Invention Assignment Laws in Tennessee: Who Owns What You Create

Federal law does not directly regulate invention ownership between private employers and employees. Instead, federal patent law (35 U.S.C.) provides that an inventor is presumed to own a patent unless they have assigned it by written agreement. The Patent Cooperation Treaty and international agreements recognize employer ownership claims only where written assignments exist. The Defend Trade Secrets Act (18 U.S.C. § 1836) protects trade secrets but does not alter ownership of inventions themselves. However, if a company holds federal contracts (DOD, NASA, NSF), the Federal Acquisition Regulation (FAR) and Defense Federal Acquisition Regulation Supplement (DFARS) may impose statutory invention assignment requirements on contractors.

The EEOC and Department of Labor do not enforce invention ownership disputes—these are civil contract and patent matters handled by federal courts and the U.S. Patent and Trademark Office (USPTO). Most invention disputes between employers and employees arise under state contract law and patent law. Federal courts apply the law of the state where the employment contract was made or the work was performed.

Tennessee Code Annotated § 47-25-104 and § 47-25-107 govern the enforceability of invention assignment agreements. Under Tennessee law, an invention assignment clause is treated as a restrictive covenant and must satisfy the reasonableness test established in these statutes.

Tennessee's approach is significantly weaker than federal presumption law and much weaker than California's protective regime. Tennessee does not have a statutory presumption that employee inventions belong to the employee. Instead, the burden falls on the employee to prove that an invention assignment agreement is unreasonable or inapplicable. An agreement is enforceable if it is reasonable in: (1) temporal scope (how long the restriction lasts), (2) geographic scope, and (3) scope of restricted activity or information.

For invention assignments specifically, Tennessee courts examine whether the invention is: (a) developed during employment, (b) developed using company resources or time, (c) developed as part of the employee's job duties, or (d) related to the company's actual or demonstrable anticipated business. A written agreement is required for enforcement; oral invention assignment agreements are generally unenforceable.

Unlike California Labor Code § 2870, Tennessee has no statutory carve-out protecting employee-created inventions developed entirely on the employee's own time with personal resources. An overly broad assignment clause may be struck down in whole or in part, but Tennessee courts have not consistently protected off-hours inventions the way California does. The reasonableness test is applied on a case-by-case basis, and courts have upheld broad assignments where the invention relates to the company's business field.

Employers in Tennessee are not required by state law to provide notice of invention assignment rights, unlike some other states. The agreement must be presented and signed before enforcement, but no statutory notice requirement exists. Remedies for breach of an invention assignment include injunctive relief (stopping the employee from using the invention) and damages, but not statutory penalties.

Tennessee law provides several important exceptions and limitations to invention assignment claims. First, a written agreement is mandatory; oral invention assignment agreements cannot be enforced, even if the employee acknowledges the assignment verbally.

Second, the reasonableness requirement significantly limits overly broad claims. An agreement that purports to assign all inventions created by the employee at any time, in any field, with no geographic or temporal limitation will likely be struck down as unreasonable. Courts apply a balancing test weighing the employer's legitimate business interests against the employee's freedom to work and create.

Third, Tennessee recognizes a distinction between trade secrets and inventions. An invention assignment clause may be enforceable even if a non-compete clause in the same agreement is unenforceable, because invention assignments are analyzed separately under § 47-25-107. However, both are subject to the reasonableness test.

Fourth, shop rights may arise outside a written agreement. Under common law, if an employee uses company time and resources to develop an invention (even without a written assignment), the employer may acquire a non-exclusive, royalty-free license to use the invention (a shop right). This is distinct from ownership, but it limits the employee's exclusive rights.

Fifth, employee inventors may retain rights to improvements or modifications made after employment ends, unless the agreement explicitly extends to post-employment inventions. Post-employment restrictions are scrutinized heavily for reasonableness and temporal scope.

Sixth, unionized employees may have collective bargaining agreements that supersede or modify invention assignment clauses. If a union contract addresses invention ownership, it may prevail over individual assignment agreements.

Seventh, at-will employment status does not override invention assignment agreements. Even an at-will employee can be held to a written invention assignment contract, and conversely, an employee cannot be terminated solely for refusing to assign unrelated personal inventions.

Follow these concrete steps if you believe your Tennessee employer is wrongfully claiming ownership of your invention:

**Step 1: Document Everything.** Immediately create a record of when you developed the invention, whether you used company time or resources, what your job duties were, and whether your written employment contract or offer letter contains an invention assignment clause. Save all emails, meeting notes, project documentation, notebooks, code repositories, or prototypes showing your development timeline and resource usage. Photograph or photograph-backup any physical inventions or documents. Note the specific date you created or first conceived of the invention. Record the names and dates of any conversations with managers about the invention. This documentation is critical because you will need to prove either that the invention falls outside the assignment agreement's scope or that the agreement itself is unreasonable.

**Step 2: Review the Written Agreement and Consult Internal Resources.** Locate your written employment contract, employee handbook, confidentiality agreement, or any other document you signed that may contain an invention assignment clause. Read it word-for-word and identify the exact language claiming ownership. If the clause is vague or extremely broad (e.g., "all inventions created by employee"), note this weakness. Contact your company's HR department in writing (email is preferable for a record) and ask for clarification: Does the company claim ownership of this specific invention? On what basis? Request a written response. If the company claims ownership, ask to see the assignment agreement in writing. Many employers do not have signed agreements for every employee, and the absence of a signed document is a strong defense. Do not sign anything new without consulting an attorney first.

**Step 3: Determine the Correct Forum and File a Claim.** Invention assignment disputes in Tennessee are **civil contract and patent matters**, not employment law matters handled by government agencies. There is no Tennessee Department of Labor enforcement mechanism or state employment board for invention disputes. Instead, you must file a lawsuit in Tennessee state court or federal court.

If the dispute involves patent infringement (the employer claims the patent as its own), you may also file at the United States Patent and Trademark Office (USPTO) to challenge the inventorship listed on the patent. This requires a declaration of inventorship correcting the patent record. Go to **www.uspto.gov** and search "Request for Correction of Inventorship." Alternatively, file an inter partes reexamination or post-grant review if applicable.

For a contract dispute in Tennessee state court, file a complaint for breach of contract or declaratory judgment in the Circuit Court of the county where you worked or where the contract was signed. The filing deadline is **six years from the date of breach** (when the employer wrongfully claimed ownership or refused to acknowledge your rights). Consult a Tennessee-licensed attorney experienced in patent and contract law before filing. The attorney should evaluate whether the invention assignment agreement is enforceable under § 47-25-104 (reasonableness test) and whether the invention falls within its scope.

**Step 4: Expect the Discovery and Litigation Process.** After filing suit, both sides will exchange documents and information (discovery phase). This typically lasts 6–12 months. The employer will request all documentation of how you created the invention, whether you used company resources, and what your job duties were. They will take your deposition (sworn testimony). You will have the right to depose the employer's managers and request internal documents about the invention's development and the company's business.

Tennessee courts will apply the reasonableness test to determine if the invention assignment agreement is enforceable. If enforceable, the court will determine whether your specific invention falls within the agreement's scope. This determination hinges on facts: Was the invention developed during working hours? Was it related to your job duties? Did you use company equipment, facilities, or trade secrets? If the answer to most questions is "no," you have a strong defense.

The process typically takes 12–24 months from filing to resolution, depending on court docket and complexity. Be prepared for the employer to argue that the invention is related to the company's business, even if you developed it on your own time.

**Step 5: Consult an Attorney Early.** Do not attempt to negotiate or litigate this alone. Hire a Tennessee-licensed attorney specializing in **intellectual property law** (patents and trade secrets) or **employment law with IP experience**. Initial consultations with many IP attorneys are free. An attorney can:

— Evaluate the enforceability of your invention assignment agreement under § 47-25-104 — Assess your documentary evidence and likelihood of success — Advise whether filing at the USPTO (if a patent is involved) or in state court is the better strategy — Negotiate a settlement with the employer's counsel — Represent you in litigation if necessary

If you cannot afford an attorney, contact the **Tennessee Justice Center** (www.tjc.org) or **Legal Aid Society of Middle Tennessee and the Cumberlands** (www.las.org) to inquire about low-cost or pro bono representation. However, IP disputes are complex, and finding free representation may be difficult.