Can a Kansas employer require assignment of every invention?
A Kansas employer cannot require assignment of an invention developed entirely on an employee's own time without the employer's equipment, supplies, facilities or trade-secret information, unless it relates to the employer's business or actual or demonstrably anticipated research or development or results from work the employee performed for the employer . To the extent a clause purports to capture those own-time inventions, it is against the public policy of the state and void and unenforceable. On a touch screen, a tap shows all 2 sources in this group.
Subsection (a) frames the carve-out as a limit on what an assignment promise can do. However broadly the contract is written, it does not reach an invention the employee made on their own time and with their own resources unless one of two statutory exceptions applies .
Subsection (b) supplies the teeth. A provision that tries to require assignment of an invention the statute excludes is not merely unenforceable as written but declared against the public policy of the state .
The same subsection closes the obvious workaround. An employer cannot demand the void assignment anyway by making the employee sign it to keep the job — a provision made void by the section may not be required as a condition of employment or continuing employment .
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K.S.A. 44-130(a) makes an assignment clause inapplicable to an invention the employee developed entirely on their own time without the employer's equipment, supplies, facilities, or trade-secret information, unless the invention relates to the employer's business or its actual or demonstrably anticipated research or development, or results from the employee's work.
Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer shall not apply to an invention for which no equipment, supplies, facilities or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless: (1) The invention relates to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or (2) the invention results from any work performed by the employee for the employer.
See K.S.A. 44-130(a).
K.S.A. 44-130(b) declares any provision purporting to apply to an own-time, own-resource invention outside the statute's exceptions to that extent against the public policy of the state and void and unenforceable, and bars an employer from requiring such a void provision as a condition of employment or continuing employment.
Any provision in an employment agreement which purports to apply to an invention which it is prohibited from applying to under subsection (a), is to that extent against the public policy of this state and is to that extent void and unenforceable. No employer shall require a provision made void and unenforceable by this section as a condition of employment or continuing employment.
See K.S.A. 44-130(b).
Must a Kansas employer notify the employee?
A Kansas employer whose employment agreement requires the employee to assign inventions must give the employee, at the time the agreement is made, written notice that the agreement does not apply to a qualifying own-time, own-resource invention . No Kansas court has construed the statute, so the remedy for a missing notice is unsettled — no case addressing it turned up in our review — but the obligation is written as a mandatory command, and a drafter should treat it as such.
The notice obligation is contemporaneous, not eventual: the written notification must accompany the agreement at the time it is made. It does not change which inventions are carved out — subsection (a) does that — but it ensures the employee is told the carve-out exists .
One textual quirk deserves attention. The carve-out in subsection (a) applies unless the invention relates to the employer's business; the notice subsection describes the same exception as an invention that relates directly to the employer's business. The word directly appears in the notice provision but not in the operative carve-out, so a careful drafter should quote each subsection as written rather than assume they are identical .
Kansas conditions the assignment provision on a written notification given at the time the agreement is made, and its notice subsection words the business-relation exception more narrowly than the California formulation most multistate notices track: an own-time invention falls back into the assignable scope only when it relates directly to the employer's business or actual or demonstrably anticipated research or development . A notification that states only the broader California-style relates to exception overstates the employer's reach for a Kansas employee, and K.S.A. 44-130(b) makes an assignment provision void and against Kansas public policy to the extent it purports to capture what the statute protects — so a Kansas-compliant notice keeps the relates directly limitation in its own text .
The carve-out is not a free pass to keep side projects secret. Subsection (d) adds a disclosure duty running the other way: even when the employee meets the burden of proving the carve-out conditions, the employee must disclose inventions being developed so the parties can sort out who owns what .
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K.S.A. 44-130(c) requires an employer whose agreement contains an assignment provision to provide the employee, at the time the agreement is made, a written notification that the agreement does not apply to a qualifying own-time, own-resource invention, and phrases the exception as an invention that relates directly to the employer's business.
If an employment agreement contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer shall provide, at the time the agreement is made, a written notification to the employee that the agreement does not apply to an 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, unless: (1) The invention relates directly to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or (2) the invention results from any work performed by the employee for the employer.
See K.S.A. 44-130(c).
K.S.A. 44-130(d) requires the employee, even after meeting the burden of proving the carve-out conditions, to disclose at the time of employment or thereafter all inventions being developed, for the purpose of determining employer and employee rights.
Even though the employee meets the burden of proving the conditions specified in this section, the employee shall disclose, at the time of employment or thereafter, all inventions being developed by the employee, for the purpose of determining employer and employee rights in an invention.
See K.S.A. 44-130(d).
K.S.A. 44-130(b) makes an assignment provision void, unenforceable, and against Kansas public policy to the extent it purports to apply to an invention subsection (a) protects from assignment.
Any provision in an employment agreement which purports to apply to an invention which it is prohibited from applying to under subsection (a), is to that extent against the public policy of this state and is to that extent void and unenforceable.
See K.S.A. 44-130(b).
Who owns an invention by default in Kansas?
Absent a written assignment, a Kansas employee owns the patent rights in an invention the employee conceived, unless the employee was hired to invent it . That baseline comes from federal patent law, which governs who holds title to a patentable invention in Kansas as elsewhere. The U.S. Supreme Court restated that premise in Stanford v. Roche, and although others may acquire an interest, that interest must trace back to the inventor. The narrow hired-to-invent overlay can give an employer equitable title, but only where the employee was specifically directed to invent — so a Kansas employer depends on a written present-assignment clause to take title reliably. On a touch screen, a tap shows all 3 sources in this group.
Stanford v. Roche anchors the default. The Court held that the Bayh-Dole Act did not displace the long-standing rule that an invention belongs to its inventor, treating that premise as the baseline against which any assignment must be measured .
Because ownership starts with the inventor, an employer's title is derivative: it exists only if and to the extent the employee assigned it. Any third-party interest in the invention must trace back to that inventor-grantor .
Federal common law recognizes one narrow overlay that can give an employer equitable title without an express assignment: the hired-to-invent doctrine. Its classic statement is in United States v. Dubilier Condenser Corp., where the Supreme Court explained that an employee employed to make an invention who accomplishes that task during the term of service is bound to assign the resulting patent .
The doctrine is demanding, and Kansas courts have not squarely mapped its contours in a published invention-ownership decision. The Eighth Circuit's articulation in Farmers Edge Inc. v. Farmobile, LLC — applying the general federal rule a Kansas court would most likely follow — makes the point: mere employment is not enough; the employer must show the employee received a certain amount of specific direction to invent the thing in question .
Because that showing is fact-intensive and uncertain, a Kansas employer should not rely on it. The dependable path is a written present-assignment (hereby assigns) clause — present-tense language that transfers legal title automatically on conception, rather than a future promise to assign — operating within the boundaries K.S.A. 44-130 imposes.
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Stanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor.
Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Stanford v. Roche holds that although others may acquire an interest in an invention, that interest as a general rule must trace back to the inventor — so an employer takes title only through an assignment from the employee-inventor.
Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Dubilier states the hired-to-invent baseline: an employee employed to make an invention who accomplishes that task during the term of service is bound to assign the resulting patent to the employer.
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.
See United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).
Farmers Edge v. Farmobile states the hired-to-invent standard: to prevail on a hired-to-invent theory, the employer must show the employee was given a certain amount of specific direction to invent — a general federal patent common-law rule a Kansas court would most likely follow, as no on-point Kansas decision turned up in our review.
To prevail on its hired-to-invent theory based on an implied contract, FEI must show that the employees were given a certain amount of specific direction from their employer.
See Farmers Edge Inc. v. Farmobile, LLC, 970 F.3d 1027 (8th Cir. 2020).
Are trailing-assignment (holdover) clauses enforceable in Kansas?
A Kansas court would most likely enforce a trailing-assignment clause reaching inventions conceived after employment ends only if the restraint is reasonable under the circumstances and not adverse to the public welfare, the standard Kansas applies to a noncompetition covenant in an employment contract . K.S.A. 44-130 caps what an assignment clause may reach during employment, but it says nothing about a clause reaching inventions conceived after the employment ends, and no Kansas case found in our review squarely limits an invention holdover. Kansas does, though, enforce a post-employment restrictive covenant only when the restraint is reasonable under the circumstances and not adverse to the public welfare, so a trailing-assignment clause reaching post-employment inventions would most likely be measured against that same reasonableness standard. On a touch screen, a tap shows all 2 sources in this group.
Start with the statute's silence. K.S.A. 44-130 governs what an assignment clause may reach during employment, voiding any provision that purports to capture a qualifying own-time invention. It imposes no durational cap and says nothing, one way or the other, about a clause reaching inventions conceived after the employment relationship ends .
Because the statute is silent, the closest governing law is Kansas's settled rule for post-employment restraints. The Kansas Supreme Court enforces a noncompetition covenant ancillary to employment only where the restraint is reasonable under the circumstances and not adverse to the public welfare .
Applying that standard to an invention holdover is a prediction, not a Kansas holding — but the drafting lesson follows directly: a trailing clause reasonable in duration and no broader than necessary to protect a legitimate interest such as trade secrets or confidential information stands a far better chance than one that sweeps in every invention an employee conceives for years after departure, untethered to the employer's confidential information — the kind of overreach a Kansas court would be most likely to pare back or refuse to enforce.
No Kansas decision found in our review squarely decides whether a post-employment invention-holdover clause is enforceable, so this is a prediction from the statute's silence and the general reasonableness rule, not a holding. A drafter should keep any Kansas holdover clause narrow — short in duration and limited to inventions that derive from the employer's confidential information — rather than rely on an aggressive trailing-assignment clause surviving review.
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K.S.A. 44-130(b) voids any provision purporting to apply to a qualifying own-time invention during employment, but imposes no durational cap and is silent about clauses reaching inventions conceived after employment ends.
Any provision in an employment agreement which purports to apply to an invention which it is prohibited from applying to under subsection (a), is to that extent against the public policy of this state and is to that extent void and unenforceable.
See K.S.A. 44-130(b).
Weber v. Tillman states the settled Kansas standard for post-employment restraints — a noncompetition covenant ancillary to an employment contract is enforceable only if the restraint is reasonable under the circumstances and not adverse to the public welfare; applying that standard to an invention holdover is a prediction, as no Kansas decision found in our review has done so.
A noncompetition covenant ancillary to an employment contract is valid and enforceable if the restraint is reasonable under the circumstances and not adverse to the public welfare.
See Weber v. Tillman, 259 Kan. 457, 464, 913 P.2d 84 (1996).
K.S.A. 44-130(c) requires an employer whose agreement contains an assignment provision to provide the employee, at the time the agreement is made, a written notification that the agreement does not apply to a qualifying own-time, own-resource invention, and phrases the exception as an invention that relates directly to the employer's business.
If an employment agreement contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer shall provide, at the time the agreement is made, a written notification to the employee that the agreement does not apply to an 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, unless: (1) The invention relates directly to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or (2) the invention results from any work performed by the employee for the employer.
See K.S.A. 44-130(c).
K.S.A. 44-130(d) requires the employee, even after meeting the burden of proving the carve-out conditions, to disclose at the time of employment or thereafter all inventions being developed, for the purpose of determining employer and employee rights.
Even though the employee meets the burden of proving the conditions specified in this section, the employee shall disclose, at the time of employment or thereafter, all inventions being developed by the employee, for the purpose of determining employer and employee rights in an invention.
See K.S.A. 44-130(d).
Do not paper a Kansas employee with an out-of-state invention-assignment form. A form built for an assign-everything jurisdiction will usually omit the K.S.A. 44-130(c) written notice of the own-time carve-out, and it often contains an aggressive post-employment trailing-assignment (holdover) clause. Confirm the agreement carries the K.S.A. 44-130(c) notice at signing, limit the assignment to what K.S.A. 44-130(a) actually allows, and keep any holdover clause narrow enough to survive Kansas's reasonableness review. Note too that the statute's disclosure duty runs the other way — subsection (d) obligates the employee, not the employer, to disclose inventions being developed. On a touch screen, a tap shows all 3 sources in this group.
What does federal law require a confidentiality and invention assignment agreement in Kansas to say about whistleblowers and pay?
An employee confidentiality, non-compete, or invention assignment agreement signed or updated now that governs trade secrets or other confidential information must give the Defend Trade Secrets Act whistleblower-immunity notice, and for employees the National Labor Relations Act covers, Section 7 of that Act protects concerted activity, including joining together over pay and working conditions, that a broad confidentiality clause can restrict. The employer may satisfy the notice duty by cross-referencing a qualifying policy document provided to the employee, but an employer that omits the notice may not be awarded exemplary damages or attorney fees under the Defend Trade Secrets Act in an action against an employee who was not given notice.
The notice describes a federal immunity: an individual cannot be held liable under federal or state trade-secret law for disclosing a trade secret in confidence to a government official or an attorney solely to report or investigate a suspected violation of law, or in a court filing made under seal. For an agreement signed or updated now, the duty to give that notice reaches any agreement with an employee that governs trade secrets or other confidential information, whatever else the agreement does.
Section 7 gives employees the National Labor Relations Act covers a statutory right to engage in concerted activity for mutual aid or protection, including joining together to improve pay and working conditions. For employees the Act covers, the Board's work-rule standard adopted in 2023 makes a rule presumptively unlawful if it has a reasonable tendency to chill employees from exercising their Section 7 rights; an employer can rebut that presumption only by showing a legitimate and substantial business interest it cannot serve with a more narrowly tailored rule. The 2023 standard may change, but the Section 7 right it enforces is statutory. State law may add its own requirements for the same clauses.
A form carried over without the immunity notice, or a cross-reference to a reporting policy the employee never received, leaves the confidentiality clause without a valid notice, so the Act's exemplary damages and attorney fees are unavailable against that employee. A Confidential Information definition that sweeps in pay and working conditions with no carve-out exposes the employer to an unfair-labor-practice finding for employees the Act covers.
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An individual is immune from criminal and civil liability under federal and state trade-secret law for disclosing a trade secret in confidence to a government official or an attorney solely to report or investigate a suspected violation of law, or in a court filing made under seal.
An individual shall not be held criminally or civilly liable under any Federal or State trade secret law for the disclosure of a trade secret that— (A) is made— (i) in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or (B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.
See 18 U.S.C. § 1833(b)(1).
An employer must give notice of the trade-secret whistleblower immunity in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.
An employer shall provide notice of the immunity set forth in this subsection in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.
See 18 U.S.C. § 1833(b)(3)(A).
An employer complies with the notice requirement by cross-referencing a policy document, provided to the employee, that sets out the employer's reporting policy for a suspected violation of law.
An employer shall be considered to be in compliance with the notice requirement in subparagraph (A) if the employer provides a cross-reference to a policy document provided to the employee that sets forth the employer's reporting policy for a suspected violation of law.
See 18 U.S.C. § 1833(b)(3)(B).
An employer that does not give the required notice may not be awarded exemplary damages or attorney fees in a trade-secret action against an employee who did not receive it.
If an employer does not comply with the notice requirement in subparagraph (A), the employer may not be awarded exemplary damages or attorney fees under subparagraph (C) or (D) of section 1836(b)(3) in an action against an employee to whom notice was not provided.
See 18 U.S.C. § 1833(b)(3)(C).
Section 7 gives employees the right to engage in concerted activities for mutual aid or protection, the statutory basis for keeping discussion of pay and working conditions outside confidentiality restrictions.
Employees shall have the right to self-organization, to form, join, or assist labor organizations, to bargain collectively through representatives of their own choosing, and to engage in other concerted activities for the purpose of collective bargaining or other mutual aid or protection, and shall also have the right to refrain from any or all of such activities except to the extent that such right may be affected by an agreement requiring membership in a labor organization as a condition of employment as authorized in section 158(a)(3) of this title.
See 29 U.S.C. § 157 (NLRA § 7).
The National Labor Relations Board protects the right of private-sector employees, with or without a union, to join together to improve wages, benefits, and working conditions.
Established in 1935, the National Labor Relations Board is an independent federal agency that protects employees from unfair labor practices and protects the right of private sector employees to join together, with or without a union, to improve wages, benefits and working conditions.
See NLRB Office of Public Affairs, news release of Feb. 21, 2023 (agency mission statement).
Under the work-rule standard the Board adopted in 2023, a rule with a reasonable tendency to chill employees from exercising their Section 7 rights is presumptively unlawful unless the employer proves a legitimate and substantial business interest it cannot advance with a more narrowly tailored rule.
Under the new standard adopted in Stericycle, the General Counsel must prove that a challenged rule has a reasonable tendency to chill employees from exercising their rights. If the General Counsel does so, then the rule is presumptively unlawful. However, the employer may rebut the presumption by proving that the rule advances a legitimate and substantial business interest and that the employer is unable to advance that interest with a more narrowly tailored rule.
See Stericycle, Inc., 372 NLRB No. 113 (2023); NLRB Office of Public Affairs, Board Adopts New Standard for Assessing Lawfulness of Work Rules (Aug. 2, 2023).