Employee Invention Assignment in West Virginia

Can a West Virginia employer require assignment of every invention?

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 A.2.

“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.”

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 A.1.

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

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.

Must a West Virginia 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; 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 B.1.

“[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”

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.

Who owns an invention by default in West Virginia?

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 C.1.

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

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 C.3.

“Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back 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.”

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.

Are trailing-assignment (holdover) clauses enforceable in West Virginia?

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 D.1.

“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.”

Reddy measured facial reasonableness by the three-part rule of reason it adopted from a leading commentary on employee agreements not to compete D.3.

“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”

Timing matters too. In Environmental Products Co. v. Duncan, applying the rule announced in Pemco Corp. v. Rose, the court required fresh consideration when a restraint is imposed after the employment relationship is already underway D.2.

“If a covenant not to compete is contracted after employment has been commenced without restriction, there must be new consideration to support it.”

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 D.4.

“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.