Statutory Requirements For Invention Assignment Provisions

You may have spent time drafting (or having your lawyers draft) enforceable restrictive covenants to protect your company's confidential and proprietary information, goodwill, and customer relationships, but have you ensured that a former employee cannot take intellectual property developed while working at the company? Not if you have omitted certain language required in a number of states.

Most companies include very broad assignment of inventions clauses in their employment agreements. In most states, expansive assignment provisions are enforceable. However, certain states require the employer to provide notice to the employee that, in limited circumstances, an invention is not assignable to the company. Specifically, that circumstance is when it involves a true independent invention, one that is developed completely without any company resources and that does not relate to the employee's work or the employer's current business or anticipated future business.