Can a Guam employer require assignment of every invention?
There is no employee-protective ceiling — Guam has no §2870-style statute voiding the assignment of a true own-time, own-resource invention — but Guam is not a bare no-statute jurisdiction either. Its 1970 Civil Code was copied from California's, and two of its provisions speak to employee-created property from opposite directions: 18 GCA § 55311 declares that everything an employee acquires by virtue of employment belongs to the employer, while 19 GCA § 31301 gives the author of any product of the mind, expressly including an invention, exclusive ownership. Neither provision has been construed for inventions in any Guam decision found in our review, so whether § 55311 operates as a partial employer-ownership rule for inventions is genuinely unsettled.
Start with what the Guam Code Annotated does and does not contain. Guam has enacted no employee-invention-assignment statute: the chapter governing service with employment (18 GCA chapter 55) contains no invention carve-out and no notice provision anywhere in its article on the obligations of employees, and the labor chapters of Title 22 contain no invention or intellectual-property provision at all. What chapter 55 does contain is a much older and much broader rule — § 55311, captioned Property Belonging to Employer — that sweeps in everything an employee acquires by virtue of the employment .
That text is not local drafting. It was carried into Guam's 1970 Civil Code as Guam Civil Code § 1985, a verbatim copy of California Civil Code § 1985 of 1872, later recodified as California Labor Code § 2860 — the same Field Code family that produced the employer-acquisition statutes of Montana and North Dakota. And Guam has a black-letter rule for statutes with that pedigree. In Island Eye Center, Inc. v. Lombard, quoting its earlier decision in Banes v. Superior Court, the Supreme Court of Guam restated the borrowed-statute doctrine .
Run § 55311 through that doorway and the employer-favoring reading loses much of its force. California has never used the parent statute to capture an employee invention: its employee-invention default was worked out at common law, and in Aero Bolt & Screw Co. of California v. Iaia a California appellate court denied an employer both title and a shop right in an employee's invention without so much as citing the employer-acquisition text — a negative inference, not a square construction, but the only California signal there is .
Guam's own code also supplies a counterweight. Title 19's products-of-the-mind article — another Field Code inheritance — vests ownership of an invention in its author .
So Guam sits between the familiar camps. It is not a carve-out jurisdiction — a Guam employer can, in principle, contract for assignment more broadly than a California or Washington employer, because no statute voids the overreach. And it is not a clean no-statute jurisdiction — § 55311 hovers over the analysis as a possible employer-acquisition default that no Guam court has tested against § 31301's inventor-first text in any decision found in our review. The uncertainty comes from ambiguous, never-construed statutory text, not from any conflict in decided cases. The practical limits on an aggressive clause are ordinary contract law and, for post-employment reach, Guam's restraint-of-trade ban (see the holdover question below).
Sources for this answer
Primary law
A.1 18 GCA § 55311PDF18 GCA § 55311, carried into Guam's 1970 Civil Code from California Civil Code § 1985 (later California Labor Code § 2860), makes everything an employee acquires by virtue of employment the employer's property except compensation due — a partial employer-acquisition statute that plausibly reaches inventions but never mentions them and has not been construed for one in any decision found in our review.
Everything which an employee acquires by virtue of his employment, except the compensation, if any, which is due to him from his employer, belongs to the latter whether acquired lawfully or unlawfully, or during or after the expiration of the term of his employment.
See 18 GCA § 55311.
Primary law
A.2 19 GCA § 31301PDF19 GCA § 31301, Guam's Field Code products-of-the-mind provision, gives the author of any product of the mind — expressly including an invention — exclusive ownership while it remains in the author's possession, an inventor-first statutory counterweight to § 55311's employer-acquisition rule.
The author of any product of the mind, whether it is an invention, or a composition in letters or art, or a design, with or without delineation, or other graphical representation, has an exclusive ownership therein, and in the representation or expression thereof, which continues so long as the product and the representations or expressions thereof made by him remain in his possession.
See 19 GCA § 31301.
Case law · 2020-12-31
A.3 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard, quoting Banes v. Superior Court, 2012 Guam 11, states Guam's borrowed-statute rule — California case law construing nearly identical parent statutes is persuasive absent a compelling reason to deviate — the interpretive bridge through which California's treatment of the parents of §§ 55311 and 88105 reaches Guam.
When Guam statutes are based on nearly identical California statutes, California case law is persuasive, absent any compelling reason to deviate from California's interpretation.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 1960-05-09
A.4 Aero Bolt & Screw Co. of Cal. v. IaiaAero Bolt & Screw Co. of Cal. v. Iaia states California's common-law rule that the mere employment relationship does not entitle the employer to the employee's invention — a decision that resolves employee-invention ownership without any reference to the employer-acquisition statute from which 18 GCA § 55311 was copied, supporting the negative inference that California has never read that text to defeat the inventor default.
It is well settled that the mere existence of the employer-employee relationship is not by itself sufficient to entitle the employer to partake of the benefits of the employee’s inventive genius.
See Aero Bolt & Screw Co. of Cal. v. Iaia, 180 Cal. App. 2d 728 (Cal. Ct. App. 1960).
Must a Guam employer notify the employee?
Not applicable. Because Guam 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 one Guam statute that touches employee acquisitions, 18 GCA § 55311, vests ownership language in the employer without conditioning anything on notice to, or disclosure by, anyone .
There is nothing to give notice of. Notice statutes exist to alert the employee to a statutory own-time carve-out that limits the assignment clause; Guam has enacted no such carve-out — chapter 55's article on the obligations of employees contains no notice or disclosure provision — so there is no statutory line for a notice to mark. That is why this entry is marked not applicable rather than a bare no: the question presupposes a statutory regime Guam does not have.
Nor does the employer-acquisition statute impose any procedural formality of its own. Its text operates unconditionally, without reference to any warning, acknowledgment, or disclosure .
The neighboring provision sometimes mistaken for a disclosure regime points the other way. 18 GCA § 55312 is an accounting-and-remittance rule — it obliges the employee to account to the employer and to give prompt notice of everything received for the employer's account; it imposes no invention-disclosure duty on either side and no employer notice obligation .
As a matter of drafting hygiene, a multistate confidential-information-and-invention-assignment agreement will often carry a §2872-style notice anyway, along with a prior-inventions schedule. In Guam that is portability, not compliance — the notice neither is required nor cures anything.
Sources for this answer
Primary law
B.1 18 GCA § 55311PDF18 GCA § 55311 operates unconditionally by its terms, without requiring any notice to or disclosure by the employee — and Guam has no invention-assignment statute, so no statutory notice regime of any kind exists.
Everything which an employee acquires by virtue of his employment, except the compensation, if any, which is due to him from his employer, belongs to the latter whether acquired lawfully or unlawfully, or during or after the expiration of the term of his employment.
See 18 GCA § 55311.
Primary law
B.2 18 GCA § 55312PDF18 GCA § 55312 is an employee accounting-and-remittance duty, not an invention-disclosure regime — it obliges the employee to account and give notice of what is received for the employer's account, and imposes no notice duty on the employer.
An employee must, on demand, render to his employer just accounts of all his transactions in the course of his service, as often as may be reasonable, and must, without demand, give prompt notice to his employer of everything which he receives for his account.
See 18 GCA § 55312.
Who owns an invention by default in Guam?
The employee, most likely — as an openly predictive answer. Our review found no Guam decision, in any court or posture, on employee-invention ownership, the shop right, hired-to-invent, or an invention-assignment clause. The prediction rests on three converging layers: the federal baseline that rights in an invention belong to the inventor, 19 GCA § 31301's own inventor-first text expressly covering an invention, and Guam's borrowed-statute rule, under which California's construction of the identical parent statutes is persuasive — and California has never read § 55311's parent to defeat the inventor default. The unreconciled tension with § 55311's employer-acquisition text is the reason this stays a prediction rather than settled law.
Guam is an unincorporated U.S. territory whose highest local court is the Supreme Court of Guam, and federal patent law applies there of its own force — so the federal starting point is as settled in Guam as anywhere. Stanford v. Roche restates the premise that has governed since the first Patent Act .
Against that baseline, the traditional doctrines allocate limited rights to the employer. Under United States v. Dubilier Condenser Corp., an employee hired to invent must assign the resulting patent , and an employee who used the employer's time, materials, and appliances owes the employer a shop right — a non-exclusive license, not ownership .
Guam's own statutory text points the same inventor-first direction. Unlike most states, Guam has a statute that speaks to inventions by name — the Field Code products-of-the-mind provision — and it vests ownership in the author .
The complication is § 55311. Read literally, its everything-acquired-by-virtue-of-employment text would hand an in-scope invention to the employer — displacing the inventor-first baseline — and no Guam decision found in our review has reconciled the two provisions in any intellectual-property dispute .
How would a Guam court break that tie? Not through a reception statute — Guam has none. 1 GCA § 700 adopts common-law rules of construction only, and its compiler comment says expressly that the section does not adopt substantive common law .
“this Section does not adopt substantive common law”
What Guam has instead — and it is stronger for this question — is the borrowed-statute doctrine: because §§ 55311 and 31301 are near-verbatim copies of California statutes, California case law construing the parents is persuasive .
And California's construction runs the employee's way. California worked out its employee-invention default at common law, and Aero Bolt & Screw Co. of California v. Iaia — decided without any reference to the employer-acquisition statute from which § 55311 was copied — denied the employer both title and a shop right despite the employment relationship, synthesizing the rule that the employer takes only where the employee was hired to invent or expressly agreed to assign.
On the shop right itself, the most analogous appellate authority in Guam's own circuit is Francklyn v. Guilford Packing Co., where the Ninth Circuit recognized a shop right that arose from the inventor inducing and assisting the use of his invention — acquiescence, not a classic employment analysis — and held the right personal and non-transferable .
The honest statement of Guam's default is therefore layered: the federal inventor-first baseline is binding; Guam's invention-specific statute points the same way; the borrowed California construction of the employer-acquisition text points the same way; and yet no Guam court has ever said any of this in an invention case found in our review. The drafting consequence is the one careful employers reach everywhere, only more urgent here: because the default is a prediction, a written present-assignment clause (hereby assigns) that transfers title automatically on conception is the dependable path, and relying on either statutory default is a litigation position, not a plan.
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 — the federal baseline that applies in Guam of its own force and that competes with 18 GCA § 55311's employer-acquisition text.
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 · 1933-05-08
C.4 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 — the hired-to-invent exception a Guam court would most likely consult, since our review found no Guam decision adopting it.
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 · 1933-05-08
C.5 United States v. Dubilier Condenser Corp.United States v. Dubilier Condenser Corp. states the shop-right rule — an employee who conceives and perfects an invention on the employer's time with the employer's materials owes the employer a non-exclusive right to practice it, not ownership; our review found no Guam decision applying the doctrine, so it operates here only as the federal framework a Guam court would most likely consult.
where a servant, during his hours of employment, working with his master's materials and appliances, conceives and perfects an invention for which he obtains a patent, he must accord his master a non-exclusive right to practice the invention.
See United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).
Primary law
C.2 19 GCA § 31301PDF19 GCA § 31301 vests exclusive ownership of any product of the mind — expressly including an invention — in its author, Guam's own inventor-first statutory text and one of the two never-construed provisions between which Guam's default ownership rule must be predicted.
The author of any product of the mind, whether it is an invention, or a composition in letters or art, or a design, with or without delineation, or other graphical representation, has an exclusive ownership therein, and in the representation or expression thereof, which continues so long as the product and the representations or expressions thereof made by him remain in his possession.
See 19 GCA § 31301.
Primary law
C.6 18 GCA § 55311PDF18 GCA § 55311's text vests everything an employee acquires by virtue of employment in the employer — an employer-favoring default that, if applied to inventions, would displace the inventor-first baseline; no decision found in our review reconciles it with 19 GCA § 31301.
Everything which an employee acquires by virtue of his employment, except the compensation, if any, which is due to him from his employer, belongs to the latter whether acquired lawfully or unlawfully, or during or after the expiration of the term of his employment.
See 18 GCA § 55311.
Primary law
C.7 1 GCA § 700PDF1 GCA § 700 adopts common-law rules of construction only — its compiler comment states that the section does not adopt substantive common law — so Guam has no reception statute, and the gap-filler for never-construed Civil Code provisions is the borrowed-statute doctrine rather than a common-law or Restatement cascade.
this Section does not adopt substantive common law
See 1 GCA § 700.
Case law · 2020-12-31
C.3 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard, quoting Banes v. Superior Court, 2012 Guam 11, applies Guam's borrowed-statute rule — California case law construing nearly identical parent statutes is persuasive — the doctrine through which California's inventor-favoring construction of § 55311's parent supplies Guam's predicted default.
When Guam statutes are based on nearly identical California statutes, California case law is persuasive, absent any compelling reason to deviate from California's interpretation.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 1960-05-09
C.8 Aero Bolt & Screw Co. of Cal. v. IaiaAero Bolt & Screw Co. of Cal. v. Iaia holds that the mere employment relationship does not entitle a California employer to the employee's invention — the employer there took neither title nor a shop right — a common-law decision containing no reference to the statute from which 18 GCA § 55311 was copied, so its force in Guam is the negative inference that California never read that text to capture inventions.
It is well settled that the mere existence of the employer-employee relationship is not by itself sufficient to entitle the employer to partake of the benefits of the employee’s inventive genius.
See Aero Bolt & Screw Co. of Cal. v. Iaia, 180 Cal. App. 2d 728 (Cal. Ct. App. 1960).
Case law · 1960-05-09
C.9 Aero Bolt & Screw Co. of Cal. v. IaiaAero Bolt & Screw Co. of Cal. v. Iaia synthesizes California's employee-invention assignment rules — the employer takes only where the employee was hired to invent or the employment contract required assignment — the construction a Guam court applying the borrowed-statute doctrine would find persuasive.
A synthesis of the rules relating to such assignments would be either (a) where the employee is hired to invent (i.e. has a duty to invent) or (b) where even though there was no duty to invent, that it was part of the employment contract that if there should be an invention, that the employee would assign the title thereof to the employer.
See Aero Bolt & Screw Co. of Cal. v. Iaia, 180 Cal. App. 2d 728 (Cal. Ct. App. 1960).
Case law · 1983-01-04
C.10 Francklyn v. Guilford Packing Co.Francklyn v. Guilford Packing Co., a Ninth Circuit decision, holds that a shop right — there arising from the inventor's acquiescence in the use of his invention rather than a classic employment analysis — is personal to the holder and cannot be assigned or transferred to a third person.
It is a well established principle that a shop right is personal to the employer; it cannot be assigned or transferred by contract to a third person.
See Francklyn v. Guilford Packing Co., 695 F.2d 1158 (9th Cir. 1983).
Are trailing-assignment (holdover) clauses enforceable in Guam?
Untested locally — and the governing framework is statutory voidness, not reasonableness. No Guam decision found in our review reaches a trailing invention-assignment clause. The statute such a clause would be tested under is 18 GCA § 88105, which voids, to that extent, every contract restraining anyone from exercising a lawful profession, trade, or business outside two narrow exceptions. Section 88105 is the verbatim twin of California Business and Professions Code § 16600, the Supreme Court of Guam adopted California's per-se employee-mobility reading and voided the post-employment restraint before it in Island Eye Center, Inc. v. Lombard, and the Federal Circuit — applying California law under the identical statute, persuasive here but not Guam law — has voided a post-employment invention-assignment clause outright in Whitewater West Industries, Ltd. v. Alleshouse.
The statutory text does the work .
The two statutory exceptions cover the sale of a business's goodwill and partnership dissolution — neither covers an employment invention clause. And unlike the reasonableness states, Guam does not weigh duration or geography: in Island Eye, the first case to construe the provision, the Supreme Court of Guam traced the statute to its California parent and adopted the California framework wholesale .
The court read the section as a per-se expression of employee-mobility policy and voided the 30-month post-employment covenant before it rather than narrowing it .
That is not a new posture. Decades earlier the Ninth Circuit applied the same statute in Shelton v. Guam Service Games and voided a Guam-wide covenant, treating the positive legislative declaration as overriding any common-law reasonableness argument .
What does that framework do to a trailing invention-assignment clause? The closest construction of the identical statutory text answers it. In Whitewater West Industries, Ltd. v. Alleshouse, the Federal Circuit, applying California law, held a post-employment invention-assignment provision void under § 16600 — the same section Island Eye treats as virtually identical to § 88105 — because it restrained the former employee's ability to work in his field .
The court reached that result even though California has an employee-protective invention statute the employer invoked as a savior — § 2870 could not rescue the clause . Guam has no § 2870 analogue at all, so there is not even a candidate safe harbor to argue about.
Two hedges keep this honest. First, Whitewater is a Federal Circuit decision applying California law — under Guam's borrowed-statute rule it is exactly the kind of authority a Guam court would consult, but it is persuasive, not binding, and whether a trailing assignment clause is a § 88105 restraint at all has never been decided by a Guam court in our review. Second, the Island Eye court moves incrementally: it expressly declined to decide even the facial validity of employee non-solicitation clauses, resolving that question on overbreadth grounds instead, so it might likewise look for a narrower ground before extending § 88105 to a modest, tethered tail .
The trade-secret backdrop reinforces the prediction rather than softening it. Guam has not adopted the Uniform Trade Secrets Act ; Island Eye filled the gap by adopting the criminal code's trade-secret definition for civil misappropriation claims ; and the court rejected the inevitable-disclosure doctrine precisely because it would let trade-secret law operate as a de facto restraint on a former employee . A court that polices even trade-secret doctrine for covert restraint effects is unlikely to smile on an untethered holdover clause — while a clause tied to the employer's actual trade secrets and confidential information looks far less like a restraint in the first place.
“While the majority of jurisdictions have adopted a UTSA analogue, see supra note 8, Guam has not.”
Sources for this answer
Primary law
D.1 18 GCA § 88105PDF18 GCA § 88105 voids, to that extent, every contract restraining anyone from exercising a lawful profession, trade, or business outside two narrow statutory exceptions — the verbatim Field Code twin of California Business and Professions Code § 16600 under which a post-employment trailing-assignment clause that operates as a restraint would be tested.
Every contract, by which anyone is restrained from exercising a lawful profession, trade, or business of any kind, otherwise than is provided in the next two sections, is to that extent void.
See 18 GCA § 88105.
Case law · 2020-12-31
D.4 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard traces 18 GCA § 88105 to former California Civil Code § 1673, since replaced by Business and Professions Code § 16600, and holds the two provisions virtually identical — the lineage that makes California's § 16600 case law, including its treatment of invention-assignment holdovers, persuasive in Guam.
Our statute is derived from California Civil Code section 1673, since replaced by California Business and Professions Code section 16600. Section 16600 is virtually identical to 18 GCA § 88105.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 2020-12-31
D.5 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard holds that § 88105 evidences a public policy for employee mobility and every citizen's right to pursue lawful employment — the per-se California reading, not a reasonableness test weighing duration or geography.
Therefore, we hold that section 88105 evidences public policy for employee mobility and every citizen's right to pursue lawful employment or enterprise of his or her choice.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 2020-12-31
D.2 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard voided the 30-month post-employment restraint before it as a violation of 18 GCA § 88105 rather than narrowing it — the outcome a holdover clause characterized as a restraint should expect in Guam.
These post-employment terms are undoubtedly a restraint of trade in violation of 18 GCA § 88105 and are to that extent void.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 1956-09-07
D.6 Shelton v. Guam Service GamesShelton v. Guam Service Games, the Ninth Circuit's early application of Guam's restraint statute, voided a Guam-wide covenant to that extent — the statute as written overrides common-law reasonableness arguments.
Since this agreement attempted to make the prohibition and restraint complete within the Territory of Guam, it is to that extent void.
See Shelton v. Guam Service Games, 239 F.2d 902 (9th Cir. 1956).
Case law · 2020-11-19
D.3 Whitewater West Industries, Ltd. v. AlleshouseWhitewater West Industries, Ltd. v. Alleshouse — a Federal Circuit decision applying California law, persuasive but not Guam law — holds a post-employment invention-assignment provision void under § 16600, the statute Island Eye treats as virtually identical to 18 GCA § 88105.
We reverse. In particular, we reverse the judgment of breach of contract because we hold that the assignment provision is void under California law.
See Whitewater West Indus., Ltd. v. Alleshouse, 981 F.3d 1045 (Fed. Cir. 2020).
Case law · 2020-11-19
D.7 Whitewater West Industries, Ltd. v. AlleshouseWhitewater West Industries, Ltd. v. Alleshouse concludes the trailing assignment provision is invalid under § 16600 even though the employer argued California Labor Code § 2870 saved it — and Guam has no § 2870 analogue at all, so no local safe harbor exists for an overreaching holdover.
Relying on those now-undisputed premises, we conclude that the assignment provision is invalid under § 16600
See Whitewater West Indus., Ltd. v. Alleshouse, 981 F.3d 1045 (Fed. Cir. 2020).
Case law · 2020-12-31
D.8 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard declined to adopt a bright-line rule on the facial validity of employee non-solicitation clauses, resolving the question on overbreadth grounds instead — the court's incrementalism is the reason extending § 88105 to a narrow, tethered holdover tail remains a prediction rather than a holding.
We decline to adopt a bright-line rule when the intricacies of the issue are not before the court on appeal.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 2020-12-31
D.9 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard confirms that Guam has not adopted a Uniform Trade Secrets Act analogue — the trade-secret backdrop against which a tethered holdover clause would be drafted.
While the majority of jurisdictions have adopted a UTSA analogue, see supra note 8, Guam has not.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 2020-12-31
D.10 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard adopts the trade-secret definition of 9 GCA § 43.10(f) — Guam's criminal code — as the definition for civil trade-secret-misappropriation claims, the protectable-information anchor a tethered trailing clause should be drafted around.
Therefore, we hold that the definition of trade secrets in 9 GCA § 43.10(f) is the definition of trade secrets for civil trade-secret-misappropriation claims.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Case law · 2020-12-31
D.11 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard rejects the inevitable-disclosure doctrine for trade-secret claims because it would operate as a covert post-employment restraint — the court polices doctrines used as proxy non-competes, which reinforces the prediction that an untethered holdover clause would be voided.
For all these reasons, we reject the inevitable disclosure doctrine to establish a claim of trade-secret misappropriation.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Primary law
D.12 18 GCA § 88105PDF18 GCA § 88105 voids a covered restraint to that extent — severance of the offending reach, with no statutory reasonableness test — so an untethered holdover clause characterized as a restraint falls rather than being trimmed.
Every contract, by which anyone is restrained from exercising a lawful profession, trade, or business of any kind, otherwise than is provided in the next two sections, is to that extent void.
See 18 GCA § 88105.
Case law · 2020-12-31
D.13 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard voided the post-employment restraint before it outright rather than reforming it, and left open whether blue-penciling an overbroad covenant is permissible at all — so reformation is no safe harbor for an overreaching trailing clause in Guam.
These post-employment terms are undoubtedly a restraint of trade in violation of 18 GCA § 88105 and are to that extent void.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Primary law
D.14 18 GCA § 55311PDF18 GCA § 55311's employer-acquisition text has not been construed for inventions in any decision found in our review and is in unresolved tension with 19 GCA § 31301's inventor-first rule — so neither statutory default is a dependable substitute for a written assignment.
Everything which an employee acquires by virtue of his employment, except the compensation, if any, which is due to him from his employer, belongs to the latter whether acquired lawfully or unlawfully, or during or after the expiration of the term of his employment.
See 18 GCA § 55311.
Case law · 2011-06-06
D.15 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 whatever default Guam's statutes supply, an employer's federal patent title still runs through a transfer 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 · 2020-12-31
D.16 Island Eye Ctr., Inc. v. LombardIsland Eye Ctr., Inc. v. Lombard, quoting Banes v. Superior Court, 2012 Guam 11, states the borrowed-statute rule under which every ownership prediction on this page runs through California case law — persuasive authority a Guam court can deviate from for a compelling reason, not a binding local holding.
When Guam statutes are based on nearly identical California statutes, California case law is persuasive, absent any compelling reason to deviate from California's interpretation.
See Island Eye Ctr., Inc. v. Lombard, 2020 Guam 32.
Because 18 GCA § 88105 voids a covered restraint outright — to that extent void means severance, not rewriting to a reasonable scope — tether any trailing-assignment clause to inventions conceived or reduced to practice during employment, or derived from the employer's trade secrets or confidential information, and keep any post-employment tail short and narrow. The Supreme Court of Guam voided the post-employment restraint in Island Eye rather than narrowing it and expressly left open whether blue-penciling is even permissible, so reformation is no safe harbor: an untethered holdover that sweeps in a former employee's future inventions functions as a de facto non-compete and risks being struck entirely.
Do not treat either of Guam's statutory defaults as a plan. No Guam decision found in our review has ever applied 18 GCA § 55311 or 19 GCA § 31301 to an invention, and the two provisions point in opposite directions, so relying on the employer-acquisition text as a self-executing assignment is a litigation position resting on never-construed law . Every prediction on this page also runs through Guam's borrowed-statute rule — California case law is persuasive, not binding, and a Guam court may deviate from it for a compelling reason . Federal patent title must in any event trace back to the inventor, so use a written present-assignment (hereby assigns) clause that transfers title automatically on conception rather than resting on a contested statutory default or a future promise to assign .