# Employee Invention Assignment in Alabama[^about] Alabama has no employee-invention-assignment statute, so an assignment clause is bounded only by ordinary contract law, the common-law default rules, and the federal patent and copyright overlay — not a California-style own-time carve-out or notice requirement. Absent a written assignment the inventor owns under the federal baseline (no Alabama appellate decision found in our review addresses the default), the Supreme Court of Alabama has treated a broad contractual invention-ownership clause as operative, and a post-employment holdover clause's enforceability is unsettled against the Restrictive Covenant Act's anti-restraint backdrop. ## Can an Alabama employer require assignment of every invention? {#statutory-carve-out} **Short answer.** There is no statutory ceiling. Unlike California or Washington, Alabama has no employee-invention-assignment statute — nothing that voids an assignment of a true own-time, own-resource invention — so an assignment clause's reach is bounded only by ordinary contract law, the common-law inventor-owns default, and the federal patent and copyright overlay. The Supreme Court of Alabama has treated a broad contractual invention-ownership clause as an operative contract term, and the baseline any such clause operates against is that rights in an invention belong to the inventor [^gilley-clause-operative][^stanford-baseline]. Because there is no statute on point, the limits come from general principles rather than a legislative carve-out. A full-text review of the Code of Alabama 1975 surfaces no employee-invention-, patent-, or intellectual-property-assignment provision; the employment-adjacent statutes in Title 8 are the Restrictive Covenant Act (Ala. Code §§ 8-1-190 to 8-1-197) and the Alabama Trade Secrets Act (Ala. Code §§ 8-27-1 to 8-27-6), and neither addresses what an invention-assignment clause may capture. An Alabama employer therefore starts from contract law, not a § 2870-style statutory ceiling on what an assignment promise may reach. The closest Alabama Supreme Court authority is *Gilley v. Southern Research Institute*. The court was not asked to decide who owns an employee invention by default — the case litigated only the employee's compensation under the employer's royalty-sharing policy — but it took the employment contract's broad invention-ownership clause as the operative source of the employer's rights [^gilley-clause-operative]. "When he was hired by SRI in 1979, Gilley executed a contract acknowledging that any ‘improvements, inventions and discoveries’ made by him during the tenure of his employment would ‘be the sole and exclusive property of [SRI].’"[^gilley-clause-operative] The substantive default that Alabama contract law operates against is the federal patent premise restated in *Stanford v. Roche*: absent an effective assignment, rights in an invention belong to the person who conceived it [^stanford-baseline]. "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor."[^stanford-baseline] The practical consequence is that an Alabama employer can, in principle, contract for assignment more broadly than a California or Washington employer, because no statute carves out own-time inventions from the reach of the clause. But that breadth is not unlimited: an assignment clause is still an ordinary contract term, subject to general contract-law defenses, and to the extent it operates as a restraint on the former employee it runs into Alabama's anti-restraint regime discussed below. There is simply no statutory own-time/own-resource safe harbor for the employee to invoke and no statutory ceiling for the drafter to code around. ## Must an Alabama employer notify the employee? {#employee-notice} **Short answer.** Not applicable. Because Alabama has no invention-assignment statute, there is no statutory carve-out to notify the employee about and no notice requirement of the kind California imposes under Labor Code § 2872 or Washington imposes under RCW 49.44.140(3). What Alabama enforces instead is contractual: invention-ownership obligations arise from the terms of the agreement itself [^gilley-contract-basis]. There is nothing to give notice of. A notice requirement exists in California and Washington precisely to alert the employee to a statutory own-time carve-out that limits the assignment; Alabama has enacted no such carve-out, so there is no statutory line for a notice to mark. This is why the entry is marked not applicable rather than a bare no: the question presupposes a statutory carve-out that Alabama does not have. Where an Alabama employee owes invention-ownership obligations, they come from the contract, not a statute. In *Gilley v. Southern Research Institute*, the Supreme Court of Alabama resolved an employee-invention compensation dispute entirely on the employment contract and the employer's policy documents, treating the contractual ownership clause as the source of the employer's rights [^gilley-contract-basis]. "When he was hired by SRI in 1979, Gilley executed a contract acknowledging that any ‘improvements, inventions and discoveries’ made by him during the tenure of his employment would ‘be the sole and exclusive property of [SRI].’"[^gilley-contract-basis] For a multistate employer the takeaway is the inverse of the notice states: an Alabama employer neither has to give a § 2872-style notice nor can rely on one to cure an overbroad clause. The enforceability of the assignment turns entirely on the contract language and the general limits on restraints, not on any statutory notice or disclosure formality. ## Who owns an invention by default in Alabama? {#default-ownership} **Short answer.** The inventor, unless hired to invent — as a prediction from the federal baseline. No Alabama appellate decision found in our review articulates the hired-to-invent or shop-right doctrines, so the default in Alabama rests on the premise of federal patent law that rights in an invention belong to the employee who conceived it, subject to the narrow exception for an employee hired to invent [^stanford-inventor][^dubilier-hired-to-invent]. *Stanford v. Roche* anchors the default. The Supreme Court held that even the Bayh-Dole Act did not displace the long-standing rule that an invention belongs to its inventor, treating that premise as the baseline against which any assignment is measured [^stanford-inventor]. "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor."[^stanford-inventor] Because ownership starts with the inventor, an employer's title is derivative — it exists only if and to the extent the employee assigned it. Any third-party interest must trace back to that inventor-grantor [^stanford-traceback]. "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor."[^stanford-traceback] The principal exception is the employee hired to invent. Under *United States v. Dubilier Condenser Corp.*, an employee engaged to make a particular invention who succeeds during the term of service must assign the resulting patent to the employer [^dubilier-hired-to-invent]. "One employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained."[^dubilier-hired-to-invent] Short of that, where the employee is neither hired to invent nor bound by a written assignment but has used the employer's time, tools, and materials to reach a concrete result, the employer's remedy under *Dubilier* is only an equitable shop right — a non-exclusive license to use the invention, not ownership of it. One caveat on the Alabama picture deserves emphasis: because our review found no Alabama appellate decision applying either doctrine, the answer here is a prediction of how an Alabama court would rule from the shared federal baseline, not the holding of an Alabama case. That is one more reason the dependable path for an Alabama employer is a written present-assignment (*hereby assigns*) clause that transfers legal title automatically on conception, rather than a future promise to assign that leaves the employer with a mere equitable claim. ## Are trailing-assignment (holdover) clauses enforceable in Alabama? {#holdover-clause-limit} **Short answer.** Unsettled. No Alabama decision found in our review addresses a trailing clause reaching inventions first conceived after employment ends, and there is no statutory temporal cap because there is no invention-assignment statute at all. What Alabama does have is a strong general anti-restraint regime — the Restrictive Covenant Act voids every contract restraining anyone from exercising a lawful profession unless a statutory exception applies — so a court asked to police an aggressive holdover clause would most likely reach for that framework, but whether a trailing assignment even counts as a restraint under the Act is itself undecided [^ala-8-1-190-void][^devoe-protectable-interest]. Two gaps define the Alabama picture. First, there is no statute on invention assignments: nothing caps the duration of a post-employment trailing assignment or otherwise limits what such a clause may reach. Second, our review found no Alabama decision applying the state's restraint-of-trade limits to an invention-holdover clause, so the invention-specific application of those limits is genuinely open rather than settled. The statutory backdrop is the Restrictive Covenant Act, effective January 1, 2016, which opens with a broad prohibition [^ala-8-1-190-void]. "Every contract by which anyone is restrained from exercising a lawful profession, trade, or business of any kind otherwise than is provided by this section is to that extent void."[^ala-8-1-190-void] Subsection (b) of § 8-1-190 then allows six enumerated contract types formed to preserve a protectable interest — non-hire agreements, exclusive-dealing arrangements, sale-of-business covenants, employee non-competes (two years or less presumed reasonable), customer non-solicits (18 months presumed reasonable), and dissolution agreements. A trailing invention assignment is not among them. So the threshold question — undecided in Alabama — is whether such a clause restrains the exercise of a lawful profession within the meaning of subsection (a) at all. If it is not, the Act simply does not speak to it; if it is, it does not fit neatly into the exception list, and the Act's duration presumptions, which attach to the enumerated covenant types, have not been extended to invention holdovers by any authority found in our review. The stakes of that classification are written into the Act itself: an overbroad restraint within the exceptions may be reformed, while a restraint outside the exceptions may be voided entirely [^ala-8-1-193-reform]. "If a contractually specified restraint is overly broad or unreasonable in its duration, a court may void the restraint in part and reform it to preserve the protectable interest or interests. If a contractually specified restraint does not fall within the limited exceptions set out in subsection (b) of Section 8-1-190, a court may void the restraint in its entirety."[^ala-8-1-193-reform] The common-law framework a court would bring to that analysis comes from *DeVoe v. Cheatham*: Alabama courts will not enforce a negative covenant arising out of employment unless the employer has a protectable interest, the restriction is reasonably related to that interest, the restriction is reasonable in time and place, and the restriction imposes no undue hardship [^devoe-protectable-interest]. "In order to have a protectable interest, the employer must possess ‘a substantial right in its business sufficiently unique to warrant the type of protection contemplated by [a] noncompetition agreement.’"[^devoe-protectable-interest] A currency note on *DeVoe*: it construed former Ala. Code § 8-1-1, which the Restrictive Covenant Act repealed and replaced for agreements signed on or after January 1, 2016. The protectable-interest concept at the heart of *DeVoe* carries forward — the Act itself conditions its exceptions on preserving a protectable interest — so *DeVoe* remains the canonical Alabama articulation of the framework, but no decision found in our review has re-run that framework, under either the old statute or the Act, for a trailing invention-assignment clause. Extending these principles to holdover assignments is therefore a prediction, not a holding. An Alabama court asked to enforce a clause sweeping in inventions an ex-employee conceives after leaving would most likely ask whether the clause protects a genuine protectable interest — trade secrets or confidential information the ex-employee carries out the door — and whether its reach is reasonable, rather than applying any invention-specific rule. Out-of-state authority that has voided open-ended post-employment invention assignments applies other states' law and is at most analogous; it is not Alabama law and should not be treated as controlling here. The safe reading is that an overbroad trailer clause is at meaningful risk in Alabama — either as a void restraint outside the Act's exceptions or as an unreasonable one within them — but the precise standard for invention holdovers has not been decided. > [!NOTE] > **Practice note.** > > Do not assume an Alabama employee works like a California or Washington one. There is no invention-assignment statute here, so there is no statutory carve-out to rely on and no notice safe harbor — the validity of the assignment turns entirely on the contract language, which Alabama's courts treat as the operative source of the employer's rights [^gilley-clause-operative-practice]. Draft with present-assignment (*hereby assigns*) language so title passes automatically rather than resting on a future promise, and remember that ownership starts with the inventor, so an employer's rights are only as good as the words that transfer them [^stanford-traceback-practice]. Keep any trailing or holdover assignment narrow, short, and tied to the employer's trade secrets or confidential information, because its enforceability is unsettled in Alabama and a clause treated as a restraint outside the Restrictive Covenant Act's exceptions risks being voided outright [^ala-8-1-190-void]. [^about]: By Steven Obiajulu, J.D. Published by [openagreements.org](https://openagreements.org). Last reviewed 2026-07-02. License: CC BY 4.0. Steven Obiajulu, J.D. is admitted in New York, not Alabama. This article synthesizes Alabama primary law and is not legal advice from a Alabama-admitted attorney. This article is for informational purposes only and does not create an attorney-client relationship. CC BY 4.0. Cite as Steven Obiajulu, *Employee Invention Assignment in Alabama*, OpenAgreements (last updated July 2, 2026), https://openagreements.org/practice-guides/invention-assignment/us/alabama. [^gilley-clause-operative]: **Gilley v. Southern Research Institute** — "When he was hired by SRI in 1979, Gilley executed a contract acknowledging that any ‘improvements, inventions and discoveries’ made by him during the tenure of his employment would ‘be the sole and exclusive property of [SRI].’" *Gilley v. S. Research Inst., 176 So. 3d 1214 (Ala. 2015).* [^stanford-baseline]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^gilley-contract-basis]: **Gilley v. Southern Research Institute** — "When he was hired by SRI in 1979, Gilley executed a contract acknowledging that any ‘improvements, inventions and discoveries’ made by him during the tenure of his employment would ‘be the sole and exclusive property of [SRI].’" *Gilley v. S. Research Inst., 176 So. 3d 1214 (Ala. 2015).* [^stanford-inventor]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^dubilier-hired-to-invent]: **United States v. Dubilier Condenser Corp.** — "One employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained." *United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).* [^stanford-traceback]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).* [^ala-8-1-190-void]: **Ala. Code § 8-1-190** — "Every contract by which anyone is restrained from exercising a lawful profession, trade, or business of any kind otherwise than is provided by this section is to that extent void." *Ala. Code § 8-1-190 (Act 2015-465, eff. Jan. 1, 2016).* [^devoe-protectable-interest]: **DeVoe v. Cheatham** — "In order to have a protectable interest, the employer must possess ‘a substantial right in its business sufficiently unique to warrant the type of protection contemplated by [a] noncompetition agreement.’" *DeVoe v. Cheatham, 413 So. 2d 1141 (Ala. 1982).* [^ala-8-1-193-reform]: **Ala. Code § 8-1-193** — "If a contractually specified restraint is overly broad or unreasonable in its duration, a court may void the restraint in part and reform it to preserve the protectable interest or interests. If a contractually specified restraint does not fall within the limited exceptions set out in subsection (b) of Section 8-1-190, a court may void the restraint in its entirety." *Ala. Code § 8-1-193 (Act 2015-465, eff. Jan. 1, 2016).* [^gilley-clause-operative-practice]: **Gilley v. Southern Research Institute** — "When he was hired by SRI in 1979, Gilley executed a contract acknowledging that any ‘improvements, inventions and discoveries’ made by him during the tenure of his employment would ‘be the sole and exclusive property of [SRI].’" *Gilley v. S. Research Inst., 176 So. 3d 1214 (Ala. 2015).* [^stanford-traceback-practice]: **Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems** — "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor." *Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).*