{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "wisconsin", "frontmatter": { "title": "Employee Invention Assignment in Wisconsin", "description": "Wisconsin has no employee-invention-assignment statute, so an assignment clause is bounded by ordinary contract law, the common-law default rules, and the federal patent overlay — not a California-style own-time carve-out or notice requirement. Absent a written assignment the inventor owns unless hired to invent, the employer's fallback is a shop right, and a post-employment holdover clause would most likely be tested for reasonableness under Wis. Stat. § 103.465 — which voids an unreasonable restraint in its entirety rather than trimming it.", "state": "Wisconsin", "lastReviewed": "2026-07-02", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "Wisconsin has no employee-invention-assignment statute, so an assignment clause is bounded by ordinary contract law, the common-law default rules, and the federal patent overlay; absent a written assignment the inventor owns unless hired to invent and the employer's fallback is a shop right, and a post-employment holdover clause would most likely be tested for reasonableness under Wis. Stat. § 103.465 — with the Wisconsin twist that an unreasonable covenant is void in its entirety, not judicially trimmed — although no Wisconsin court found in our review has squarely applied § 103.465 to an invention-assignment clause.", "keyLaw": "No Wisconsin invention-assignment statute; Wis. Stat. § 103.465; Barlow & Seelig Mfg. Co. v. Patch, 232 Wis. 220, 286 N.W. 577 (1939)", "statutoryCarveOut": "none", "defaultOwnership": "employee", "employeeNoticeRequired": "n/a", "holdoverClauseLimit": "reasonablenessOnly", "carveOutScope": "Wisconsin has no statutory own-time carve-out; the reach of an assignment clause is limited only by ordinary contract law, the common-law inventor-owns default (subject to the hired-to-invent exception and the employer's shop right), the federal patent overlay, and Wis. Stat. § 103.465's reasonableness backstop for any employment provision that operates as a restraint of trade." }, "about": [ "Wisconsin invention assignment", "Wisconsin no invention-assignment statute", "Wisconsin employee invention ownership", "Wis. Stat. § 103.465 invention assignment", "Barlow & Seelig Manufacturing Co. v. Patch", "Wisconsin shop right", "Wisconsin holdover trailing assignment" ], "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 Wisconsin employer require assignment of every invention?", "answerText": "There is no statutory ceiling. Wisconsin 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 by ordinary contract law, the common-law inventor-owns default, and the federal patent overlay. The distinctive Wisconsin backstop is Wis. Stat. § 103.465, which conditions any covered employment restraint on reasonableness and voids an unreasonable one in its entirety.", "sources": [ { "id": "stat-103465-backstop", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Wis. Stat. § 103.465", "citation": "Wis. Stat. § 103.465.", "url": "https://docs.legis.wisconsin.gov/statutes/statutes/103/465", "proposition": "Wis. Stat. § 103.465 supports the rule that a covered employment restraint is lawful and enforceable only if its restrictions are reasonably necessary for the protection of the employer — a reasonableness backstop, not an invention-specific carve-out.", "verbatimQuote": "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.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-stat-103465-backstop" }, { "id": "stanford-baseline", "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, the baseline against which any assignment clause is measured.", "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/wisconsin#src-stanford-baseline" }, { "id": "stat-13490-trade-secrets", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Wis. Stat. § 134.90", "citation": "Wis. Stat. § 134.90(1)(c).", "url": "https://docs.legis.wisconsin.gov/statutes/statutes/134/90", "proposition": "Wis. Stat. § 134.90, Wisconsin's Uniform Trade Secrets Act, protects qualifying secret information — including an unpatented invention kept secret — but is not an ownership or invention-assignment statute.", "verbatimQuote": "“Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique or process to which all of the following apply: 1. The information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use. 2. The information is the subject of efforts to maintain its secrecy that are reasonable under the circumstances.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-stat-13490-trade-secrets" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a Wisconsin employer notify the employee?", "answerText": "Not applicable. Because Wisconsin 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 Wisconsin law protects instead is the employee's underlying property in the invention itself, which remains the employee's unless and until the contract transfers it.", "sources": [ { "id": "barlow-two-properties", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Barlow & Seelig Manufacturing Co. v. Patch", "citation": "Barlow & Seelig Mfg. Co. v. Patch, 232 Wis. 220, 286 N.W. 577 (1939).", "url": "https://www.courtlistener.com/opinion/4233552/barlow-seelig-manufacturing-co-v-patch/", "deepLink": "https://www.courtlistener.com/opinion/4233552/barlow-seelig-manufacturing-co-v-patch/#:~:text=There%20are%20two%20items%20of,whom%20the%20novel%20idea%20belongs.", "proposition": "Barlow & Seelig Mfg. Co. v. Patch treats the employee's novel idea as the employee's own property, distinct from the employer's property in the improved product — so in Wisconsin any duty to assign arises from the agreement itself rather than from a notice-requiring statute.", "verbatimQuote": "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.", "date": "1939-06-21", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-barlow-two-properties" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in Wisconsin?", "answerText": "The inventor, unless hired to invent. In Barlow & Seelig Manufacturing Co. v. Patch, the Wisconsin Supreme Court rejected an employer's claim to a generally employed engineer's invention and confined the employer to shop rights; the narrow exception is the employee hired to invent, whose resulting invention the employer may claim under the federal rule of Dubilier.", "sources": [ { "id": "barlow-shop-rights", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Barlow & Seelig Manufacturing Co. v. Patch", "citation": "Barlow & Seelig Mfg. Co. v. Patch, 232 Wis. 220, 286 N.W. 577 (1939).", "url": "https://www.courtlistener.com/opinion/4233552/barlow-seelig-manufacturing-co-v-patch/", "deepLink": "https://www.courtlistener.com/opinion/4233552/barlow-seelig-manufacturing-co-v-patch/#:~:text=When%20there%20is%20no%20employment,and%20benefits%20of%20shop%20rights.", "proposition": "Barlow & Seelig Mfg. Co. v. Patch holds that where the employee was not hired to invent and made no agreement to assign, the employer's interests are fully protected by shop rights — so the generally employed inventor keeps ownership.", "verbatimQuote": "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.", "date": "1939-06-21", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-barlow-shop-rights" }, { "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. 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.", "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/wisconsin#src-dubilier-hired-to-invent" }, { "id": "spellman-shop-right-no-title", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Spellman v. Ruhde", "citation": "Spellman v. Ruhde, 28 Wis. 2d 599, 137 N.W.2d 425 (1965).", "url": "https://www.courtlistener.com/opinion/1799033/spellman-v-ruhde/", "deepLink": "https://www.courtlistener.com/opinion/1799033/spellman-v-ruhde/#:~:text=Note%20that%20shop%20rights%20generally,the%20employee%20may%20have%20received.", "proposition": "Spellman v. Ruhde confirms that a shop right is a use license only — it generally does not give the employer title to the patent the employee received.", "verbatimQuote": "Note that shop rights generally do not give the employer the title to a patent that the employee may have received.", "date": "1965-11-02", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-spellman-shop-right-no-title" } ] }, { "slug": "holdover-clause-limit", "label": "Are post-employment trailing-assignment clauses enforceable?", "heading": "Are trailing-assignment (holdover) clauses enforceable in Wisconsin?", "answerText": "Most likely only if reasonable — and an unreasonable one would be void in its entirety. No Wisconsin decision found in our review squarely applies Wis. Stat. § 103.465 to a post-employment invention-assignment clause, so the invention-specific question is open. But the Wisconsin Supreme Court reads § 103.465 to reach any employment provision that in substance restrains trade, whatever its label, and the statute's second sentence voids an unreasonable restraint in toto, with no judicial trimming.", "sources": [ { "id": "lanning-restraint", "authorityType": "case-law", "tier": "primary-source-backed", "title": "The Manitowoc Company, Inc. v. Lanning", "citation": "The Manitowoc Co., Inc. v. Lanning, 2018 WI 6.", "url": "https://www.courtlistener.com/opinion/4460470/the-manitowoc-company-inc-v-john-m-lanning/", "deepLink": "https://www.courtlistener.com/opinion/4460470/the-manitowoc-company-inc-v-john-m-lanning/#:~:text=we%20conclude%20that%20Lanning's%20non%2Dsolicitation%20of%20employees%20provision%20is,by%20Wis.%20Stat.%20%C2%A7%20103.465", "proposition": "Manitowoc Co. v. Lanning holds that a provision not labeled a non-compete — there, a non-solicitation-of-employees clause — is a restraint of trade governed by Wis. Stat. § 103.465, establishing that substance rather than label determines the statute's reach.", "verbatimQuote": "we conclude that Lanning's non-solicitation of employees provision is a restraint of trade governed by Wis. Stat. § 103.465", "date": "2018-01-19", "pullQuoteLocator": "we conclude that Lanning's non-solicitation of employees provision is|by Wis. Stat. § 103.465", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-lanning-restraint" }, { "id": "lanning-heyde", "authorityType": "case-law", "tier": "primary-source-backed", "title": "The Manitowoc Company, Inc. v. Lanning", "citation": "The Manitowoc Co., Inc. v. Lanning, 2018 WI 6 (quoting Heyde Cos. v. Dove Healthcare, LLC, 2002 WI 131).", "url": "https://www.courtlistener.com/opinion/4460470/the-manitowoc-company-inc-v-john-m-lanning/", "deepLink": "https://www.courtlistener.com/opinion/4460470/the-manitowoc-company-inc-v-john-m-lanning/#:~:text=essentially%20deals%20with%20restraint%20of,a%20'covenant%20not%20to%20compete.'", "proposition": "Manitowoc Co. v. Lanning, quoting Heyde Cos. v. Dove Healthcare, restates the rule that § 103.465 deals with restraint of trade regardless of whether the restriction is labeled a non-disclosure provision or a covenant not to compete.", "verbatimQuote": "essentially deals with restraint of trade . . . regardless of whether a restriction is labeled a 'non-disclosure' provision or a 'covenant not to compete.'", "date": "2018-01-19", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-lanning-heyde" }, { "id": "guth-gross", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Guth v. Minnesota Mining & Mfg. Co.", "citation": "Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).", "url": "https://www.courtlistener.com/opinion/1549623/guth-v-minnesota-mining-mfg-co/", "deepLink": "https://www.courtlistener.com/opinion/1549623/guth-v-minnesota-mining-mfg-co/#:~:text=Assignments%20in%20gross%20of%20future%20inventions%20are%20not%20favored.", "proposition": "Guth v. Minnesota Mining, a pre-Erie Seventh Circuit decision that is persuasive rather than Wisconsin authority, held employment-contract provisions assigning future inventions without limit in time or subject matter contrary to public policy while enforcing the reasonable provisions, and described assignments in gross of future inventions as disfavored.", "verbatimQuote": "Assignments in gross of future inventions are not favored.", "date": "1934-06-29", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-guth-gross" }, { "id": "stat-103465-void-in-toto", "authorityType": "primary-law", "tier": "primary-source-backed", "title": "Wis. Stat. § 103.465", "citation": "Wis. Stat. § 103.465.", "url": "https://docs.legis.wisconsin.gov/statutes/statutes/103/465", "proposition": "Wis. Stat. § 103.465's second sentence voids an unreasonable covered restraint in its entirety — even as to the part that would have been a reasonable restraint — so Wisconsin courts may not blue-pencil an overbroad covenant down to a reasonable core.", "verbatimQuote": "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.", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/wisconsin#src-stat-103465-void-in-toto" } ] } ] } }