mployee’s inventions, it needs to be well documented that the work was contemplated in the employee’s role at the company.The world of work is in flux as more and more employers are permitting remote and hybrid work, which blurs the lines of work and personal life, including what is considered company property versus personal property. Besides employment contracts, any policies or contracts providing for the scope of research and development should be continuously updated and appropriately broad. They also must be understandable if employers want to ensure that inventions for which employees are hired to create remain their property. Taking these precautions will help clarify the expectations of employers and employees with respect to invention ownership in light of these new legal hurdles imposed by amended Section 203-f of the New York Labor Law.[1] California (Cal. Lab. Code § 2870), Illinois (765 ILCS 1060/2(1)), Delaware (19 Del. C. § 805), Kansas (K.S.A. § 44-130(a)), Minnesota (Minn. Stat. § 181.78(1)), New Jersey (N.J.S.A. 34:1B-265(a)(1)), North Carolina (N.C.G.S. § 66-57.1), Utah (Utah Code §§ 34-39-3), and Washington (R.C.W. § 49.44.149) have enacted similar limitations on employers asking employees to assign work product created by employees to the employer. Nevada law creates the opposite presumption; in the absence of a contract provision to the contrary, employee inventions automatically vest with the employer under Nevada law (Nev. Rev. Stat. § 600.500).[2] These exceptions track the definition of “work for hire” under federal copyright law. 17 U.S.C. § 101. The law provides that a “work made for hire,” is owned by a third party (not the inventor) when the work was “prepared by an employee within the scope of his or her employment;” or “a work specially ordered or commissioned as a contribution to a collective work.”[3] However, note that effective May 7, 2022, New York requires that employers provide notice of electronic monitoring and access control of employees’ electro

Employers must also be aware that some states limit the enforceability of employment agreements, typically rendering such agreements ineffective to assign inventions made on employee’s own time without use of employer resources unless they relate to the employer’s business. See Cal. Labor Code § 2870; 19 Del. Code Annotated § 805; Ill. Rev. Stat. Ch. 140, §§ 301-303; Kan. Stat. Annotated §§ 44-130; Minn. Stat. Annotated § 181.78; N.C. Gen. Stat. §§ 66-57.1, 66-57.2; Utah Code Annotated §§ 34-39-2, 34-39-3; Was. Rev. Code Annotated §§ 49.44.140, 49.44.150.Employers should also strongly consider consulting both intellectual property and employment attorneys in drafting an employment agreement.

It is this last category of employer that is targeted bythe bill passed by the New Jersey legislature. If the bill becomes law,New Jersey will join the small, but growing list of states that have statutesthataffectemployer’s claims to employee’s inventions: California (California Labor Code § 2870) Delaware (Delaware Code Annotated, Title 19, § 805) Kansas (Kansas Statutes Annotated §§ 44-130) Minnesota (Minnesota Statutes Annotated § 181.78) North Carolina (North Carolina General Statutes §§ 66-57.1, 66-57.2) Utah (Utah Code Annotated §§ 34-39-2, 34-39-3), and Washington (Washington Revised Code Annotated §§ 49.44.

Yes – employers can require assignment of employee inventions under Minnesota law, but there are important statutory limitations on that right that employers need to know. Minnesota law provides that any assignment in the ownership rights of employee inventions may not apply to:[A]n invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee’s own time, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer’s actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer.Minn. Stat. § 181.78. The statute further provides that any agreement for assignment of invention rights that purports to apply to inventions that meet the criteria listed above is “void and unenforceable.”

This is particularly true if the employee’s idea is fundamentally different from the employer’s products. On the other hand, if the employee’s idea is closely related to the employer’s products, or was highly dependent on products with which the employee worked at the employer, or was developed using the employer’s equipment or on the employer’s time, the employer may have the stronger arguments.Look, for example, at Minnesota’s statute, Minn. Stat. § 181.78. That statutory language addresses just this situation:“Subdivision 1. Inventions not related to employment.