Invention Assignment Laws in Virginia: Who Owns What You Create

Federal law does not restrict invention assignments. The Patent Act (35 U.S.C. § 101 et seq.) addresses patentability but does not limit an employer's contractual rights to employee inventions. The Copyright Act (17 U.S.C. § 201) contains a 'work-made-for-hire' doctrine that treats works created by employees within the scope of employment as employer-owned, but this applies primarily to copyrightable works, not patents or trade secrets. Federal courts enforce invention assignment clauses when they are clear, written, and agreed to by the employee. The Employment Retirement Income Security Act (ERISA) and other federal statutes do not address invention ownership. The practical effect is that absent a written agreement, federal law is ambiguous about who owns employee-created inventions. The Defend Trade Secrets Act (18 U.S.C. § 1836) addresses theft of trade secrets but does not limit assignment agreements. Most federal circuit courts follow the principle that an employee owns inventions by default unless there is a valid written assignment agreement.

Federal enforcement of invention assignment clauses is through contract law in federal courts, not through agency action. There is no federal agency comparable to state labor boards that enforces invention assignment disputes. Employees must pursue civil litigation in federal or state court to challenge the enforceability of an assignment agreement. The strength of an assignment clause in federal court depends on whether the employee had notice of the clause, the specificity of the language, and the circumstances of invention creation.

Virginia Code § 40.1-28.2 provides significant protections to employees that exceed federal law protections. The statute states that employers cannot require employees to assign inventions that are:

(1) Created entirely on the employee's own time, without using any employer equipment, supplies, facilities, or information; (2) Created without using any significant resources of the employer; and (3) Developed independently of the employer's business, products, research, or development.

This is substantially stronger than federal law, which allows employers to enforce broad assignment agreements with minimal limitations. Under Virginia law, even if an employee signed an invention assignment clause, that clause is unenforceable as to inventions meeting all three criteria above. Virginia Code § 40.1-28.1 also requires that employment contracts, including invention assignment provisions, be in writing and clearly communicated to the employee before or at the time of hire.

Virginia applies differently depending on when the invention was created. If an invention was created during employment on company time or using company resources and is related to the company's actual or anticipated business, the invention may be a work-made-for-hire, and the employer has a strong claim to ownership even without an assignment agreement. However, if the invention was created on personal time using personal resources and is unrelated to the employer's business, Virginia law protects the employee's ownership regardless of any written clause.

The state distinguishes between "inventions" broadly and "work product" or materials created as part of job duties. Inventions created as part of the employee's assigned job responsibilities are employer-owned as work-made-for-hire. Inventions created in the employee's spare time, even by a skilled engineer or scientist employed in the relevant field, are the employee's property if they were created independently of the employer's business and without company resources.

Virginia Code § 40.1-28.2 is enforceable only against employers, not in favor of them. An employee can bring a claim in Virginia state court if an employer violates the statute by attempting to claim ownership of a protected invention. Remedies include a declaration that the invention is the employee's property, damages, and attorney's fees in some cases. Virginia courts have recognized that the statute reflects public policy favoring employee inventors and independent innovation.

Virginia Code § 40.1-28.2 contains several important exceptions and limitations that narrow its protective scope. First, the statute does not apply to inventions that are work-made-for-hire under the federal Copyright Act, even if they were created on personal time, if they are copyrightable materials (such as software code or written documents) created by the employee in the course of employment.

Second, the statute does not prohibit assignment of inventions if the employee was informed in writing of the assignment requirement at the time of hire or at the time of signing the agreement, and the employee voluntarily signed the agreement. The statutory protections apply only when an employee attempts to avoid an assignment clause; if the employee knowingly and voluntarily agreed in writing, the courts will enforce the agreement even if the invention was created on personal time, provided the invention is not entirely unrelated to the employer's business and was created using some employer resources or information.

Third, the statute does not protect an employee's right to assign inventions to a third party without the employer's consent if the employee's job duties included inventing or developing products in the relevant field. In that case, the employer may have a claim to ownership based on shop rights or implied license, even if there was no written agreement.

Fourth, the statute does not override confidentiality obligations or trade secret protection. If an invention incorporates trade secrets or confidential information belonging to the employer, even if the employee created the invention on personal time, the employer may have rights to that information and may be able to prevent the employee from using it or disclosing it. The statute protects ownership of the invention itself, not the secrecy of underlying information.

Fifth, Virginia law applies only to inventions created by Virginia employees or inventions that have a connection to Virginia employment. If an employee was hired in another state and creates an invention there, Virginia's protective statute may not apply, and the law of the state where the work occurred may govern.

Sixth, the statute does not apply to inventions created by independent contractors or consultants, only employees. If the relationship is classified as independent contractor, the default rule is that the contractor owns the invention unless a written agreement provides otherwise.

Seventh, union employees or employees covered by a collective bargaining agreement may have different invention rights if the union contract addresses the issue. Collective bargaining agreements can modify statutory rights with the union's consent.

Eighth, Virginia law does not protect an employee from liability if the employee violates a non-compete or non-solicitation agreement while developing an invention. If an employee creates an invention in breach of a valid non-compete agreement, the invention may still be the employee's property under § 40.1-28.2, but the employee may be liable for breach of contract damages.

If you believe your employer is wrongfully claiming ownership of an invention you created in violation of Virginia Code § 40.1-28.2, follow these steps:

Step 1: Document Everything. Immediately create a detailed record of how and when the invention was created. Write down the date you conceived the idea, the dates you worked on it, whether you worked on company time or your own time, what company resources (if any) you used such as computers, software, lab equipment, or materials, and whether you used any company information or trade secrets. Save all evidence: personal notes, sketches, emails, laboratory notebooks, code repositories (GitHub, etc.), correspondence with colleagues, and draft documents. If the invention was created on personal devices or accounts (personal laptop, personal email, home office), preserve those records. Take screenshots of timestamps and metadata. If you developed the invention with others, document their involvement and whether they were company employees. Create a written narrative describing the genesis of the invention and how it relates or does not relate to your employer's business line.

Step 2: Identify the Employer's Claim and Written Agreement. Request a copy of any written invention assignment clause in your employment contract, employee handbook, or separate agreement you signed. Under Virginia Code § 40.1-28.1, any assignment clause must be in writing and clearly communicated. If your employer claims ownership without a written agreement, this is a strong defense under Virginia law. If you did sign an agreement, carefully review the language to determine what it actually covers. Many assignment agreements are narrowly drafted and apply only to inventions created on company time or using company resources. If the agreement is vague or overly broad, Virginia courts may not enforce it. Check whether the agreement contains any carve-out for inventions created on personal time using personal resources—many do. Make a list of which requirements of Virginia Code § 40.1-28.2 your invention satisfies: Was it created entirely on your own time? Did you use zero company resources? Is it unrelated to the employer's actual or reasonably anticipated business?

Step 3: Attempt Internal Resolution. Send a formal written letter to your employer (preferably your HR department and your manager's supervisor) stating that you believe the invention is your property under Virginia Code § 40.1-28.2 because it meets the statutory criteria. Include a summary of your evidence: when it was created, what resources were used, and how it relates (or does not relate) to the employer's business. Request a written response within 14 days. Do not accuse the employer of intentional wrongdoing; focus on the legal analysis. Keep a copy of this letter and any response. This step is important because it preserves evidence of your position and may lead to resolution without litigation. If the employer responds by acknowledging that the invention is yours, get that in writing and request a formal acknowledgment document. If the employer disputes your claim or refuses to respond, move to Step 4.

Step 4: File a Declaratory Judgment Action in Virginia Circuit Court. Because invention disputes are civil contract matters, Virginia does not have a dedicated administrative agency like the Department of Labor that handles these claims. You must file a civil lawsuit in the Virginia Circuit Court in the county where you work or reside, or where the employer is located. The appropriate claim is for declaratory judgment seeking a declaration that you own the invention and are not bound by the assignment agreement. You may also seek damages if the employer has taken action to prevent you from using the invention or has taken ownership of it. File a complaint that includes: (1) the facts of invention creation, (2) a copy of any written assignment agreement, (3) your argument that the invention meets all three criteria of Virginia Code § 40.1-28.2, or that the assignment agreement was unenforceable because it was not provided in writing, (4) a request for a declaration of ownership, and (5) a request for injunctive relief to prevent the employer from claiming or using the invention. The filing fee for a circuit court declaratory judgment action in Virginia is typically $100–$150. However, do not file until you have consulted with an attorney, as this step has significant cost and procedural complexity.

Step 5: Consult an Employment or Patent Attorney. Before filing a civil action, strongly consider consulting with an employment attorney licensed in Virginia or a patent attorney with Virginia experience. An employment attorney can evaluate whether your invention truly meets Virginia Code § 40.1-28.2's criteria, assess the strength of any written assignment agreement, and advise on whether litigation is worthwhile. If the invention has commercial value or you plan to patent it, consult a patent attorney to understand how the ownership dispute affects patentability and patent rights. Many Virginia attorneys offer free initial consultations. If you cannot afford an attorney, contact the Virginia State Bar's Lawyer Referral Service or a local legal aid organization, though legal aid typically handles employment cases only if there are wage-related claims (such as unpaid overtime). An attorney can negotiate with the employer on your behalf, potentially avoiding litigation. The cost of litigation varies widely—expect $5,000–$25,000 for a straightforward declaratory judgment case, and potentially much more if the case is contested and goes to trial. Some attorneys work on contingency for high-value inventions.