Keith Markel, Alana Mildner and Jessica Lipson Discuss NY Labor Law Amendment Concerning Employees’ Ownership of Inventions

Keith Markel, Alana R. Mildner and Jessica L. Lipson co-authored an article for Bloomberg Law entitled “Employees Now Own Their Off-the-Clock Inventions in New York. The article discussed a new amendment to New York Labor Law regarding inventions made by employees during the period of their employment, which “could lead to sticky questions in the current hybrid workplace environment about what counts as employer time and resources.”

The amendment states that provisions in employment agreements concerning the assignment of an employee’s rights in an invention to an employer are no longer valid – to the extent those inventions have been “developed entirely on his or her own time and without the use of the employer’s equipment, supplies, facilities, or trade secret information.”

Should employers try to obtain rights to employees’ inventions, the authors anticipate that “courts will be tasked with interpreting what it means for an invention to be created solely on an employee’s own time and without use of employer resources or trade secrets.” The lines are particularly blurred in the current hybrid work environment where many employees use the same electronic devices for both work and personal purposes, or work lengthy or irregular hours while working remotely, leading to questions of what constitutes an employee’s own time.

Further, “because many employees are exposed to confidential information while working for an employer, it may be difficult to prove whether an employee used an employer’s trade secret information in the process of conceiving of inventions,” they wrote.

The authors advised employers to ensure that future employment agreements, employee handbooks and other agreements with their employees do not contain language that unlawfully limits employees’ ownership of their separately conceived inventions, and that they revisit existing agreements to evaluate what inventions, if any, they may have attempted to obtain assignment of that are now against public policy.

Read the full article here.