It is not unusual for an employment contract to contain a provision that states that any invention created by the employee during the employee’s employment is assigned to and is the property of the employer. For such an assignment to be enforceable in Illinois, the provision must comply with the Illinois Employee Patent Act (“Act”).
The Act specifically limits the types of inventions that are assignable to the employer. It provides:
A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee’s rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee’s own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this State and is to that extent void and unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection.
More importantly, if an employment agreement contains a provision assigning an employee’s invention to the employer, the Act requires the employer to provide the employee with a notice:
. . ., that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee’s own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.
If your company’s employment contracts require the employee to assign his or her rights to inventions to the company, the agreements should be reviewed and revised to conform to the Act. If the agreement does not contain the notice, it may be void and unenforceable as provided by the Act.