On Sept. 15, 2023, New York amended its Labor Code to add protections for employee inventions created on the employee’s own time without using employer resources. The new law became effective immediately.
Assignment of Inventions
Under the new law, any employment provision that requires employees to assign, or offer to assign, their rights to an invention to their employer is not valid if the invention was developed:
- Entirely on the employees’ own time; and
- Without using employer equipment, supplies, facilities or trade secret information.
However, an exception applies to inventions that either:
- Relate to the employer’s business, research (actual or anticipated) or development (the invention must relate to the business, research or development at the time of conception or reduction to practice); or
- Result from any work employees perform for their employers.
Impact on Employers
This new law has the potential to invalidate vague or broad invention assignment agreements. Employers in New York should review this new law and determine whether any assignment agreements, including patent rights, are impacted.
Affected employers should also consult with their legal counsel to determine how to protect employee work product and related employer resources.
