The New York State Legislature passed Senate Bill 5640 / Assembly Bill 6829 on June 6, 2023, which, if the governor signs, would amend the Labor Law and add a new section 203-f, regulating the use and enforceability of invention assignment agreements. In a standard invention assignment agreement, the employee agrees to assign to the employer works (i.e., “inventions”) the employee creates during employment. Typically, these provisions encompass any type of work created during employment, from computer code to artwork and beyond. Invention assignment provisions are usually included within larger agreements entered into at the time an employee is hired (such as an employment agreement or confidentiality agreement) that govern an employee’s obligations to the employer, related to employer confidential information, among other subjects, and such an agreement would normally include a worksheet for disclosing any inventions belonging to the employee at the time of hire.
The bill would provide that invention assignment provisions “shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information,” unless the inventions: (a) relate to the employer’s business or “reasonably anticipated” research or development; or (b) result from work performed by the employee for the employer.
The bill would also render unenforceable any provision requiring that an employee assign to...
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