# Employee Invention Assignment in West Virginia[^about] West Virginia has no employee-invention-assignment statute, so an assignment clause is bounded only by ordinary contract law, the common-law default rules, and the federal patent and copyright overlay — not a California-style own-time carve-out or notice requirement. Absent a written assignment the inventor owns unless hired to invent; the leading West Virginia-connected case is a Federal Circuit decision enforcing a written present-tense assignment in a West Virginia university dispute, and a post-employment holdover clause would most likely be tested under West Virginia's general restrictive-covenant reasonableness framework, which no West Virginia case has yet applied to an invention-assignment clause in our review. ## Can a West Virginia employer require assignment of every invention? {#statutory-carve-out} **Short answer.** 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 [^stanford-baseline][^wvu-vanvoorhies-enforced]. 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 [^wvu-vanvoorhies-enforced]. "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."[^wvu-vanvoorhies-enforced] 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 [^stanford-baseline]. "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor."[^stanford-baseline] 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? {#employee-notice} **Short answer.** 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 [^wvu-vanvoorhies-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 [^wvu-vanvoorhies-grant]. "[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"[^wvu-vanvoorhies-grant] 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? {#default-ownership} **Short answer.** 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 [^stanford-inventor][^dubilier-hired-to-invent]. 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 [^stanford-inventor]. "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor."[^stanford-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 [^stanford-traceback]. "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor."[^stanford-traceback] 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 [^dubilier-hired-to-invent]. "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."[^dubilier-hired-to-invent] 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? {#holdover-clause-limit} **Short answer.** 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 [^reddy-facial-reasonableness][^envtl-products-new-consideration]. 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-facial-reasonableness]. "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-facial-reasonableness] *Reddy* measured facial reasonableness by the three-part rule of reason it adopted from a leading commentary on employee agreements not to compete [^reddy-three-part-test]. "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"[^reddy-three-part-test] 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 [^envtl-products-new-consideration]. "If a covenant not to compete is contracted after employment has been commenced without restriction, there must be new consideration to support it."[^envtl-products-new-consideration] 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 [^envtl-products-continued-employment]. "It certainly is not adequate here."[^envtl-products-continued-employment] 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. > [!NOTE] > **Practice note.** > > 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 [^stanford-traceback-practice]. 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 [^wvu-vanvoorhies-grant-practice]. 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 [^envtl-products-continued-employment]. 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 [^reddy-facial-reasonableness]. [^about]: By Steven Obiajulu, J.D. Published by [openagreements.org](https://openagreements.org). Last reviewed 2026-07-02. License: CC BY 4.0. Steven Obiajulu, J.D. is admitted in New York, not West Virginia. This article synthesizes West Virginia primary law and is not legal advice from a West Virginia-admitted attorney. This article is for informational purposes only and does not create an attorney-client relationship. CC BY 4.0. Cite as Steven Obiajulu, *Employee Invention Assignment in West Virginia*, OpenAgreements (last updated July 2, 2026), https://openagreements.org/practice-guides/invention-assignment/us/west-virginia. [^stanford-baseline]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^wvu-vanvoorhies-enforced]: **Univ. of W. Va. Bd. of Trs. v. VanVoorhies** — "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." *Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002).* [^wvu-vanvoorhies-grant]: **Univ. of W. Va. Bd. of Trs. v. VanVoorhies** — "[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" *Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002).* [^stanford-inventor]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^dubilier-hired-to-invent]: **United States v. Dubilier Condenser Corp.** — "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." *United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).* [^stanford-traceback]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^reddy-facial-reasonableness]: **Reddy v. Community Health Foundation of Man** — "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 v. Cmty. Health Found. of Man, 171 W. Va. 368, 298 S.E.2d 906 (1982).* [^envtl-products-new-consideration]: **Environmental Products Co., Inc. v. Duncan** — "If a covenant not to compete is contracted after employment has been commenced without restriction, there must be new consideration to support it." *Envtl. Prods. Co. v. Duncan, 168 W. Va. 349, 285 S.E.2d 889 (1981).* [^reddy-three-part-test]: **Reddy v. Community Health Foundation of Man** — "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" *Reddy v. Cmty. Health Found. of Man, 171 W. Va. 368, 298 S.E.2d 906 (1982).* [^envtl-products-continued-employment]: **Environmental Products Co., Inc. v. Duncan** — "It certainly is not adequate here." *Envtl. Prods. Co. v. Duncan, 168 W. Va. 349, 285 S.E.2d 889 (1981).* [^stanford-traceback-practice]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^wvu-vanvoorhies-grant-practice]: **Univ. of W. Va. Bd. of Trs. v. VanVoorhies** — "[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" *Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288 (Fed. Cir. 2002).*