90 WASHINGTON JOURNAL OF LAW, TECHNOLOGY & ARTS [VOL. 8:2
provides an explicit definition of invention.
48
In contrast, the
Nevada statute applies only to patentable inventions and trade
secrets.
49
The California statute at issue in Mattel, Cal. Lab. Code
§ 2870, is typical of the Minnesota-type laws. Section 2870 states
that any pre-invention assignment agreement “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.” However, the statute contains
exceptions allowing assignment of such inventions that either:
(1) Relate at the time of conception or reduction to practice
of the invention to the employer’s business, or actual or
demonstrably anticipated research or development of the
employer; or
(2) Result from any work performed by the employee for
the employer.
50
California courts have interpreted these provisions as operating
independently.
51
Thus, under the California statute, a plaintiff-
employer need only show either that a disputed invention: (1) was
made using employer time or resources; (2) relates to the
employer’s business or actual or demonstrably anticipated research
and development; or (3) resulted from work performed by the
employee for the employer.
52
The burden lies with the employee to
prove that a disputed invention is not assignable.
53
Other states’ statutes contain minor differences in language that
48
See UTAH CODE ANN. § 34-39-3 (using the term “any right or intellectual
property in or to an invention”). The Utah statute further defines “intellectual
property” as “any and all patents, trade secrets, know-how, technology,
confidential information, ideas, copyrights, trademarks, and service marks and
any and all rights, applications, and registrations relating to them.” U
TAH CODE
ANN. § 34-39-2(2).
49
See N
EV
.
R
EV
.
S
TAT
.
A
NN
.
§ 600.500 (West 2010).
50
CAL. LAB. CODE § 2870(a).
51
Applera II, 375 Fed.Appx at 17. Cadence Design Sys., Inc. v. Bhandari,
No. 07-00823, 2007 WL 3343085, at *5 n.4 (N.D. Cal. Nov. 8, 2007).
52
Cadence Design Sys., Inc. v. Bhandari, No. 07-00823, 2007 WL
3343085, at *5 n.4 (N.D. Cal. Nov. 8, 2007).
53
See, e.g., Cubic Corp. v. Marty, 185 Cal. App. 3d 438, 451 (Ct. App.
1986); see also N.C.
GEN. STAT. ANN. §§ 66-57.1 (West 2010).