Can a Wisconsin employer require assignment of every invention?
There is no statutory ceiling. Wisconsin has no employee-invention-assignment statute — nothing that voids an assignment of a true own-time, own-resource invention — so an assignment clause's reach is bounded by ordinary contract law, the common-law inventor-owns default, and the federal patent overlay. The distinctive Wisconsin backstop is Wis. Stat. § 103.465, which conditions any covered employment restraint on reasonableness and voids an unreasonable one in its entirety. On a touch screen, a tap shows all 2 sources in this group.
Because there is no statute on point, the limits come from general principles rather than a legislative carve-out. A full-text search of the Wisconsin Statutes surfaces no § 2870-style provision — no statute voiding the assignment of inventions developed on the employee's own time without employer resources. The two Wisconsin statutes adjacent to the area do something different: Wis. Stat. § 103.465 regulates restraints of trade in employment contracts, and Wis. Stat. § 134.90, the state's Uniform Trade Secrets Act, protects qualifying secret information — an unpatented invention kept secret may qualify — but says nothing about who owns an employee's invention or what an assignment clause may reach .
The substantive default the contract operates against is the federal patent premise restated in Stanford v. Roche: absent an effective assignment, rights in an invention belong to the person who conceived it .
What Wisconsin adds is a judicial reasonableness backstop rather than a category carve-out. Section 103.465 makes a covered covenant lawful and enforceable only if its restrictions are reasonably necessary to protect the employer .
The practical consequence is that a Wisconsin employer can, in principle, contract for assignment more broadly than a California or Washington employer, because no statute carves own-time inventions out of the clause's reach. But the breadth is not free. An assignment clause is still an ordinary contract term subject to the usual defenses, and to the extent a clause operates in substance as a restraint on the employee's ability to work — the concern most acute for post-employment holdover terms, discussed below — § 103.465 supplies a reasonableness test with an unusually harsh remedy for overreach .
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Wis. Stat. § 103.465 supports the rule that a covered employment restraint is lawful and enforceable only if its restrictions are reasonably necessary for the protection of the employer — a reasonableness backstop, not an invention-specific carve-out.
A covenant by an assistant, servant or agent not to compete with his or her employer or principal during the term of the employment or agency, or after the termination of that employment or agency, within a specified territory and during a specified time is lawful and enforceable only if the restrictions imposed are reasonably necessary for the protection of the employer or principal.
See Wis. Stat. § 103.465.
Stanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor, the baseline against which any assignment clause is measured.
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).
Wis. Stat. § 134.90, Wisconsin's Uniform Trade Secrets Act, protects qualifying secret information — including an unpatented invention kept secret — but is not an ownership or invention-assignment statute.
“Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique or process to which all of the following apply: 1. The information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use. 2. The information is the subject of efforts to maintain its secrecy that are reasonable under the circumstances.
See Wis. Stat. § 134.90(1)(c).
Must a Wisconsin employer notify the employee?
Not applicable. Because Wisconsin has no invention-assignment statute, there is no statutory carve-out to notify the employee about and no notice requirement of the kind California imposes under Labor Code § 2872 or Washington imposes under RCW 49.44.140(3). What Wisconsin law protects instead is the employee's underlying property in the invention itself, which remains the employee's unless and until the contract transfers it .
There is nothing to give notice of. A notice requirement exists in California and Washington precisely to alert the employee to a statutory own-time carve-out that limits the assignment; Wisconsin has enacted no such carve-out, so there is no statutory line for a notice to mark. This is why the entry is marked not applicable rather than a bare no — the question presupposes a statutory carve-out that Wisconsin does not have.
The protection Wisconsin does supply comes from the common law of property, not a disclosure formality. In Barlow & Seelig Manufacturing Co. v. Patch, the Wisconsin Supreme Court framed the employer-employee invention dispute as a contest between two distinct kinds of property and held that the inventor's side of the line stays with the inventor absent an agreement to assign .
For a multistate employer the takeaway is the inverse of the notice states: a Wisconsin employer neither has to give a § 2872-style notice nor can rely on one to cure an overbroad clause. Whether the assignment binds turns on the contract language and the general limits on restraints, not on any statutory notice or disclosure formality.
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Barlow & Seelig Mfg. Co. v. Patch treats the employee's novel idea as the employee's own property, distinct from the employer's property in the improved product — so in Wisconsin any duty to assign arises from the agreement itself rather than from a notice-requiring statute.
There are two items of property involved, that of the employer who owns the product in its improved form, and that of the inventor, to whom the novel idea belongs.
See Barlow & Seelig Mfg. Co. v. Patch, 232 Wis. 220, 286 N.W. 577 (1939).
Who owns an invention by default in Wisconsin?
The inventor, unless hired to invent. In Barlow & Seelig Manufacturing Co. v. Patch, the Wisconsin Supreme Court rejected an employer's claim to a generally employed engineer's invention and confined the employer to shop rights; the narrow exception is the employee hired to invent, whose resulting invention the employer may claim under the federal rule of Dubilier. On a touch screen, a tap shows all 2 sources in this group.
Barlow & Seelig anchors the Wisconsin default. A mechanical engineer employed generally — not engaged to make the particular invention — kept ownership of his patent, and the court held that the employer's legitimate interests are exhausted by a shop right .
The principal exception is the employee hired to invent. Under United States v. Dubilier Condenser Corp., an employee engaged to make a particular invention who succeeds during the term of service must assign the resulting patent to the employer .
A shop right is a use license, not ownership. Where the employee used the employer's time, materials, and facilities to develop the invention, the employer acquires a right to use it — but the Wisconsin Supreme Court in Spellman v. Ruhde was explicit that the license stops short of title .
Because ownership starts with the inventor and Wisconsin has no statute filling the gap, the dependable path for an employer is a written present-assignment (hereby assigns) clause that transfers legal title automatically on conception, rather than a future promise to assign that leaves the employer with a mere equitable claim — and rather than reliance on hired-to-invent status or a shop right, both of which are fact-intensive and, in the shop-right case, yield only a license.
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Barlow & Seelig Mfg. Co. v. Patch holds that where the employee was not hired to invent and made no agreement to assign, the employer's interests are fully protected by shop rights — so the generally employed inventor keeps ownership.
When there is no employment to invent and no agreement to assign, the employer’s interests are fully protected by the privileges and benefits of shop rights.
See Barlow & Seelig Mfg. Co. v. Patch, 232 Wis. 220, 286 N.W. 577 (1939).
United States v. Dubilier Condenser Corp. holds that an employee hired to make an invention who succeeds 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).
Spellman v. Ruhde confirms that a shop right is a use license only — it generally does not give the employer title to the patent the employee received.
Note that shop rights generally do not give the employer the title to a patent that the employee may have received.
See Spellman v. Ruhde, 28 Wis. 2d 599, 137 N.W.2d 425 (1965).
Are trailing-assignment (holdover) clauses enforceable in Wisconsin?
Most likely only if reasonable — and an unreasonable one would be void in its entirety. No Wisconsin decision found in our review squarely applies Wis. Stat. § 103.465 to a post-employment invention-assignment clause, so the invention-specific question is open. But the Wisconsin Supreme Court reads § 103.465 to reach any employment provision that in substance restrains trade, whatever its label, and the statute's second sentence voids an unreasonable restraint in toto, with no judicial trimming. On a touch screen, a tap shows all 2 sources in this group.
The starting point is substance over label. In Manitowoc Co. v. Lanning, the Wisconsin Supreme Court held that a non-solicitation-of-employees provision — a clause nowhere labeled a non-compete — is a restraint of trade governed by § 103.465 .
Lanning restated the rule that the Wisconsin Supreme Court had stated in Heyde Cos. v. Dove Healthcare: the statute essentially deals with restraint of trade and applies regardless of how the restriction is labeled .
A trailing invention-assignment clause fits that logic: to the extent it sweeps in inventions a former employee first conceives after leaving, it burdens the ex-employee's ability to work and invent in the field, since any new employer would take the fruits of that work subject to the old employer's claim.
Extending the Lanning line to holdover assignments is a prediction, not a holding. Our review found no Wisconsin decision — state or federal — applying § 103.465 to an invention-assignment clause; the § 103.465 case law concerns non-competes, non-solicits, and confidentiality covenants. So a court could conceivably treat an assignment of property rights as something other than a covered restraint. The safer working assumption, given how consistently Wisconsin courts have refused to let labels control, is that an aggressive holdover clause would be tested for reasonableness like any other post-employment restraint .
The nearest invention-specific precedent is regional and persuasive only. In Guth v. Minnesota Mining & Manufacturing Co., decided in 1934 — before Erie Railroad Co. v. Tompkins required federal courts to apply state law outside matters governed by the Constitution or Acts of Congress — the Seventh Circuit held that employment-contract provisions requiring assignment of future inventions without limit in time or subject matter were contrary to public policy , while enforcing the contract's reasonable provisions .
“Assignments in gross of future inventions are not favored.”
What makes Wisconsin unusual is the remedy. Guth saved the reasonable parts of the contract; modern § 103.465 forbids exactly that move for covenants it covers. The statute's second sentence voids an unreasonable restraint entirely — even the portion that would have been reasonable standing alone — so a Wisconsin court that characterized an overbroad holdover clause as a covered restraint would not narrow it to a reasonable core, it would strike it .
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Manitowoc Co. v. Lanning holds that a provision not labeled a non-compete — there, a non-solicitation-of-employees clause — is a restraint of trade governed by Wis. Stat. § 103.465, establishing that substance rather than label determines the statute's reach.
we conclude that Lanning's non-solicitation of employees provision is a restraint of trade governed by Wis. Stat. § 103.465
See The Manitowoc Co., Inc. v. Lanning, 2018 WI 6.
Manitowoc Co. v. Lanning, quoting Heyde Cos. v. Dove Healthcare, restates the rule that § 103.465 deals with restraint of trade regardless of whether the restriction is labeled a non-disclosure provision or a covenant not to compete.
essentially deals with restraint of trade . . . regardless of whether a restriction is labeled a 'non-disclosure' provision or a 'covenant not to compete.'
See The Manitowoc Co., Inc. v. Lanning, 2018 WI 6 (quoting Heyde Cos. v. Dove Healthcare, LLC, 2002 WI 131).
Heyde Cos. v. Dove Healthcare holds that Wis. Stat. § 103.465 essentially deals with restraint of trade and applies regardless of whether a restriction is labeled a non-disclosure provision or a covenant not to compete — the rule Lanning later quotes.
This court has recognized that § 103.465 essentially deals with restraint of trade and has held that the statute applies regardless of whether a restriction is labeled a “non-disclosure” provision or a “covenant not to compete.”
See Heyde Cos. v. Dove Healthcare, LLC, 2002 WI 131, 258 Wis. 2d 28, 654 N.W.2d 830.
Erie Railroad Co. v. Tompkins holds that, except in matters governed by the Federal Constitution or Acts of Congress, the law applied in any case is the law of the State, and that there is no federal general common law — so Guth, decided in 1934, predates the rule that binds federal courts to state law.
Except in matters governed by the Federal Constitution or by Acts of Congress, the law to be applied in any case is the law of the State. And whether the law of the State shall be declared by its Legislature in a statute or by its highest court in a decision is not a matter of federal concern. There is no federal general common law.
See Erie R.R. Co. v. Tompkins, 304 U.S. 64 (1938).
Guth v. Minnesota Mining, a pre-Erie Seventh Circuit decision that is persuasive rather than Wisconsin authority, held employment-contract provisions assigning future inventions without limit in time or subject matter contrary to public policy while enforcing the reasonable provisions, and described assignments in gross of future inventions as disfavored.
Assignments in gross of future inventions are not favored.
See Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).
Guth v. Minnesota Mining holds that the employment-contract provisions requiring assignment of inventions without limit in time or in subject matter were contrary to public policy. The word ease is the source text's rendering of case.
Upon the facts peculiar to this ease we are convinced that those provisions of the contract which were limitless in extent of time and in subject matter of invention were contrary to public policy.
See Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).
Guth v. Minnesota Mining holds the employment contract divisible: the covenants contrary to public policy are not enforceable, while the others are valid and enforceable in equity, and the two inventions in suit fell within the valid provisions.
Some of the covenants are contrary to public policy and non-enforceable. Others are valid and enforceable in a court of equity (although courts are not required in all cases to grant the specific performance of such contracts).
See Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).
Wis. Stat. § 103.465's second sentence voids an unreasonable covered restraint in its entirety — even as to the part that would have been a reasonable restraint — so Wisconsin courts may not blue-pencil an overbroad covenant down to a reasonable core.
Any covenant, described in this section, imposing an unreasonable restraint is illegal, void and unenforceable even as to any part of the covenant or performance that would be a reasonable restraint.
See Wis. Stat. § 103.465.
Do not assume the invention-assignment label insulates a holdover clause from Wisconsin restrictive-covenant law. The Wisconsin Supreme Court applies Wis. Stat. § 103.465 to any employment provision that in substance restrains trade, whatever the drafter called it , and if a court characterizes a trailing assignment as a covered restraint, an unreasonable clause is void in its entirety — Wisconsin courts will not trim it to a reasonable core, so overreach forfeits even the enforceable part . Keep any post-employment assignment short and tied to the employer's confidential information or to work actually begun during employment; a clause without limits in time or subject matter is the profile the leading regional precedent condemned as contrary to public policy, in a decision that treats wholesale assignments of future inventions as disfavored .
What does federal law require a confidentiality and invention assignment agreement in Wisconsin 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).