Invention Assignment Laws in Ohio: Who Owns What You Create

Federal law does not directly regulate invention ownership; intellectual property rights are governed by state law and the parties' written agreements. However, the Bayh-Dole Act (35 U.S.C. § 200-212) applies when federal funding supports research or development. Under Bayh-Dole, contractors (including universities and businesses) who receive federal funding for research must allow employees to retain patent rights in inventions, subject to the government's march-in rights.

The Patent Act (35 U.S.C. § 101 et seq.) establishes who can file a patent but does not specify ownership between employer and employee absent agreement. Courts apply the "shop rights" doctrine federally: if an employee uses company resources and time to invent something related to the employer's business, the employer acquires a non-exclusive, royalty-free license to use the invention, even without a written agreement.

The EEOC and DOL do not enforce invention assignment laws. Disputes are civil matters handled in federal or state court. Remedies include injunctive relief (preventing unauthorized use), damages, and assignment of patent rights. Some states, including California and Illinois, have enacted laws restricting employer claims to inventions.

Ohio Revised Code § 4001.04 provides statutory protection for employee inventions. Unlike many states, Ohio law explicitly addresses invention ownership and employee rights.

Under § 4001.04, an employee who is primarily employed to invent (a research scientist or engineer) may assign inventions to the employer only through a written agreement. For other employees, inventions belong to the employee unless made during work hours using employer equipment or facilities and related to the employer's business—and even then, only if a written agreement exists.

Ohio law is stronger than federal common law because it requires a written agreement in all cases; the "shop rights" doctrine does not apply in Ohio without an express contract. An employer cannot claim automatic ownership of employee inventions; the burden is on the employer to prove a valid written assignment agreement.

Under § 4001.04(C), an employee owns any invention created entirely on their own time, without using the employer's equipment, facilities, or materials, even if the invention is related to the employer's business or made by someone employed to invent. This creates a broad safe harbor for employee innovation outside work.

Ohio law applies to all employers operating in Ohio, regardless of size. There is no employee threshold for coverage. Any written invention assignment agreement must be explicitly signed by the employee; oral agreements or implied assignments are not enforceable.

Remedies available under Ohio law include injunctions, damages for breach of contract, recovery of attorney's fees if the agreement allows, and declaratory judgments on ownership. An employee can sue an employer in Ohio state court to establish non-ownership of an invention.

Ohio law contains critical exceptions to employer ownership claims. Under § 4001.04(A), an employer cannot claim an invention if the employee created it entirely on their own time, without using the employer's equipment, facilities, materials, or trade secrets, and the invention does not result from work performed for the employer.

Write a written agreement is mandatory; oral agreements and implied assignments are not enforceable in Ohio. An employer cannot enforce an invention assignment that was not in writing and signed by the employee. Post-employment assignment agreements (signed after hire) are enforceable but face heightened scrutiny; consideration must be clear and the restriction must be reasonable.

Inventions protected by attorney-client privilege or work product doctrine may not be assignable, as ownership may belong to the client. Trade secrets and confidential information are governed separately under the Ohio Uniform Trade Secrets Act (Ohio Revised Code § 1333.61 et seq.) and may have different ownership rules.

If an employee was hired with a non-compete or non-solicitation agreement, an invention assignment clause within that agreement must satisfy the reasonableness requirements of Ohio Revised Code § 1701.01(C). An overly broad or unreasonable assignment (claiming all future inventions in perpetuity unrelated to the business) will not be enforced.

Federal employees are subject to different rules under federal law and agency policy; Ohio state law does not supersede federal employment agreements. Union employees may have collective bargaining agreements that carve out different invention ownership rules; the contract governs, not state law unilaterally.

Inventions made by contractors or temporary staff depend on whether an assignment agreement existed at the time of creation. Without a written agreement signed by the contractor, the invention belongs to the contractor, not the hiring firm.

Step 1: Document the invention and your creation process. Keep records of when you created the invention, what time you spent, whether you used company equipment or resources, and whether it was during work hours. Save emails, lab notebooks, code repositories, design files, and witness statements showing the invention's date and your independent creation. Document any preliminary ideas or sketches created before employment. Maintain a personal file separate from company systems.

Step 2: Review your written employment agreements. Locate your offer letter, employment contract, employee handbook, and any separate invention assignment agreement. Read the exact language of the assignment clause. Note the date you signed it and what it actually claims (all inventions, only those related to the business, only those made on company time, etc.). Note whether the agreement contains consideration (a wage increase, continued employment, etc.) or was signed at hire or post-hire. If you cannot find the agreement, request a copy from Human Resources in writing.

Step 3: Determine if the invention is actually owned by the employer. Compare the invention to the requirements in Ohio Revised Code § 4001.04. Ask: (1) Was it created entirely on my own time? (2) Did I use only my own equipment and materials? (3) Is it unrelated to the employer's actual business? (4) Did I use the employer's trade secrets? If you answer yes to 1-3 and no to 4, the invention is yours regardless of any written agreement. If you used company time, equipment, or resources and the invention relates to the business, check whether you have a signed written agreement assigning it to the employer.

Step 4: Send a written notice to your employer. If you believe the invention belongs to you, send a formal letter (email is acceptable) to your employer's HR or legal department. State the invention's description, the date it was created, that you created it on personal time without company resources, and that you consider it your property. Request written acknowledgment that you own the invention and that the company will not claim ownership. Keep a copy for your records. Do not send original files or technical documentation; send only the description. Do not accuse the employer of bad faith; simply assert your position.

Step 5: If the employer disputes ownership or claims the invention anyway, consult an intellectual property attorney licensed in Ohio. Do so within 4 years (the statute of limitations for contract claims). An attorney can: (1) Review the written assignment agreement and advise on enforceability, (2) File a declaratory judgment action in Ohio state court seeking a judicial declaration that you own the invention, (3) Seek an injunction preventing the employer from using, patenting, or licensing the invention, (4) Pursue damages if the employer has already commercialized the invention without your permission. If the invention is unpatented, act quickly to file a patent application in your name before the employer files in their name; the first inventor to file has priority. If the employer has already filed a patent claiming ownership, an attorney can challenge inventorship in the U.S. Patent and Trademark Office.