Can a Minnesota employer require assignment of every invention?
No. Minnesota Statutes section 181.78 carves out a category of inventions that an assignment clause simply cannot reach: anything the employee developed entirely on their own time, for which no equipment, supplies, facility, or trade-secret information of the employer was used, that neither relates directly to the employer's business or actual or demonstrably anticipated research or development nor results from the employee's work. To the extent a clause purports to capture those own-time inventions, it is against the public policy of the state and void. On a touch screen, a tap shows all 2 sources in this group.
Subdivision 1 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 .
The same subdivision 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 public policy .
Like California but unlike some assign-everything jurisdictions, Minnesota also 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 and unenforceable by subdivision 1 may not be required as a condition of employment or continuing employment .
Sources for this answer
Minn. Stat. § 181.78, subdivision 1 makes an assignment clause inapplicable to an invention the employee developed entirely on their own time without the employer's equipment, supplies, facility, or trade-secret information, unless the invention relates directly to the employer's business or to 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, 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.
See Minn. Stat. § 181.78, subd. 1.
Minn. Stat. § 181.78, subdivision 1 declares that any provision purporting to apply to an own-time, own-resource invention outside the statute's exceptions is to that extent against the public policy of the state and void and unenforceable.
Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
See Minn. Stat. § 181.78, subd. 1.
Minn. Stat. § 181.78, subdivision 2 bars an employer from requiring a provision made void and unenforceable by subdivision 1 as a condition of employment or continuing employment.
No employer shall require a provision made void and unenforceable by subdivision 1 as a condition of employment or continuing employment.
See Minn. Stat. § 181.78, subd. 2.
Must a Minnesota employer notify the employee?
Yes. Minnesota Statutes section 181.78, subdivision 3 requires an employer whose agreement contains an invention-assignment provision to give the employee, at the time the agreement is made, a written notification that the agreement does not apply to a qualifying own-time invention. The notice tracks the subdivision 1 carve-out word for word, and the obligation is mandatory for any agreement entered into after August 1, 1977.
The notice obligation is contemporaneous, not eventual: the written notification must accompany the agreement when it is made. It does not change which inventions are carved out — subdivision 1 does that — but it ensures the employee is told the carve-out exists .
What the statute does not spell out is the consequence of skipping the notice. No Minnesota case found in our review decides whether a missing subdivision 3 notification, by itself, voids an otherwise valid assignment clause. Courts in other own-time-carve-out states have treated the omission of the parallel written notice as a reason to withhold enforcement, but that persuasive authority is not Minnesota law. Because the safe course is clear, a prudent employer should treat the subdivision 3 notice as a hard requirement and deliver it at signing rather than litigate the remedy for its absence.
Sources for this answer
Minn. Stat. § 181.78, subdivision 3 requires an employer whose agreement contains an assignment provision to give 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 outside the statute's exceptions.
If an employment agreement entered into after August 1, 1977 contains a provision requiring the employee to assign or offer to assign any of the employee's rights in any invention to an employer, the employer must also, at the time the agreement is made, provide 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, 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.
See Minn. Stat. § 181.78, subd. 3.
Who owns an invention by default in Minnesota?
The inventor. Absent a written assignment, the baseline rule under federal patent law — which governs who holds title to a patentable invention in Minnesota as elsewhere — is that rights belong to the employee who conceived it. 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. A Minnesota employer therefore depends on a written present-assignment clause to take title, and Minnesota courts do enforce a valid one — the Eighth Circuit, applying Minnesota law, upheld exactly such an agreement in Eaton Corp. v. Giere. On a touch screen, a tap shows all 2 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 .
A written assignment closes that gap, and Minnesota enforces one. In Eaton Corp. v. Giere, a departing engineer built a competing transaxle he had begun designing while employed; the Eighth Circuit, applying Minnesota law, affirmed summary judgment for the employer on its breach-of-employee-agreement claim, holding the device fell within the agreement because it related to the employer's business and resulted from the engineer's work .
Minnesota, like other states, also recognizes a narrow common-law overlay — the hired-to-invent doctrine, under which an employer takes rights where the employee was engaged specifically to invent or to solve the particular problem the invention solves. The U.S. Supreme Court described the rule in United States v. Dubilier Condenser Corp.: one employed to make an invention who succeeds in that task is bound to assign the resulting patent .
That doctrine is fact-intensive and turns on what the employee was actually hired to do, so it is no substitute for an express clause. 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 — drafted to stay within the boundaries section 181.78 imposes.
Sources for this answer
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).
Eaton Corp. v. Giere, applying Minnesota law, affirmed summary judgment for the employer on its breach-of-employee-agreement claim (Count II), enforcing the invention-assignment agreement against a former engineer whose competing device related to and resulted from his work at the employer.
We find the district court’s decision should be affirmed on both Count II (breach of employment agreement) and on Count III (violation of fiduciary duty).
See Eaton Corp. v. Giere, 971 F.2d 136 (8th Cir. 1992).
United States v. Dubilier Condenser Corp. states the hired-to-invent rule: an employee engaged to make an invention who succeeds in that task is bound to assign the resulting patent to the employer, because the employee produced only what he was employed to invent.
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. The reason is that he has only produced that which he was employed to invent. His invention is the precise subject to the contract of employment.
See United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).
Are trailing-assignment (holdover) clauses enforceable in Minnesota?
Only so far as reasonable — and a 2023 statute now shadows them. Minnesota has no statute that caps a post-employment trailing-assignment clause, so a court would judge an overbroad holdover under ordinary restrictive-covenant reasonableness. But since 2023, section 181.988 has voided covenants not to compete outright, excepting agreements designed to protect trade secrets, so a trailing clause that operates as a de facto non-compete risks being struck as a void non-compete, while one tightly tethered to trade-secret protection can survive. On a touch screen, a tap shows all 2 sources in this group.
Start with the statutory landscape. Section 181.78 governs what an assignment clause may reach during employment, but it says nothing about a clause reaching inventions conceived after the employment relationship ends. Traditionally, a Minnesota court asked to enforce such a trailing clause would treat it as a restrictive covenant and test it for reasonableness in time and scope — no more than necessary to protect a legitimate employer interest.
Section 181.988 changes the backdrop. Enacted in 2023, it makes any covenant not to compete void and unenforceable, subject only to narrow sale-of-business and dissolution exceptions .
“Any covenant not to compete contained in a contract or agreement is void and unenforceable.”
The statute does not sweep in every restraint, though. Its definition of a covenant not to compete expressly excludes agreements aimed at protecting confidential information — a nondisclosure agreement, or an agreement designed to protect trade secrets or confidential information, is not a covenant not to compete under the section .
That exclusion is the live drafting frontier for holdover clauses. A trailing-assignment provision that reaches broadly into a departed employee's later inventions — regardless of whether any trade secret was used — functions as a restraint on the employee's ability to work in the field, and a Minnesota court could most likely recharacterize it as a de facto covenant not to compete now void under section 181.988. A clause drawn narrowly to capture only inventions that draw on the former employer's trade secrets, by contrast, fits within the express trade-secret exclusion and stands a far better chance of surviving. No Minnesota decision found in our review has yet applied section 181.988 to a trailing invention-assignment clause, so the reclassification risk is a predictive one — but it is real enough that a drafter should avoid an aggressive holdover rather than rely on one.
Sources for this answer
Minn. Stat. § 181.988, subdivision 2 makes any covenant not to compete contained in a contract or agreement void and unenforceable, subject only to narrow sale-of-business and dissolution exceptions.
Any covenant not to compete contained in a contract or agreement is void and unenforceable.
See Minn. Stat. § 181.988, subd. 2(a).
Minn. Stat. § 181.988, subdivision 1 excludes from the definition of a covenant not to compete a nondisclosure agreement or an agreement designed to protect trade secrets or confidential information, so a narrowly trade-secret-tethered restraint is not caught by the ban.
A covenant not to compete does not include a nondisclosure agreement, or agreement designed to protect trade secrets or confidential information.
See Minn. Stat. § 181.988, subd. 1(a).
Minn. Stat. § 181.78, subdivision 3 requires an employer whose agreement contains an assignment provision to give 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 outside the statute's exceptions.
If an employment agreement entered into after August 1, 1977 contains a provision requiring the employee to assign or offer to assign any of the employee's rights in any invention to an employer, the employer must also, at the time the agreement is made, provide 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, 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.
See Minn. Stat. § 181.78, subd. 3.
Do not paper a Minnesota employee with an out-of-state invention-assignment form. A form built for an assign-everything jurisdiction will usually omit the section 181.78, subdivision 3 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 subdivision 3 notice at signing and limit the assignment to what section 181.78 actually allows. And since 2023, treat an aggressive holdover with new caution: a trailing clause that operates as a de facto restraint on the employee's future work risks being struck as a void covenant not to compete under section 181.988 unless it is narrowly tied to protecting the employer's trade secrets. On a touch screen, a tap shows all 2 sources in this group.
What does federal law require a confidentiality and invention assignment agreement in Minnesota 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.
Sources for this answer
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).