Invention Assignment Laws in Pennsylvania: Who Owns What You Create

Federal law does not directly regulate invention assignment. Instead, invention ownership is governed by state contract law, trade secret statutes, and patent law. The federal patent system (35 U.S.C. § 101) determines what is patentable, but ownership of inventions is determined by state law or employment contracts.

The Uniform Trade Secrets Act (UTSA), adopted in most states including Pennsylvania, provides a framework for protecting trade secrets but does not automatically assign inventions to employers. Federal employment law (Title VII, ADEA, FMLA, ADA) does not address invention ownership. The Defend Trade Secrets Act (18 U.S.C. § 1836) protects employers' trade secrets but does not create ownership of inventions—it only protects confidential information.

Federal law requires that patent applications name the actual inventor, and the patent office enforces this requirement. However, inventors can assign their patent rights to employers through contracts. The key federal principle is that inventorship cannot be contracted away—only the rights to the invention can be assigned. This means even if an employer owns your invention, you retain the legal status of inventor on any patent.

Pennsylvania law provides significant protections for employee inventions under the Pennsylvania Uniform Trade Secrets Act (5 P.S. § 3904). This statute establishes a bright-line rule: employers cannot require employees to assign inventions made entirely on personal time using personal resources, regardless of what an employment contract states.

5 P.S. § 3904(c) specifically provides that an invention assignment agreement is void and unenforceable as to inventions that: (1) were developed entirely on the employee's own time; (2) were developed using the employee's own resources; (3) do not relate at all to the employer's business or work; and (4) do not result from work performed for the employer. This is stronger protection than most states offer. The statute reverses the burden: employers must affirmatively prove the invention is work-related; employees are not required to prove it is independent.

Pennsylvania recognizes written invention assignment agreements when they comply with statutory requirements. However, vague or overly broad assignment clauses may be unenforceable. Employers in Pennsylvania cannot use blanket assignments to claim all inventions an employee creates, even if made outside work. Remedies for wrongful invention claims include contract reformation, declaratory judgment, and potential damages for misappropriation of trade secrets under 5 P.S. § 3904 if the employee's invention is stolen.

Unlike California, which has very strong employee protections under California Labor Code § 2870, Pennsylvania's statute still allows employers to claim inventions that relate to the company's business, even if made on personal time, if they were developed using company resources or information obtained through employment. The key distinction is whether company resources or work-related knowledge was used.

Pennsylvania's invention assignment protections have important exceptions. Even if an invention was created on your personal time using personal resources, your employer may still claim ownership if: (1) the invention relates directly to the employer's business or work you performed; (2) the invention was developed using information, materials, or data you obtained through your employment; (3) the invention was developed using the employer's confidential information or trade secrets; or (4) you used the employer's equipment, even if repurposed for personal use.

Employers can enforce assignment agreements for inventions made during work hours or using company resources, even if the agreement is broadly written. However, the agreement must be enforceable under contract law—it cannot be unconscionable or obtained through fraud. Independent contractors may have stronger invention ownership protections than employees, depending on whether they are true contractors or misclassified employees.

If you are a software engineer, engineer, researcher, or other technical employee, presumptions may shift in the employer's favor if the invention relates to the company's industry. Patent law defenses also apply: even if an employer claims ownership, the patent cannot issue unless you are named as the inventor. Additionally, if you assigned the invention to a previous employer and then created the same or similar invention for a new employer, both employers may claim rights, creating a complex litigation scenario.

Trade secret protections are available only if information meets the statutory definition of a trade secret under 5 P.S. § 3902. If an invention is public knowledge or independently discoverable, trade secret protection fails. Furthermore, if an employee discloses an invention to the public or files a patent before the employer asserts ownership, the employer's rights may be lost or limited.

Step 1: Document the invention creation process thoroughly. Create dated records showing when you developed the invention, what personal resources you used (personal computer, personal time, home workspace), and whether you used any employer materials, equipment, or confidential information. Take screenshots, emails, and notes establishing the timeline. If the invention was created entirely outside work hours at home using personal equipment, document this explicitly. Save all contracts, employee handbooks, and assignment agreements your employer gave you, as these are critical to determining enforceability.

Step 2: Initiate an internal complaint process if feasible. Send a written letter to your employer (or HR) asserting your position on invention ownership, citing Pennsylvania law (5 P.S. § 3904). Request a written response acknowledging your rights or explaining their basis for claiming ownership. This letter creates a record and may prompt negotiation or clarification. Request that your employer identify the specific contract provision or legal basis for the ownership claim. Do not resign or escalate confrontation at this stage; keep the tone professional and fact-based.

Step 3: Consult a Pennsylvania employment attorney before filing any legal action. Pennsylvania allows both declaratory judgment actions (to establish you own the invention) and contract enforcement actions. If the employer has threatened to file a patent in their name, an attorney can file a counterclaim or defensive action. There is no government agency that mediates invention disputes; this must be resolved through civil court or negotiation. Your attorney will assess whether the invention qualifies for trade secret protection under 5 P.S. § 3904 and whether filing a patent application in your name is strategic.

Step 4: If negotiation fails, file a lawsuit in Pennsylvania state court (Court of Common Pleas in your county) seeking declaratory judgment that you own the invention, or breach of contract if the employer violated 5 P.S. § 3904. The lawsuit must be filed within 4 years of the breach (when the employer claimed ownership or prevented you from using the invention). Provide your documentation of when and how the invention was created, evidence of personal resource use, and evidence that it does not relate to the employer's business. The burden shifts to the employer under § 3904 to prove the invention is work-related.

Step 5: Expect discovery (exchange of documents and depositions) lasting 6-12 months. The employer will request your employment contract, emails, work product, and creation records. You will request the employer's business records, invention policies, and evidence of how the invention relates to their work. Settlement negotiations often occur during discovery. If the case goes to trial, a judge will apply 5 P.S. § 3904's statutory test. Consult a lawyer experienced in intellectual property or employment law, as this is a specialized area. If the invention is valuable, consider whether filing a provisional patent application in your name is advantageous before litigation.