Can a Utah employer require assignment of every invention?
Almost, but not quite. Utah's Employment Inventions Act, Utah Code section 34-39-3, refuses to enforce an assignment or license clause only against an invention the employee created entirely on their own time that is not an employment invention. The critical catch is the definition: Utah Code section 34-39-2(1) defines employment invention disjunctively, so an invention is an employment invention — and therefore fully assignable — if it satisfies any one of several tests, including merely being related to the industry or trade of the employer. An off-hours, own-resources invention that touches the employer's field is still fair game, which makes Utah's carve-out far narrower than California's. On a touch screen, a tap shows all 2 sources in this group.
Section 34-39-3(1) states the carve-out as a limit on enforceability, and it is written conjunctively: both conditions must hold before a clause becomes unenforceable .
Note the breadth of the operative verb. Unlike a statute that speaks only of assignment, section 34-39-3(1) reaches an agreement that requires the employee to assign or license — so a Utah drafter cannot escape the carve-out by demanding a license instead of an outright transfer of a protected own-time invention.
The narrowness lives in condition (b). Everything turns on whether the invention is an employment invention, and section 34-39-2(1) defines that term disjunctively — the list is joined by or, so satisfying any single prong makes the invention assignable .
This is the point a California-trained drafter will miss. California Labor Code section 2870 protects an own-time, own-resource invention unless it relates to the employer's business or actual or demonstrably anticipated research, or results from the employee's work. Utah adds a further disjunct — prong (c), related to the industry or trade of the employer — that has no California analogue and no requirement of any connection to the employer's own business. An engineer at a Utah medical-device company who builds an unrelated-to-the-company but still medical-device gadget on a weekend, using nothing of the employer's, may find that invention is nonetheless an employment invention because it is related to the industry or trade of the employer. Utah's carve-out is real, but its protected zone is a sliver of California's.
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Utah Code § 34-39-3(1) makes an employment agreement unenforceable against the employee to the extent it requires the employee to assign or license an invention that is both created entirely on the employee's own time and not an employment invention — reaching forced licenses as well as forced assignments.
An employment agreement between an employee and employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is: (a) created by the employee entirely on the employee's own time; and (b) not an employment invention.
See Utah Code § 34-39-3(1).
Utah Code § 34-39-2(1) defines employment invention disjunctively, so an invention is an employment invention — and fully assignable — if it satisfies any single prong, including that it is merely related to the industry or trade of the employer, or to the employer's current or demonstrably anticipated business, research, or development.
the result of any work, services, or duties performed by an employee for the employer; (c) related to the industry or trade of the employer; or (d) related to the current or demonstrably anticipated business, research, or development of the employer
See Utah Code § 34-39-2(1)(b)–(d).
Must a Utah employer notify the employee?
No. Unlike California, which requires written notice under Labor Code section 2872, and Washington, which requires one under RCW 49.44.140(3), Utah's Employment Inventions Act contains no notice, disclosure, or acknowledgment requirement. The Act operates purely on enforceability: a clause that overreaches the own-time carve-out is unenforceable to that extent, and a clause within the Act's bounds is valid without any notice to the employee. Section 34-39-3 instead speaks in terms of what an employer may and may not require as a condition of employment .
The Act's own machinery confirms the absence of a notice step. Rather than conditioning a clause on written disclosure, section 34-39-3 draws the line at what an employer may demand: it may require an employee to sign a compliant assignment agreement as a condition of employment, but it may not require the employee to agree to anything the Act renders unenforceable .
That structure matters for a multistate employer. A form built around the California section 2872 or Washington RCW 49.44.140(3) notice will carry disclosure language that Utah simply does not demand — harmless surplusage, but a signal that the drafter has not thought about Utah's much narrower carve-out. The reverse point is the important one: because the Act gives the employer no notice-based safe harbor, an employer cannot cure an overbroad clause by disclosing the carve-out. Compliance in Utah is achieved by writing the assignment scope to the Act's boundaries, not by papering the employee with a notice.
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Utah Code § 34-39-3 lets an employer require a compliant assignment agreement as a condition of employment but bars requiring agreement to anything unenforceable under Subsection (1); the Act imposes no notice, disclosure, or acknowledgment requirement of any kind.
An employer may require employees to agree to an agreement within the scope of Subsection (2) as a condition of employment or the continuation of employment. (7) An employer may not require employees to agree to anything unenforceable under Subsection (1) as a condition of employment or the continuation of employment.
See Utah Code § 34-39-3(6)–(7).
Who owns an invention by default in Utah?
The inventor. Absent a written assignment, federal patent law — which governs who holds title to a patentable invention in Utah as elsewhere — vests rights in the employee who conceived it. The U.S. Supreme Court restated that baseline in Stanford v. Roche, and although others may acquire an interest, that interest must trace back to the inventor. The Employment Inventions Act does not vest ownership in the employer; it only constrains what an assignment or license clause may demand. The one general-law exception is the hired-to-invent rule of United States v. Dubilier Condenser Corp.: an employee engaged specifically to make an invention must assign the patent that results. On a touch screen, a tap shows all 2 sources in this group.
Stanford v. Roche anchors the default. The Court held that even the Bayh-Dole Act did not displace the long-standing premise that an invention belongs to its inventor, treating that rule as the baseline against which any assignment is 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, and any third-party interest must trace back to that inventor-grantor .
The classic exception, recognized in United States v. Dubilier Condenser Corp., is the employee hired to invent. Where the employee's very task was to produce the invention, the resulting patent belongs to the employer as a matter of the employment bargain .
But the hired-to-invent doctrine is fact-intensive and narrow, and it is no substitute for a written clause. The dependable path for a Utah employer is a written present-assignment (hereby assigns) clause — present-tense language that transfers legal title automatically on conception, rather than a mere promise to assign later — operating within the boundaries the Employment Inventions Act 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).
United States v. Dubilier Condenser Corp. states the hired-to-invent rule: an employee engaged to make an invention who accomplishes that task during the term of service is bound to assign to the employer any patent obtained.
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).
Are trailing-assignment (holdover) clauses enforceable in Utah?
Only so far as they are reasonable. The Employment Inventions Act sets no durational ceiling on post-employment assignments, and our review found no Utah appellate decision squarely deciding whether a holdover clause reaching inventions conceived after employment ends is enforceable. The operative lens is therefore Utah's general restrictive-covenant law: a trailing clause that functions to restrain the departed employee is tested for reasonableness, as Robbins v. Finlay frames it and System Concepts, Inc. v. Dixon applies it. On a touch screen, a tap shows all 2 sources in this group.
Start with what the Act does not do. Sections 34-39-2 and 34-39-3 define which inventions an assignment or license clause may reach, but they say nothing about how long after employment a trailing clause may operate, and nothing about inventions conceived only after the relationship ends. Utah has no statutory durational cap comparable to a fixed post-employment ceiling.
Because no Utah case has ruled directly on invention holdover clauses, the most reliable prediction is that a Utah court would borrow its restrictive-covenant reasonableness analysis. Robbins v. Finlay states that framework: a post-employment restraint is enforceable only if carefully drawn to protect the employer's legitimate interests, judged against factors of scope, duration, and the interest protected .
System Concepts, Inc. v. Dixon confirms that this reasonableness inquiry is fact-bound rather than mechanical, which is why an overbroad trailing clause carries real risk .
Two further wrinkles bear on the prediction. First, a holdover clause that sweeps in an ex-employee's genuinely independent post-employment inventions begins to look like a disguised covenant not to compete, which is exactly what the Robbins factors are built to police. Second, Utah's Post-Employment Restrictions Act (Utah Code chapter 34-51) caps noncompetition agreements at one year, and how far that cap reaches a trailing invention-assignment clause is unsettled in our review — so a Utah drafter should treat an aggressive holdover tail as exposed on both the common-law reasonableness front and the statutory-noncompete front, without overclaiming that either doctrine has resolved the question. The safe course is a holdover clause narrowly tied to inventions conceived during employment or derived from the employer's confidential information, over a short and defined trailing window.
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Robbins v. Finlay states Utah's reasonableness test for a post-employment restrictive covenant: it is enforceable only if carefully drawn to protect the employer's legitimate interests, judged by factors including geographic extent, duration, the employee's duties, and the interest protected — the analogue a Utah court would most likely apply to an invention holdover clause.
Covenants not to compete are enforceable if carefully drawn to protect only the legitimate interests of the employer. The reasonableness of a covenant depends upon several factors, including its geographical extent; the duration of the limitation; the nature of the employee’s duties; and the nature of the interest which the employer seeks to protect such as trade secrets, the goodwill of his business, or an extraordinary investment in the training or education of the employee.
See Robbins v. Finlay, 645 P.2d 623 (Utah 1982).
System Concepts, Inc. v. Dixon holds that the reasonableness of a restrictive covenant is determined case-by-case on the particular facts, confirming that a Utah court would evaluate a holdover clause's scope and duration against the specific circumstances rather than a bright-line rule.
The reasonableness of the restraints in a restrictive covenant is determined on a case-by-case basis, taking into account the particular facts and circumstances surrounding the case and the subject covenant.
See System Concepts, Inc. v. Dixon, 669 P.2d 421 (Utah 1983).
Utah Code § 34-39-2(1) defines employment invention disjunctively, so an invention is an employment invention — and fully assignable — if it satisfies any single prong, including that it is merely related to the industry or trade of the employer, or to the employer's current or demonstrably anticipated business, research, or development.
the result of any work, services, or duties performed by an employee for the employer; (c) related to the industry or trade of the employer; or (d) related to the current or demonstrably anticipated business, research, or development of the employer
See Utah Code § 34-39-2(1)(b)–(d).
Utah Code § 34-39-3(1) makes an employment agreement unenforceable against the employee to the extent it requires the employee to assign or license an invention that is both created entirely on the employee's own time and not an employment invention — reaching forced licenses as well as forced assignments.
An employment agreement between an employee and employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is: (a) created by the employee entirely on the employee's own time; and (b) not an employment invention.
See Utah Code § 34-39-3(1).
Do not treat Utah as a California-style own-time shield. Because Utah Code section 34-39-2(1) defines employment invention disjunctively — reaching anything related to the industry or trade of the employer, or to the employer's current or demonstrably anticipated business, research, or development — an off-hours invention that a California carve-out would protect can still be a fully assignable employment invention in Utah . The Act does bar an agreement from forcing the assignment or license of a genuinely protected own-time invention, and it requires no employee notice, so compliance turns entirely on drafting the assignment scope to the statute rather than on any disclosure . Finally, keep any post-employment holdover tail narrow: a trailing clause reaching an ex-employee's independent inventions risks being struck as an unreasonable restraint under Robbins v. Finlay, and its interaction with Utah's one-year noncompete cap is unsettled .
What does federal law require a confidentiality and invention assignment agreement in Utah 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).