Invention Assignment Agreement: Who Owns What You Invent

An invention assignment agreement is the document most people sign on their first day without reading. It decides who will own the thing you have not invented yet. Months or years later, when that invention turns into a patent and the patent turns into a deal, it is often the first page a buyer's diligence team asks for. Most guides on the subject are written for the employer: how to make the clause airtight. This one reads it from the other side as well. What each clause actually does, what the law will not let it take, where founders and university researchers get caught, and why the US template stops working the moment an inventor sits in Germany. We read these agreements every week, because a patent cannot be sold until every inventor's rights trace cleanly to the seller. ## What an invention assignment agreement is, and why it exists US patent law starts with the inventor. As the Supreme Court put it in Stanford v. Roche, since 1790 the law has worked on the premise that rights in an invention belong to the inventor. Being employed does not change that. Absent an agreement, an employer has no rights in an invention that is the original conception of the employee alone, and in most cases the inventor must expressly grant those rights. The common law offers employers only two narrow fallbacks. Under the hired-to-invent doctrine, someone employed to make a specific invention must assign it. Under the shop right, an employer whose time and materials were used gets a non-exclusive right to practice the invention, not title to it. Neither is something a company wants to argue about in court. So companies contract for it. The agreement goes by several names: PIIA (proprietary information and inventions assignment), CIIAA, or a confidentiality and invention assignment agreement. Whatever the header says, it usually bundles three things: confidentiality, the assignment of inventions, and restrictive covenants such as non-solicitation. It is worth separating this from its sibling. A patent assignment agreement is a deed: it moves an identified patent or application from one owner to another. An invention assignment agreement is a promise made before anything exists, covering a category of future work. The first is about a thing. The second is about a relationship. ## The clauses, read from the inventor's side ### The grant: hereby assign Look at a real one. The Texas Instruments California form says the employee will disclose inventions and "hereby assign and agree to assign" them to TI. Both verbs are there on purpose. "Hereby assign" transfers future inventions automatically as they come into existence. "Agree to assign" is only a promise to sign something later. That difference decided Stanford v. Roche. A Stanford research fellow had signed a promise that he "agree[d] to assign" his inventions to the university. He then signed a visitor agreement at Cetus stating that he "will assign and do[es] hereby assign" inventions made there. The present-tense grant won, and Stanford lost standing to sue on its own patents. The sibling article walks through the wording courts have accepted and rejected. Passive wording fails too. In Omni MedSci v. Apple (2021), a university policy saying patents "shall be the property of the University" was held not to be an automatic assignment. It needed a later signed transfer. ### Scope: what counts as an invention The grant is only as wide as the definition. TI's form reaches inventions within "a field of interest of TI", defined to include past work, work in progress and projects planned for the future, and it applies whether the idea comes "on the job, at home, or elsewhere". That is a broad net. For the inventor, the question to ask before signing is simple: does this definition reach the side project I already care about? If it does, say so now, in writing. ### Prior inventions schedule Most agreements carry a schedule where you list what you invented before you joined. Inventions made before employment are not assigned by a forward-looking clause, but leaving the schedule blank is a common and costly mistake, because it invites the argument that the project started after your start date. You do not need to disclose the invention in detail. You need to identify it well enough that nobody can later say it was not there. ### Disclosure and cooperation Expect a duty to disclose every invention, including ones you think are yours. California expressly allows employers to require disclosure of all of the employee's inventions, received in confidence, plus a review process. Expect a cooperation clause too: signing filings, declarations and confirmatory assignments, often backed by a limited power of attorney. TI's version adds a fair term worth asking for elsewhere: help given after you leave is paid at a reasonable rate. ### Holdover and post-employment reach Some agreements reach inventions conceived after you leave. Courts are skeptical. In Whitewater West v. Alleshouse (2020) a clause capturing post-employment inventions was held void under California law as an unlawful restraint. In Bio-Rad v. ITC (2021) the court read "inventions" narrowly, as subject matter conceived before employment ended, so ideas that only became an invention later were not caught. If your agreement has a trailing clause, read how long it runs and what triggers it. ## What the agreement cannot take: state limits in the US California's Labor Code 2870 is the template. An assignment clause does not apply to an invention developed entirely on your own time without the employer's equipment, supplies, facilities or trade secrets, unless it relates to the employer's business or its actual or demonstrably anticipated research, or results from work you did for the employer. A clause that reaches further is unenforceable to that extent. Section 2872 requires the employer to give written notice of this carve-out when the agreement is signed. It also cuts the other way: in a dispute, the burden of proof is on the employee claiming the exemption. California is not alone. Seven states, California, Delaware, Illinois, Kansas, Minnesota, North Carolina and Washington, have nearly identical requirements. The Practical Law state chart also tracks Nevada, New Jersey, New York and Utah. The details differ: Delaware's carve-out under 19 Del. C. 805, for instance, imposes no notice requirement. Most states have no statute at all, which leaves the clause bounded only by contract law and the courts. The practical rule for an employee: the statute protects truly separate work, and the burden is on you. Keep separate projects on your own laptop, your own time and your own accounts, and out of your employer's market. ## Founders, contractors and advisors Contractors are the biggest gap. A true independent contractor falls outside the California statute, and absent a written assignment a contractor who writes software generally owns the copyright. Paying the invoice does not transfer it. Contractor agreements need their own present-tense assignment covering deliverables and the inventions behind them. Founders need to assign what they built before the company existed, usually through a technology assignment signed at formation. The trap is the founder who built the prototype while still employed elsewhere. If the former employer's agreement already reached that work, a later assignment to the startup cannot cure it. That question belongs at formation, not in a Series A data room. Timing matters for everyone else. Investors routinely ask whether every employee signed one, and asking a current employee to sign later gives the employee leverage to ask for something in return. Sign at hire, alongside the offer letter. Advisors who contribute to the conception of a claim can be named inventors too. They are the most often forgotten signature. ## Researchers and spinouts: the case the templates skip ### The United States: Stanford v. Roche The leading case on invention assignment was not about a startup. It was about a research fellow at a university, moving between an academic lab and a company. The Court also held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in the university. The university only keeps what its paperwork actually took. For a researcher planning a spinout, that means the starting question is not "what does the tech transfer office think?" but "what exactly did I sign, and with whom?" A spinout that later licenses the patent back from the university will meet the same question again in its university patent licensing agreement. ### Germany: university inventors and the 30 percent rule German universities run on statute, not on a signed form. Section 42 of the Employee Inventions Act gives university staff special rules. A researcher may publish a service invention in teaching and research after notifying the university, as a rule two months in advance. A researcher who declines to disclose the invention on grounds of research freedom need not report it. If the university claims it, the inventor keeps a non-exclusive right to use it in teaching and research. And if the university exploits it, the inventor's remuneration is 30 percent of the income it earns. Where there are several inventors, the group shares those 30 percent of gross revenue in proportion to each person's share. For a spinout founder coming out of a German university, that is a negotiating fact, not a footnote. The university's claim exists by law, and so does the inventor's share. What the university then charges the spinout to take the IP out is a separate negotiation, covered in this explainer on the spinout transfer fee. ## Germany: why the US template does not travel Outside universities the same Act governs private employers. The employee must report a service invention separately and in text form (section 5). The claim is deemed declared unless the employer releases the invention in text form within four months of a proper report (section 6). On claim, all property rights pass to the employer (section 7). In exchange the employee is owed reasonable remuneration (section 9), which must be fixed at the latest three months after the patent is granted if the parties have not agreed it (section 12). A US-style clause signed in advance cannot override that process or waive the remuneration. Our sibling guide to the patent assignment agreement covers the anti-waiver rule in section 22. The working point is that, for a German inventor, the paper to look for is not a signed PIIA. It is a dated invention report, a claim or release, and a remuneration agreement. ## How a patent buyer reads your invention assignments When a patent family comes to our brokerage desk, title comes before value. For every named inventor we ask the same three questions. Which document moved this person's rights? Does it use present-tense words of transfer, or only a promise? Does the chain run all the way to the entity that is selling? The breaks we see are the ones above. An employment agreement says "agrees to assign" and nobody ever signed the follow-up. A contractor built the prototype under a services contract that only mentions copyright. A founder's prior employer has a plausible claim. A German engineer's invention was never formally reported. Each is usually fixable with a confirmatory deed, an assignment of patent rights agreement signed while the people involved are reachable and willing. Notarizing it is optional but useful, as covered in does a patent assignment need to be notarized. Only once title holds do we move to the technical work, our digital-twin validation of claims, detectability and validity probability. Our brokerage is success based, with commission paid by the seller on completion and a minimum fee of EUR 5,000 per completed transaction. A broken chain stalls our deal as much as the seller's, which is why we raise it on day one. One caveat, stated plainly. EX-IX is not a firm of patent attorneys; filings on our drafting side go through an independent licensed patent attorney of record. An invention assignment agreement is an employment contract shaped by state and national law. This article explains how it works. It is not legal advice for your situation, and anything that moves real value deserves a lawyer's review. ## FAQ ### Do I have to sign an invention assignment agreement? In the US it is usually a condition of employment, and employers may require it. What they may not do in California is make a clause that the statute voids a condition of the job. If you are asked to sign one after you have started, you have more room to negotiate than you would at hire. ### Does an invention assignment agreement cover my side projects? Only if the project falls inside its scope and the law allows it. In the states with carve-out statutes, work done on your own time with your own equipment, unrelated to the employer's business and not resulting from your work there, stays yours. You carry the burden of proving it, so keep the project visibly separate. ### Is a PIIA the same as an invention assignment agreement? Usually yes. A PIIA bundles the invention assignment with confidentiality obligations, and often with non-solicitation terms. The assignment clause is the part that decides patent ownership. ### What happens if I never signed one? In the US the inventor owns the invention by default. The employer may still have a non-exclusive shop right, or a claim if you were hired specifically to invent it, but not title. In Germany the Employee Inventions Act governs service inventions of employees regardless of what was signed.