Can a District of Columbia employer require assignment of every invention?
There is no statutory ceiling, but there is a statutory wrinkle most no-statute jurisdictions lack. The District of Columbia has no employee-invention-assignment statute — nothing that voids the assignment of a true own-time, own-resource invention the way California Labor Code § 2870 does — so an assignment clause's reach is bounded by ordinary contract law and the federal patent and copyright overlay. The leading enforcement case is federal: the D.C. Circuit, applying District of Columbia contract law, enforced an assignment agreement the employee accepted by clicking an acknowledgment button, and held that software the employee built on his own time and equipment still had to be assigned because it related to the employer's actual business. Whether a post-employment trailing clause separately collides with the District's Ban on Non-Compete Agreements Act is an unsettled classification question taken up in the holdover section below.
The statutory silence is verifiable. The only employee-invention text in the D.C. Code is a public-sector incentive-award provision in the District's merit personnel system, which lets the District government pay its own employees capped cash awards for money-saving suggestions or inventions — a bonus rule for government workers, not an ownership or assignment statute for the private sector . There is no §2870-style carve-out, no employer-ownership statute, and no invention-specific ceiling on what a District employer may ask an employee to assign.
The federal baseline the contract operates against is the inventor-first premise restated in Stanford v. Roche: absent an effective assignment, rights in an invention belong to the person who conceived it .
The leading decision applying District of Columbia law is Apprio, Inc. v. Zaccari, decided by the U.S. Court of Appeals for the D.C. Circuit in 2024 — a federal court applying District contract law, since our review found no D.C. Court of Appeals decision on employee invention ownership. The court held that an employee who clicked an acknowledgment button for a proprietary-information-and-assignment agreement in the company's HR system formed a binding contract .
Apprio also shows how far a well-drafted clause reaches when no statute limits it. The agreement contained its own carve-out for inventions unrelated to the company's business — the kind of protection a §2870-style statute would impose by law — but the carve-out did not help the employee, because the software was related to the employer's actual business even though he created it on personal time with personal equipment .
In a statutory carve-out state, own-time development on personal equipment triggers a statutory test the employer cannot contract around; in the District, it triggers only whatever test the contract itself supplies. The agreement in Apprio also used belt-and-suspenders present-assignment wording, transferring title now while promising future cooperation .
“I hereby assign and agree to assign in the future”
The practical consequence is that a District employer can, in principle, contract for assignment more broadly than a California or Washington employer, and Apprio confirms that District contract law will enforce that breadth for inventions created during employment that relate to the business. The open limits are the ones discussed in the remaining sections: the inventor-first default that makes the employer's title only as good as the contract words, and the untested interaction between trailing clauses and the District's non-compete ban.
Sources for this answer
Case law · 2024-06-21
A.1 Apprio, Inc. v. ZaccariApprio, Inc. v. Zaccari — the D.C. Circuit applying District of Columbia contract law — holds that an employee's click-button acknowledgment of an assignment agreement created an enforceable contract requiring assignment of the software at issue.
We hold that Zaccari’s “acknowledgment” of the Agreement created an enforceable contract that requires Zaccari to assign his rights in the Updated Software to Apprio.
See Apprio, Inc. v. Zaccari, 104 F.4th 897 (D.C. Cir. 2024).
Case law · 2024-06-21
A.2 Apprio, Inc. v. ZaccariApprio holds that software created on the employee's own time and equipment was still covered by the assignment because it was related to the employer's actual business — so the agreement's own unrelated-inventions carve-out, the contractual analog of a §2870-style statute, failed on the related-to-business prong.
Even though Zaccari created the Updated Software on his own time and equipment, its purpose and function show that it is unquestionably related to Apprio’s actual “business, research [and] development” with DCMA.
See Apprio, Inc. v. Zaccari, 104 F.4th 897 (D.C. Cir. 2024).
Case law · 2024-06-21
A.5 Apprio, Inc. v. ZaccariThe agreement enforced in Apprio used belt-and-suspenders present-assignment wording — an immediate assignment plus a promise to assign in the future — the drafting pattern that avoids leaving the employer with only an equitable claim to later-created inventions.
I hereby assign and agree to assign in the future
See Apprio, Inc. v. Zaccari, 104 F.4th 897 (D.C. Cir. 2024).
Case law · 2011-06-06
A.4 Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular SystemsStanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor, the baseline against which any assignment clause is measured.
Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Primary law
A.3 D.C. Code § 1-619.02 (Incentive awards)D.C. Code § 1-619.02 — the only invention-related text in the D.C. Code — authorizes capped cash awards to District-government employees for money-saving suggestions or inventions; it is a public-sector bonus provision, not a private-sector invention-ownership or assignment statute.
in the case of suggestions or inventions resulting in a tangible monetary savings or increased revenues, an award shall be based on a percentage formula of the estimated savings or revenues, not to exceed $25,000
See D.C. Code § 1-619.02.
Must a District of Columbia employer notify the employee?
Not applicable. Because the District 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). The written-notice duties the District does impose come from the Ban on Non-Compete Agreements Act, and they attach to non-compete provisions and to workplace policies that use the Act's definitional exceptions — not to invention-assignment clauses as such.
There is nothing invention-specific 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; the District has enacted no such carve-out, so there is no statutory line for a notice to mark. That is why the entry is marked not applicable rather than a bare no: the question presupposes a statutory carve-out that the District does not have.
The closest the District comes to an invention-adjacent notice duty is a policy-disclosure rule in the non-compete ban. An employer whose workplace policy includes one or more of the exceptions to the Act's definition of a non-compete provision — the confidential-information exclusion is the one an employer intellectual-property or confidentiality policy would most plausibly rely on — must give employees a written copy of those provisions within 30 days of acceptance of employment and again whenever the policy changes . An employer confidentiality or invention policy that leans on the confidential-information exclusion arguably triggers this duty; the question is untested. The consequence of skipping the disclosure is monetary — $250 per employee per violation under the Act's relief-and-penalties section — not invalidation of the underlying provision, so this is a policy-disclosure rule, not a condition of assignment validity .
“shall provide a written copy of the provisions to an employee”
Separately, when a non-compete provision is proposed to a highly compensated employee, the Act requires the employer to provide the provision in writing at least 14 days before employment starts or before the employee must sign . That advance-writing duty matters to an invention-assignment drafter only in one scenario: if a post-employment trailing clause were classified as a non-compete provision — the unsettled question addressed in the holdover section below — the 14-day writing requirement would be part of the price of validity for highly compensated employees.
For a multistate employer the takeaway is that the District has no §2872-style invention notice to give and none to rely on: the validity of an assignment clause turns on the contract language and the general limits on restraints, while the Act's notice duties are tied to non-compete provisions and exception policies and are enforced with money, not with forfeiture of the clause.
Sources for this answer
Primary law · 2022-10-01
B.1 D.C. Code § 32-581.03a (Disclosures to employees)D.C. Code § 32-581.03a(a) requires an employer whose workplace policy includes one or more of the exceptions to the definition of a non-compete provision to give employees a written copy of those provisions within 30 days of acceptance of employment and on any policy change — the closest the District comes to an invention-adjacent notice duty.
An employer with a workplace policy that includes one or more of the exceptions to the definition of non-compete provision, as detailed in § 32-581.01(15) , shall provide a written copy of the provisions to an employee: (1) Within 30 days after the employee's acceptance of employment with the employer
See D.C. Code § 32-581.03a(a).
Primary law · 2022-10-01
B.2 D.C. Code § 32-581.03 (Limitations on non-compete provisions for highly compensated employees)D.C. Code § 32-581.03(a)(2) requires that a non-compete provision proposed to a highly compensated employee be provided in writing at least 14 days before employment begins or before the employee must execute the agreement.
The employer shall provide the non-compete provision to the employee in writing: (A) At least 14 days before the individual commences employment for the employer
See D.C. Code § 32-581.03(a)(2).
Primary law · 2022-10-01
B.3 D.C. Code § 32-581.04 (Relief and penalties)D.C. Code § 32-581.04(d)(4) — the Act's relief-and-penalties section, not a notice section — makes an employer that violates the § 32-581.03a disclosure duty liable for $250 in monetary relief to each employee for each violation, so the disclosure rule is enforced with money rather than by invalidating the underlying provision.
An employer that violates § 32-581.03a shall be liable for each violation to each employee subjected to the violation for monetary relief in an amount of $250.
See D.C. Code § 32-581.04(d)(4).
Who owns an invention by default in the District of Columbia?
The inventor, unless hired to invent. Absent a written assignment, the baseline under federal patent law — which governs who holds title to a patentable invention in the District as elsewhere — is that rights belong to the employee who conceived it, with a narrow exception for the employee hired to invent. A distinctive District feature is where the case law sits: our review found no D.C. Court of Appeals decision on employee invention ownership, so the on-point rulings come from federal courts sitting in the District applying the federal defaults.
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 .
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 .
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; short of that, an employee who used the employer's time and materials may leave the employer with only an equitable shop right — a non-exclusive license to use the invention, not ownership of it .
The most vivid District-forum illustration of the what-was-the-employee-hired-to-do default is Roeslin v. District of Columbia, a federal district court decision applying federal copyright law — persuasive rather than binding authority, and a copyright case rather than a patent one. A D.C. Department of Employment Services labor economist taught himself to program and built a labor-statistics reporting system at home, on his own hours and his own computer. When the District claimed the software as a work made for hire, the court disagreed, because building software was not what he was employed to do.
“Plaintiff was hired as a labor economist, not as a computer programmer.”
The employee owned the copyright, and the District — which had kept using the system without an assignment — was held liable for $145,250 in damages . Roeslin is a no-agreement-in-place cautionary tale: with no written assignment, ownership tracked what the employee was hired to do, and the employer ended up paying to have used a system built for its own operations. Because the default favors the inventor and the District has no statute filling the gap, the dependable employer path is a written present-assignment clause that transfers title automatically on creation, rather than a future promise that leaves the employer with an equitable claim .
Sources for this answer
Case law · 2011-06-06
C.1 Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular SystemsStanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor.
Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Case law · 2011-06-06
C.3 Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular SystemsStanford v. Roche holds that although others may acquire an interest in an invention, that interest as a general rule must trace back to the inventor — so an employer takes title only through an assignment from the employee-inventor.
Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.
See Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
Case law · 1933-05-08
C.2 United States v. Dubilier Condenser Corp.United States v. Dubilier Condenser Corp. holds that an employee hired to make an invention who succeeds during the term of service is bound to assign the resulting patent to the employer.
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.
See United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).
Case law · 1995-04-07
C.4 Roeslin v. District of ColumbiaRoeslin v. District of Columbia — a federal district court applying federal copyright law — holds that a software system an employee built largely at home was not a work made for hire because it was not the type of work the employee was employed to perform, leaving ownership with the employee and the employer liable in damages.
The program was not the type of work plaintiff was employed to perform, nor was it incidental to his job duties.
See Roeslin v. District of Columbia, 921 F. Supp. 793 (D.D.C. 1995).
Case law · 1995-04-07
C.5 Roeslin v. District of ColumbiaRoeslin holds that ownership by default tracked what the employee was hired to do — he was hired as a labor economist, not a programmer, so his self-taught software work fell outside the scope of his employment.
Plaintiff was hired as a labor economist, not as a computer programmer.
See Roeslin v. District of Columbia, 921 F. Supp. 793 (D.D.C. 1995).
Are trailing-assignment (holdover) clauses enforceable in the District of Columbia?
Unsettled — and in the District the question forks in two. Our review found no decision, local or federal, addressing a post-employment trailing invention-assignment clause, and the threshold question is one of classification under the Ban on Non-Compete Agreements Act. If a trailing clause functions as a non-compete provision under the Act's definition, it is void as a matter of law for covered employees in agreements entered into on or after October 1, 2022, and an employer that even attempts to enforce it owes each affected employee at least $1,500. If it is not a non-compete provision, it is an ordinary contract term judged under the Restatement reasonableness framework the D.C. Court of Appeals adopted in Ellis v. James V. Hurson Associates — with no decision applying that framework to an invention holdover . Neither branch has been tested.
The classification question starts with the Act's definition. A non-compete provision is defined functionally, as a term that stops an employee from working .
The text cuts against coverage: a pure ownership-allocation clause — one that assigns or presumes assignment of post-employment inventions — does not literally prohibit anyone from performing work for pay. But the Act's exclusion list cuts the other way. The definition expressly excludes sale-of-business restraints, during-employment anti-moonlighting terms, long-term incentives, and provisions that protect the employer's confidential or proprietary information — and nowhere excludes invention-assignment or intellectual-property-assignment clauses as such.
That definitional silence is the central open question for District invention-assignment drafting. A trailing clause anchored to the employer's confidential or proprietary information can plausibly shelter in the confidential-information exclusion; a field-of-business holdover — one that claims whatever the ex-employee invents in the employer's line of business, whether or not it draws on anything confidential — has no textual shelter, and if it operates in practice to keep the former employee from working in that field, it functions like the restraint the definition describes . No court has decided the question in either direction.
The stakes of the first branch are unusually high. For covered employees, a non-compete provision in an agreement entered into on or after October 1, 2022 is void as a matter of law , and the Act penalizes the attempt to use one, not just the loss on the merits: an employer that attempts to enforce a void provision owes each affected employee at least $1,500, rising to at least $3,000 for repeat violations . Even for highly compensated employees — those above a statutory compensation floor of $150,000 as enacted ($250,000 for medical specialists), indexed to inflation annually beginning in 2024 — a covered non-compete survives only if it specifies its functional scope and geography, keeps its term at or below 365 calendar days after separation (730 for medical specialists), and satisfies the advance-writing requirement discussed in the notice question above . A trailing invention-assignment clause does not naturally fit that mold. The ban is not retroactive: agreements entered into before October 1, 2022 remain governed by the common-law framework below .
“shall be void as a matter of law and unenforceable”
The second branch is the common law. In Ellis v. James V. Hurson Associates, Inc., the D.C. Court of Appeals adopted the Restatement (Second) of Contracts framework (§§ 186–188) for post-employment restraints .
Under the § 188(2) test as stated in Ellis, an ancillary restraint is unreasonably in restraint of trade in either of two situations .
Two caveats keep Ellis from doing more work than it can bear. It arose on appeal from a preliminary injunction — it is substantial-likelihood law, not a merits holding — and it expressly declined to decide whether the District follows a blue-pencil rule, so a court's willingness to narrow an overbroad restraint rather than refuse enforcement outright remains an open question in the District .
“injunction appeal decide whether or not to adopt a ‘blue pencil’ rule in this jurisdiction”
Applying the Restatement framework to an invention holdover is therefore a prediction, not a holding: a District court asked to enforce a clause sweeping in inventions conceived after separation would most likely ask whether the restraint is greater than needed to protect a legitimate interest — with the employer's trade secrets and confidential information the interest most likely to qualify — but no decision found in our review has run that analysis on a trailing assignment clause. What is distinctive about the District is the branch that comes first: before reasonableness is ever reached, the drafter has to survive an untested statutory classification whose downside is voidness plus per-employee liability for the attempt to enforce.
Sources for this answer
Primary law · 2022-10-01
D.4 D.C. Code § 32-581.01(15) (Definitions — non-compete provision)D.C. Code § 32-581.01(15) defines a non-compete provision functionally — a written-agreement or workplace-policy term that prohibits an employee from performing work for another for pay or from operating the employee's own business — and its exclusion list contains no invention-assignment or intellectual-property exception, so whether a trailing assignment clause is covered is an open question of statutory text.
a provision in a written agreement or a workplace policy that prohibits an employee from performing work for another for pay or from operating the employee's own business
See D.C. Code § 32-581.01(15).
Primary law · 2022-10-01
D.5 D.C. Code § 32-581.01(15)(B)(i) (confidential-information exclusion)D.C. Code § 32-581.01(15)(B)(i) excludes from the non-compete definition provisions that prohibit or restrict an employee from disclosing, using, selling, or accessing the employer's confidential or proprietary information — the exclusion a trailing invention-assignment clause anchored to confidential information would rely on.
Disclosing, using, selling, or accessing the employer's confidential employer information or proprietary employer information
See D.C. Code § 32-581.01(15)(B)(i).
Primary law · 2022-10-01
D.1 D.C. Code § 32-581.02 (Prohibition on non-compete provisions)D.C. Code § 32-581.02(a)(2) makes a non-compete provision in an agreement between a covered employee and an employer entered into on or after October 1, 2022 void as a matter of law and unenforceable — so if a trailing assignment clause is classified as a non-compete provision, it is void for covered employees, while pre-October 2022 agreements remain under the common law.
A non-compete provision that violates paragraph (1) of this subsection contained in an agreement between a covered employee and an employer that was entered into on or after October 1, 2022, shall be void as a matter of law and unenforceable.
See D.C. Code § 32-581.02(a)(2).
Primary law · 2022-10-01
D.2 D.C. Code § 32-581.04 (Relief and penalties)D.C. Code § 32-581.04(d)(2) makes an employer that attempts to enforce a void or unenforceable non-compete provision liable to each affected employee for at least $1,500 (at least $3,000 for subsequent violations) — the District penalizes the attempt, not just the loss, which raises the drafting stakes of the untested classification question.
An employer that attempts to enforce a non-compete provision that is unenforceable or void as provided in §§ 32-581.02(a)(2) and 32-581.03(a) shall be liable to each employee against whom the employer attempted to enforce the invalid non-compete provision for relief in an amount not less than $1,500.
See D.C. Code § 32-581.04(d)(2)(A).
Primary law · 2022-10-01
D.6 D.C. Code § 32-581.03 (Limitations on non-compete provisions for highly compensated employees)D.C. Code § 32-581.03(a) permits a non-compete provision for a highly compensated employee only if it specifies functional scope and geography and keeps its term at or below 365 calendar days after separation (730 for medical specialists) — a mold a trailing invention-assignment clause does not naturally fit.
a term of non-competition that does not exceed 365 calendar days from the date the employee separates from employment with the employer
See D.C. Code § 32-581.03(a)(1)(C)(i).
Case law · 1989-10-25
D.3 Ellis v. James V. Hurson Associates, Inc.Ellis v. James V. Hurson Associates supports the rule that, in the absence of well-developed local doctrine, the D.C. Court of Appeals adopted the Restatement (Second) of Contracts exposition (§§ 186-188) for judging post-employment restraints — the framework that would govern a trailing clause held not to be a statutory non-compete provision.
In the absence of any current well-developed doctrine in our jurisdiction, we adopt this modern and authoritative exposition insofar as it applies to the case before us.
See Ellis v. James V. Hurson Associates, Inc., 565 A.2d 615 (D.C. 1989).
Case law · 1989-10-25
D.7 Ellis v. James V. Hurson Associates, Inc.Ellis, adopting Restatement (Second) of Contracts § 188(2), states the test that an ancillary restraint is unreasonably in restraint of trade if it is greater than needed to protect the promisee's legitimate interest or if that need is outweighed by the hardship to the promisor and the likely injury to the public.
(a) the restraint is greater than is needed to protect the promisee’s legitimate interest, or (b) the promisee’s need is outweighed by the hardship to the promisor and the likely injury to the public.
See Ellis v. James V. Hurson Associates, Inc., 565 A.2d 615 (D.C. 1989) (adopting Restatement (Second) of Contracts § 188(2)).
Case law · 1989-10-25
D.8 Ellis v. James V. Hurson Associates, Inc.Ellis — decided in a preliminary-injunction posture — expressly reserved whether the District of Columbia follows a blue-pencil rule, so judicial narrowing of an overbroad restraint cannot be assumed in the District.
injunction appeal decide whether or not to adopt a “blue pencil” rule in this jurisdiction
See Ellis v. James V. Hurson Associates, Inc., 565 A.2d 615 (D.C. 1989).
Case law · 2024-06-21
D.9 Apprio, Inc. v. ZaccariThe agreement enforced in Apprio used belt-and-suspenders present-assignment wording — an immediate assignment plus a promise to assign in the future — the drafting pattern that passes title to during-employment inventions without relying on a contested trailing clause.
I hereby assign and agree to assign in the future
See Apprio, Inc. v. Zaccari, 104 F.4th 897 (D.C. Cir. 2024).
Because no District court has classified a trailing invention-assignment clause under the Ban on Non-Compete Agreements Act, draft as if the classification could go either way. Anchor any post-employment assignment or presumption-of-assignment language to the employer's confidential or proprietary information, so the clause sits within the Act's express exclusion for confidential-information restrictions rather than resting on an exclusion list that never mentions invention assignment . Avoid field-of-business holdovers untethered to confidential information: if a court later holds such a clause to be a covered non-compete provision, it is void for covered employees and the attempt to enforce it costs at least $1,500 per affected employee. Capture during-employment inventions with present-assignment wording that passes title immediately, so the employer's rights do not depend on a contested trailing clause . And keep any surviving trailing clause narrow and short, because the D.C. Court of Appeals has expressly reserved whether an overbroad restraint can be judicially narrowed, so an overbroad clause may fall entirely rather than be trimmed .