Two gaps define the West Virginia picture. First, there is no statute: nothing caps the duration of a post-employment trailing assignment or otherwise limits what such a clause may reach. Second, our review found no West Virginia decision applying the restrictive-covenant framework to an invention-holdover clause specifically, so everything that follows is an analogy to the state's general treatment of post-employment restraints, not a holding on the invention fact pattern.
The framework itself is well developed. In Reddy v. Community Health Foundation of Man, the Supreme Court of Appeals of West Virginia set out a threshold facial-reasonableness screen for covenants restraining a former employee .
Reddy measured facial reasonableness by the three-part rule of reason it adopted from a leading commentary on employee agreements not to compete .
Timing matters too. In Environmental Products Co. v. Duncan, the court required fresh consideration when a restraint is imposed after the employment relationship is already underway , citing Pemco Corp. v. Rose, which had stated the new-consideration rule as a prediction of Virginia law .
On the facts before it, the court held that the consideration offered — continued at-will employment — did not suffice, though the holding was fact-bound and drew a dissent rather than announcing a categorical rule .
“It certainly is not adequate here.”
Extending this framework to holdover assignments is a prediction, not a holding. A West Virginia court asked to enforce a clause that sweeps in inventions an ex-employee conceives after leaving would most likely ask whether the restriction is reasonable — no greater than needed to protect the employer, not an undue hardship on the former employee, and not injurious to the public — and, if the clause was added mid-employment, whether new consideration supported it. Out-of-state authority that has voided open-ended post-employment invention assignments applies other states' law and is at most analogous; it is not West Virginia law and should not be treated as controlling here. The safe reading is that an overbroad trailer clause is at meaningful risk in West Virginia, but the invention-specific standard has not been decided.
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Reddy v. Community Health Foundation of Man supports West Virginia's threshold rule that a post-employment restrictive covenant must be reasonable on its face, and that a facially unreasonable covenant is utterly void and unenforceable — the framework a court would most likely bring, by analogy, to an aggressive invention-holdover clause.
The covenant in question must be reasonable on its face if judicial scrutiny of it is to continue. If the covenant is unreasonable on its face, then it is utterly void and unenforceable.
See Reddy v. Cmty. Health Found. of Man, 171 W. Va. 368, 298 S.E.2d 906 (1982).
Reddy v. Community Health Foundation of Man adopts the three-part rule of reason for employment restraints — the quoted test is Reddy quoting H.M. Blake's Harvard Law Review article on employee agreements not to compete, which the court took as its own standard.
A restraint is reasonable only if it (1) is no greater than is required for the protection of the employer, (2) does not impose undue hardship on the employee, and (3) is not injurious to the public
See Reddy v. Cmty. Health Found. of Man, 171 W. Va. 368, 298 S.E.2d 906 (1982).
Environmental Products Co. v. Duncan, applying Pemco Corp. v. Rose, supports the rule that a restraint imposed after employment has already begun must be supported by new consideration — the timing rule that would reach an invention-assignment or holdover clause added mid-employment.
If a covenant not to compete is contracted after employment has been commenced without restriction, there must be new consideration to support it.
See Envtl. Prods. Co. v. Duncan, 168 W. Va. 349, 285 S.E.2d 889 (1981).
Pemco Corp. v. Rose — deciding the question under Virginia law, which governed the covenant there — states the rule that once employment is established without a restrictive covenant, a later agreement not to compete must be a new contract supported by new consideration; Environmental Products Co. v. Duncan cites Pemco for that rule.
We believe Virginia’s highest court would probably follow the holding in Kistler that when the relationship of employer and employee is established without a restrictive covenant not to compete, any agreement thereafter not to compete, must be in the nature of a new contract based upon a new consideration.
See Pemco Corp. v. Rose, 163 W. Va. 420, 257 S.E.2d 885 (1979).
Environmental Products Co. v. Duncan held, on the facts before it and over a dissent, that continued at-will employment was not adequate consideration for a restraint added mid-employment — a fact-bound application of the new-consideration rule, not a categorical holding that continued employment can never suffice.
It certainly is not adequate here.
See Envtl. Prods. Co. v. Duncan, 168 W. Va. 349, 285 S.E.2d 889 (1981).
University of West Virginia Board of Trustees v. VanVoorhies shows the drafting pattern that was enforced in the leading West Virginia-connected dispute — a written present-tense sell-assign-transfer grant (quoted here as the contract's language recited by the court, not the court's holding).
[T]he undersigned does (do) hereby sell, assign, transfer and set over unto said assignee, its successors and assigns, the entire right, title and interest in and to said invention or inventions, as described in the aforesaid application
See Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002).
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.
Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Do not assume a West Virginia employee works like a California or Washington one. There is no invention-assignment statute here, so there is no statutory carve-out to rely on and no notice safe harbor — ownership starts with the inventor, and an employer's rights are only as good as the words that transfer them . Draft with present-assignment (hereby assigns) language of the kind enforced in the leading West Virginia-connected case, so title passes automatically rather than resting on a future promise . If an assignment or trailing clause is added after employment has begun, support it with fresh consideration beyond continued at-will employment, which West Virginia has refused to treat as adequate on the facts of its leading consideration case . And keep any trailing or holdover assignment narrow, short, and tied to the employer's confidential information, because a facially unreasonable post-employment restraint is utterly void under West Virginia's framework and no West Virginia case has yet tested an invention holdover against it .
What does federal law require a confidentiality and invention assignment agreement in West Virginia 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).