Provides that employment provisions that require an employee to assign certain inventions that are made on the employee's own time and which do not use the employer's equipment, supplies, facilities, or trade secret information shall be unenforceable.
NEW YORK STATE ASSEMBLY MEMORANDUM IN SUPPORT OF LEGISLATION submitted in accordance with Assembly Rule III, Sec 1(f)
BILL NUMBER: A5295
SPONSOR: Bores TITLE OF BILL:
An act to amend the labor law, in relation to inventions made by employ-
ees
PURPOSE OR GENERAL IDEA OF BILL:
Amends the labor law by adding a new section 203-f which specifies that
IP/an invention developed entirely on an employee's own time, without
:trade secrets, belongs to the employee.
SUMMARY OF PROVISIONS:
Section 1 amens the labor law to add a section 203-f. This amendment
renders any employment agreement unenforceable if it requires employees
to assign the rights to inventions developed using the employee's own
property and time. It specifies exemption for IP created with actual or
demonstrably anticipated research of the employer, or from work
performed by the employee in the course of their work for the employer.
JUSTIFICATION:
Overly broad contracts can rob employees of their intellectual property.
Research has shown that stronger IP protections for workers both protect
employees' and increase incentives for innovation. Moreover, economists
have linked better IP protection for employees to more efficient firms
and increased economic growth. The reasons are clear; these clauses
prevent employees from trying new ideas that can one day turn into new
businesses. Other employees leave for jurisdictions with these
protections, like California.
California implemented this protection in 2011, and it has not impeded
the growth of its tech secLor. This law brings overdue protections to
New Yorkers.
PRIOR LEGISLATIVE HISTORY:
This is a new bill.
FISCAL IMPLICATIONS FOR STATE AND LOCAL GOVERNMENTS:
None.
EFFECTIVE DATE:
This act shall take effect immediately.
STATE OF NEW YORK
________________________________________________________________________
5295
2023-2024 Regular Sessions
IN ASSEMBLY
March 7, 2023
___________
Introduced by M. of A. BORES -- read once and referred to the Committee
on Labor
AN ACT to amend the labor law, in relation to inventions made by employ-
ees
The People of the State of New York, represented in Senate and Assem-bly, do enact as follows:
1 Section 1. The labor law is amended by adding a new section 203-f to
2 read as follows:
3 § 203-f. Inventions made by employees. 1. Any provision in an employ-
4 ment agreement which provides that an employee shall assign, or offer to
5 assign, any of his or her rights in an invention to his or her employer
6 shall not apply to an invention that the employee developed entirely on
7 his or her own time without using the employer's equipment, supplies,
8 facilities, or trade secret information except for those inventions that
9 either:
10 (a) relate at the time of conception or reduction to practice of the
11 invention to the employer's business, or actual or demonstrably antic-
12 ipated research or development of the employer; or
13 (b) result from any work performed by the employee for the employer.
14 2. To the extent a provision in an employment agreement purports to
15 require an employee to assign an invention otherwise excluded from being
16 required to be assigned under subdivision one of this section, such
17 provision is against the public policy of this state and shall be unen-
18 forceable.
19 § 2. This act shall take effect immediately.
EXPLANATION--Matter in italics (underscored) is new; matter in brackets
[] is old law to be omitted.
LBD08936-01-3
