Invention Assignment Laws in Georgia: Who Owns What You Create

Federal law does not directly govern invention ownership; instead, the Patent Act (35 U.S.C. § 101) establishes that the inventor is the initial patent owner unless there is a written assignment or work-made-for-hire agreement. The Supreme Court in United States v. Dubilier Mallory Co., 289 U.S. 178 (1933), held that absent an explicit agreement, employers do not automatically own employee inventions even if created during employment using company resources.

Under federal law, work-made-for-hire doctrine applies in copyright and some limited circumstances, but patent law requires a clear, signed agreement. The Defend Trade Secrets Act (18 U.S.C. § 1836) protects trade secrets but does not transfer ownership of inventions without an agreement. Federal patent law permits shop rights—an implied license allowing employers to use patented inventions created by employees—but this does not give the employer ownership. The EEOC and federal courts enforce written assignment agreements if they are reasonable and supported by consideration.

Georgia Code § 34-2-2 governs the enforceability of restrictive covenants, including invention and patent assignment agreements. Under this statute, restrictive covenants are enforceable if they are reasonable in time, area, and line of business and if they protect a legitimate business interest. Georgia courts interpret this statute strictly and require that the covenant be part of a contract of employment or a separate written agreement signed by the employee.

Unlike California, which prohibits most non-compete and invention assignment agreements under Business and Professions Code § 16600, Georgia permits employers to require employees to assign inventions created during employment. However, Georgia does not recognize an automatic shop rights doctrine. An invention assignment must be in writing and sufficiently specific to be enforceable. Georgia courts have held that an assignment clause must clearly describe the scope of inventions covered—whether all inventions or only those related to the company's business.

Georgia Code § 34-7-2(b) provides that works made for hire belong to the employer, but this applies primarily to copyrightable works, not patents. For patents and trade secrets, Georgia relies on contract law and § 34-2-2. Georgia courts follow the principle that an employee retains ownership of inventions made outside the scope of employment and without use of company resources unless the assignment agreement explicitly covers such inventions.

A key distinction in Georgia law is that there is no statutory exception for inventions unrelated to the employer's business—unlike some states that protect employee-created inventions outside the company's field. This means Georgia employers can potentially enforce broad assignment agreements covering any invention an employee creates while employed, regardless of whether it relates to the business, if the agreement is clear and reasonable. However, enforceability depends on whether the agreement protects a legitimate business interest and is reasonable in scope. Remedies under Georgia law include injunctive relief to prevent use of the invention, monetary damages for misappropriation, and attorney's fees in disputes.

Georgia Code § 34-2-2 allows several exceptions to invention assignment enforceability. First, overly broad restrictive covenants that are unreasonable in scope, time, or geographic area are unenforceable. Courts will not enforce a covenant that attempts to restrict an employee from working in any field whatsoever or for an indefinite period. Second, inventions created entirely outside the scope of employment and without any use of company resources or confidential information may not be assignable even if an assignment agreement exists, depending on the agreement's language.

Third, Georgia law does not impose a duty on employees to assign inventions unless there is a written agreement. Oral agreements to assign inventions are unenforceable under Georgia contract law. Fourth, if an assignment agreement lacks consideration (mutual exchange of value), it may be unenforceable, though employment itself typically constitutes consideration.

Fifth, inventions that were developed entirely on the employee's own time and with the employee's own resources, using no company information or facilities, may be exempt from assignment, but this depends heavily on the specific language of the assignment agreement. Some agreements explicitly state that employees retain ownership of inventions made outside work hours and without company resources; others claim all inventions. Courts apply the specific language of the agreement.

Sixth, union-represented employees in a collective bargaining unit may have different protections if their contract explicitly provides for employee ownership of certain inventions or limits assignment to specified categories. However, most union agreements in Georgia still permit employers to claim work-related inventions.

Seventh, federal patent law provides that shop rights (an implied license for the employer to use the invention) exist in some cases, but this does not transfer ownership and is an exception only to infringement claims, not to the assignment agreement itself. Finally, the assignment cannot violate public policy; for example, an assignment intended to suppress a patentable invention for anticompetitive purposes may face challenges, though Georgia courts rarely void agreements on this ground.

Step 1: Document Everything. Keep detailed records of when and where you created the invention, what company resources (if any) you used, whether you used company time or your own time, and any communications with your employer about the invention. Document the development process, including sketches, prototypes, code, notes, and emails. If the invention was created outside work hours, document the dates, times, and locations. Save copies of the assignment agreement you signed, if any. Photograph or screenshot any evidence that the invention was created using personal resources or outside the workplace. This documentation is critical because it will establish whether the invention falls within the scope of the assignment agreement.

Step 2: Internal Complaint Process. Before filing an external complaint, review your employment contract and assignment agreement carefully. Identify the exact language claiming ownership of the invention. If you believe the assignment agreement is unenforceable or does not cover your invention, send a written objection to your employer's legal department or HR, clearly explaining why you believe you own the invention and citing specific contract language that supports your position. Request a written response acknowledging your position or explaining the employer's reasoning. This step is important because it creates a paper trail, may trigger internal review, and can strengthen your case if you later pursue litigation. Preserve all communications in writing; do not rely on verbal discussions.

Step 3: File a Formal Complaint or Seek Judicial Review. Unlike discrimination claims, invention assignment disputes are not handled by a government agency in Georgia. Instead, you must file a civil lawsuit in Georgia Superior Court claiming breach of contract, tortious interference, or declaratory judgment (asking the court to rule on who owns the invention). There is no statutory filing deadline, but claims are generally subject to a six-year statute of limitations from the date of the dispute. Before filing, consult an attorney to evaluate the strength of your claim based on the specific contract language and the circumstances of the invention's creation. You can also seek a declaratory judgment asking the court to determine ownership before the invention is commercialized or patented, which can prevent future disputes.

Step 4: The Legal Process and Timeline. Once a lawsuit is filed, the discovery phase begins, typically lasting 6–12 months. During discovery, both sides exchange relevant documents, including the assignment agreement, your employment records, communications about the invention, and evidence of resource use. You may be deposed (formally questioned under oath) by the employer's attorney, and your employer will be deposed as well. The court may appoint a magistrate to examine technical details of the invention. Expect this phase to take 9–18 months before a trial or settlement discussion occurs. If the case proceeds to trial, it could take an additional 6–12 months. If both parties agree, the dispute may be resolved through arbitration (private, faster process) rather than court litigation, depending on whether your employment agreement includes an arbitration clause.

Step 5: Consult an Intellectual Property Attorney. Because invention ownership involves complex patent and contract law, consult a Georgia-licensed attorney who specializes in intellectual property, employment law, or both. An IP attorney can review your assignment agreement, assess the strength of your claim to ownership, and explain the likely outcome based on similar Georgia cases. They can also help you file the lawsuit, conduct discovery, negotiate a settlement, or prepare for trial. Alternatively, if you believe your employer is misappropriating a trade secret related to the invention, you may have claims under Georgia's Uniform Trade Secrets Act (O.C.G.A. § 34-1-3), which provides for actual damages, exemplary damages (up to three times actual damages), and attorney's fees. An attorney can advise whether trade secret claims strengthen your position.