Employee Invention Assignment in Wisconsin

Can a Wisconsin 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 search of the Wisconsin Statutes surfaces no § 2870-style provision — no statute voiding the assignment of inventions developed on the employee's own time without employer resources. The two Wisconsin statutes adjacent to the area do something different: Wis. Stat. § 103.465 regulates restraints of trade in employment contracts, and Wis. Stat. § 134.90, the state's Uniform Trade Secrets Act, protects qualifying secret information — an unpatented invention kept secret may qualify — but says nothing about who owns an employee's invention or what an assignment clause may reach A.3.

The substantive default the contract 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.2.

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

What Wisconsin adds is a judicial reasonableness backstop rather than a category carve-out. Section 103.465 makes a covered covenant lawful and enforceable only if its restrictions are reasonably necessary to protect the employer A.1.

“A covenant by an assistant, servant or agent not to compete with his or her employer or principal during the term of the employment or agency, or after the termination of that employment or agency, within a specified territory and during a specified time is lawful and enforceable only if the restrictions imposed are reasonably necessary for the protection of the employer or principal.”

The practical consequence is that a Wisconsin employer can, in principle, contract for assignment more broadly than a California or Washington employer, because no statute carves own-time inventions out of the clause's reach. But the breadth is not free. An assignment clause is still an ordinary contract term subject to the usual defenses, and to the extent a clause operates in substance as a restraint on the employee's ability to work — the concern most acute for post-employment holdover terms, discussed below — § 103.465 supplies a reasonableness test with an unusually harsh remedy for overreach A.1.

Must a Wisconsin 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; Wisconsin 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 Wisconsin does not have.

The protection Wisconsin does supply comes from the common law of property, not a disclosure formality. In Barlow & Seelig Manufacturing Co. v. Patch, the Wisconsin Supreme Court framed the employer-employee invention dispute as a contest between two distinct kinds of property and held that the inventor's side of the line stays with the inventor absent an agreement to assign B.1.

“There are two items of property involved, that of the employer who owns the product in its improved form, and that of the inventor, to whom the novel idea belongs.”

For a multistate employer the takeaway is the inverse of the notice states: a Wisconsin employer neither has to give a § 2872-style notice nor can rely on one to cure an overbroad clause. Whether the assignment binds turns 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 Wisconsin?

Barlow & Seelig anchors the Wisconsin default. A mechanical engineer employed generally — not engaged to make the particular invention — kept ownership of his patent, and the court held that the employer's legitimate interests are exhausted by a shop right C.1.

“When there is no employment to invent and no agreement to assign, the employer’s interests are fully protected by the privileges and benefits of shop rights.”

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.”

A shop right is a use license, not ownership. Where the employee used the employer's time, materials, and facilities to develop the invention, the employer acquires a right to use it — but the Wisconsin Supreme Court in Spellman v. Ruhde was explicit that the license stops short of title C.3.

“Note that shop rights generally do not give the employer the title to a patent that the employee may have received.”

Because ownership starts with the inventor and Wisconsin has no statute filling the gap, 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 — and rather than reliance on hired-to-invent status or a shop right, both of which are fact-intensive and, in the shop-right case, yield only a license.

Are trailing-assignment (holdover) clauses enforceable in Wisconsin?

The starting point is substance over label. In Manitowoc Co. v. Lanning, the Wisconsin Supreme Court held that a non-solicitation-of-employees provision — a clause nowhere labeled a non-compete — is a restraint of trade governed by § 103.465 D.1.

“we conclude that Lanning's non-solicitation of employees provision is a restraint of trade governed by Wis. Stat. § 103.465”

Lanning restated the rule it drew from Heyde Cos. v. Dove Healthcare — that the statute essentially deals with restraint of trade regardless of what the drafter labeled the restriction D.3.

“essentially deals with restraint of trade . . . regardless of whether a restriction is labeled a 'non-disclosure' provision or a 'covenant not to compete.'”

A trailing invention-assignment clause fits that logic: to the extent it sweeps in inventions a former employee first conceives after leaving, it burdens the ex-employee's ability to work and invent in the field, since any new employer would take the fruits of that work subject to the old employer's claim.

Extending the Lanning line to holdover assignments is a prediction, not a holding. Our review found no Wisconsin decision — state or federal — applying § 103.465 to an invention-assignment clause; the § 103.465 case law concerns non-competes, non-solicits, and confidentiality covenants. So a court could conceivably treat an assignment of property rights as something other than a covered restraint. The safer working assumption, given how consistently Wisconsin courts have refused to let labels control, is that an aggressive holdover clause would be tested for reasonableness like any other post-employment restraint D.1.

The nearest invention-specific precedent is regional and persuasive only. In Guth v. Minnesota Mining & Manufacturing Co., decided in 1934 — before Erie required federal courts sitting in diversity to apply state law — the Seventh Circuit held that employment-contract provisions requiring assignment of future inventions without limit in time or subject matter were contrary to public policy, while enforcing the contract's reasonable provisions D.4.

“Assignments in gross of future inventions are not favored.”

What makes Wisconsin unusual is the remedy. Guth saved the reasonable parts of the contract; modern § 103.465 forbids exactly that move for covenants it covers. The statute's second sentence voids an unreasonable restraint entirely — even the portion that would have been reasonable standing alone — so a Wisconsin court that characterized an overbroad holdover clause as a covered restraint would not narrow it to a reasonable core, it would strike it D.2.

“Any covenant, described in this section, imposing an unreasonable restraint is illegal, void and unenforceable even as to any part of the covenant or performance that would be a reasonable restraint.”