Can a Hawaii employer require assignment of every invention?
There is no invention-specific statutory ceiling. Hawaii has no employee-invention-assignment statute — nothing that voids an assignment of a true own-time, own-resource invention — and the one bill that would have created a California-style carve-out, 2008 House Bill 2911, died without passage. But Hawaii is not a blank slate for aggressive drafting: HRS § 480-4 makes every contract in restraint of trade in the State illegal by default, so an assignment clause that operates as a post-employment restraint must clear that statute, not just ordinary contract law.
The statutory silence is verifiable. Hawaii's employment chapters (HRS chapters 377 and 378), its antitrust chapter (chapter 480), and its trade-secret chapter (chapter 482B) contain no invention-, patent-, or intellectual-property-assignment provision — no own-time carve-out, no voiding rule, no notice formality. A Hawaii employer therefore starts from contract law, not a § 2870-style statutory limit on what an assignment promise may capture.
The legislature considered and declined exactly that model. House Bill 2911, introduced in 2008, would have added an employees' inventions part to chapter 378, making unenforceable any assignment of an invention “developed entirely on the employee's own time without using the employer's equipment, supplies, facilities, or trade secret information”, subject to exceptions modeled on California Labor Code § 2870, and its findings expressly cited California's approach . The bill died without passage — only the introduced version exists in the session archive, and today's chapter 378 contains no such part — so the carve-out is legislative history, not law.
What Hawaii does have is a restraint-of-trade statute with real teeth. Under HRS § 480-4(a), “Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce in the State, or in any section of this State is illegal.” An assignment clause confined to inventions made on the job reads as an ordinary property transfer, but the broader the clause sweeps — especially into inventions conceived after employment ends — the more it starts to function as a post-employment restraint that would have to be justified under that framework, developed under the trailing-clause question below .
The practical consequence is that a Hawaii 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 and no notice formality conditions enforceability. But that breadth is not free: the wider the clause, the more it invites characterization as a restraint of trade under a statute whose default rule is illegality.
Sources for this answer
Primary law
A.1 H.B. 2911, 24th Leg. (Haw. 2008)House Bill 2911 (2008) would have added a California-style own-time carve-out for employee inventions to HRS chapter 378; it died without passage, so Hawaii has no statutory limit on what an invention-assignment clause may capture.
developed entirely on the employee's own time without using the employer's equipment, supplies, facilities, or trade secret information
See H.B. 2911, 24th Leg., Reg. Sess. (Haw. 2008) (not enacted).
Primary law
A.2 HRS § 480-4HRS § 480-4(a) makes every contract in restraint of trade or commerce in Hawaii illegal by default — the statutory framework an overbroad assignment clause would have to clear if it operates as a post-employment restraint.
Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce in the State, or in any section of this State is illegal.
See Haw. Rev. Stat. § 480-4(a).
Must a Hawaii employer notify the employee?
Not applicable. Because Hawaii has no invention-assignment statute, there is no statutory carve-out to notify the employee about and no notice formality of the kind California imposes under Labor Code § 2872 or Washington imposes under RCW 49.44.140(3). The only written-notice duty Hawaii ever drafted was in the 2008 bill that died without passage: HB 2911 would have required every assignment provision to include written notification of the proposed own-time carve-out .
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; Hawaii 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 Hawaii does not have.
The legislature drafted — and dropped — exactly that mechanism. HB 2911's proposed subsection (d) provided that “Any employment agreement that contains a provision requiring an employee to assign or offer to assign any of the employee's rights in any invention to the employer shall include written notification to the employee of subsection (a).” The bill was never enacted, so the notice duty it described never came into force .
For a multistate employer the takeaway is the inverse of the notice states: a Hawaii 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 on the contract language and the general limits on restraints, not on any statutory notice or disclosure formality.
Sources for this answer
Primary law
B.1 H.B. 2911, 24th Leg. (Haw. 2008)House Bill 2911 (2008) proposed the only employee-notice duty Hawaii has ever drafted for invention assignments — a written notification of the bill's own-time carve-out — and it died without passage, so no notice requirement exists.
Any employment agreement that contains a provision requiring an employee to assign or offer to assign any of the employee's rights in any invention to the employer shall include written notification to the employee of subsection (a).
See H.B. 2911, 24th Leg., Reg. Sess. (Haw. 2008) (not enacted).
Who owns an invention by default in Hawaii?
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 Hawaii as elsewhere — is that rights belong to the employee who conceived it. The narrow exception is the employee hired to invent, whose resulting invention the employer may claim, and short of ownership the employer may hold only an equitable shop right. Our review found no Hawaii decision addressing employee-invention ownership at all, so nothing state-specific displaces that baseline.
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, where the employee is neither hired to invent nor bound by a written assignment but has used the employer's time, tools, and materials, the employer's remedy under Dubilier is only an equitable shop right — a non-exclusive license to use the invention, not ownership of it. These federal common-law doctrines would arrive in Hawaii unglossed: our review found no Hawaii appellate decision applying the shop-right or hired-to-invent doctrines, or otherwise deciding an employee-invention ownership dispute.
Hawaii law does add one practical reason the written agreement matters. Without an assignment, an employer's main fallback against a departing inventor is trade-secret law, and Hawaii's Uniform Trade Secrets Act displaces overlapping non-contract theories — in BlueEarth Biofuels, LLC v. Hawaiian Electric Co., the Hawaii Supreme Court, adopting the standard from Hauck Manufacturing Co. v. Astec Industries, held that “if proof of a non-UTSA claim would also simultaneously establish a claim for misappropriation of trade secrets, it is preempted irrespective of whatever surplus elements or proof were necessary to establish it” — while the statute expressly preserves “Contractual remedies, whether or not based upon misappropriation of a trade secret”. Because ownership starts with the inventor and contract claims are the remedies that survive, the dependable path for a Hawaii 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.
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
C.4 BlueEarth Biofuels, LLC v. Hawaiian Electric Co.BlueEarth Biofuels, adopting and quoting the Hauck Manufacturing same-proof standard, holds that Hawaii's Uniform Trade Secrets Act preempts non-contract claims whose proof would simultaneously establish trade-secret misappropriation — leaving contract claims, including invention-assignment agreements, as the surviving vehicle.
if proof of a non-UTSA claim would also simultaneously establish a claim for misappropriation of trade secrets, it is preempted irrespective of whatever surplus elements or proof were necessary to establish it
See BlueEarth Biofuels, LLC v. Hawaiian Elec. Co., 123 Haw. 314, 235 P.3d 310 (2010) (quoting Hauck Mfg. Co. v. Astec Indus., Inc., 375 F. Supp. 2d 649, 658 (E.D. Tenn. 2004)).
Primary law
C.5 HRS § 482B-8HRS § 482B-8(b)(1) expressly preserves contractual remedies from trade-secret-act displacement, whether or not based on misappropriation — the statutory reason a written assignment agreement remains enforceable alongside Hawaii's trade-secret regime.
Contractual remedies, whether or not based upon misappropriation of a trade secret
See Haw. Rev. Stat. § 482B-8(b)(1).
Are trailing-assignment (holdover) clauses enforceable in Hawaii?
Unsettled — but the framework a Hawaii court would most likely reach for is statutory, not just common law. No Hawaii decision found in our review addresses a trailing invention-assignment clause, and whether a court would classify one as a restraint of trade at all is undecided. If it did, HRS § 480-4 supplies the test: subsection (a) makes contracts in restraint of trade illegal by default, subsection (c) saves covenants only when ancillary to a legitimate purpose, and the Hawaii Supreme Court has held that even a covenant reasonable under the Technicolor, Inc. v. Traeger factors is unenforceable without such a purpose — and that restricting competition is not one.
Two gaps define the Hawaii picture. First, there is no invention statute, so nothing caps the duration of a post-employment trailing assignment. Second, our review found no Hawaii decision testing an invention-holdover clause under any standard, so everything below is a prediction about how existing restraint law would apply — flagged as untested, not settled. What makes Hawaii unusual among no-statute states is that the restraint law waiting for such a clause is itself statutory, and it starts from illegality: “Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce in the State, or in any section of this State is illegal.”
Subsection (c) then saves specific restrictive covenants, but only when “ancillary to a legitimate purpose not violative of this chapter” and not substantially anticompetitive . A trailing invention assignment is not on the subsection (c) list, but that is not fatal: in Technicolor, Inc. v. Traeger, the Hawaii Supreme Court held the list non-exclusive, so an unlisted restraint is analyzed under the rule of reason rather than condemned automatically .
Technicolor also supplies the reasonableness test, adopting a formulation from a Columbia Law Review article by Goldschmid: a court will generally find a restrictive covenant unreasonable, and therefore invalid, if “it is greater than required for the protection of the person for whose benefit it is imposed”, if “it imposes undue hardship on the person restricted”, or if “its benefit to the covenantee is outweighed by injury to the public” . Applying that test in 7's Enterprises, Inc. v. Del Rosario, the court treated trade secrets, confidential information, and special customer relationships as the paradigm protectable interests that can support a covenant's reasonableness .
Reasonableness alone is not enough. In Prudential Locations, LLC v. Gagnon — a 2022 real-estate brokerage noncompete case, not an invention case — the Hawaii Supreme Court added an ancillarity gate in front of the reasonableness test .
Among its numbered holdings, the court stated that “restricting competition is not a legitimate ancillary purpose, as HRS § 480-4(a) prohibits contracts in restraint of trade or commerce in the State” . Carried over to a holdover clause, that gate matters: a trailing assignment justified as keeping a former employee's future work away from competitors fails at the threshold, while one tethered to protecting the employer's trade secrets and confidential information has the strongest footing — that purpose is also exactly the scope of the one employee covenant subsection (c) itself blesses, the (c)(4) safe harbor for a time-limited covenant not to use the employer's trade secrets in competition .
For technology employers there is a further statutory cliff — narrower than it is sometimes described. The 2015 Act 158 amendment, HRS § 480-4(d), provides: “Except as provided in subsection (c)(4), it shall be prohibited to include a noncompete clause or a nonsolicit clause in any employment contract relating to an employee of a technology business. The clause shall be void and of no force and effect.” In enacting it, the legislature relied on findings that “embracing employee mobility is a superior strategy for nurturing an innovation-based economy”. But subsection (d) defines its terms narrowly: a noncompete clause is one that prohibits an employee from “working in a specific geographic area for a specific period of time” after leaving, and a nonsolicit clause reaches only clauses that prohibit “soliciting employees of the employer” . A trailing assignment clause does not literally prohibit working anywhere, so it is not facially within subsection (d). Whether a court would treat an aggressive holdover clause as a functional noncompete for a technology-business employee is untested: no Hawaii decision found in our review has applied subsection (d) to an invention-assignment clause, and the one Hawaii Supreme Court case discussing the provision, Prudential Locations, involved a real-estate brokerage covenant. The stakes of that characterization are high, because subsection (d) voids a covered clause outright, and our review found no Hawaii appellate authority either adopting or rejecting a judicial power to narrow an overbroad covenant — so a clause held within the ban would more likely fall entirely than be trimmed.
Hawaii also attaches a distinctive cost to guessing wrong. Under HRS § 607-14.9, “In a civil action which involves the interpretation or enforcement of an agreement or alleged agreement which purportedly restricts an employee from competing with an employer, or former employer, or working for a competitor of an employer or former employer, any employee or former employee who prevails shall be awarded reasonable attorneys' fees and costs.” The shift runs one way — a prevailing employer gets nothing under it — and whether an invention-holdover dispute involves an agreement that purportedly restricts competing is uncharacterized in the case law found in our review, so the exposure is best treated as live rather than remote .
The legislative direction of travel points the same way. Senate Bill 1161, introduced in the 2025 session but not enacted, would extend the subsection (d) ban to restaurant and retail-store employees, and its findings credit the 2015 technology ban with measurable employee gains: “A 2017 study published by the United States Census Bureau Center for Economic Studies found that as a result of this ban, job mobility and new‑hire wages in the State increased by eleven per cent and four per cent, respectively.” The bill is not law and may never become law, but it signals continued legislative hostility to post-employment restraints .
Putting the pieces together: a short trailing clause tied to inventions derived from the employer's trade secrets or confidential information probably survives, because it tracks the (c)(4) safe harbor's scope, serves a legitimate ancillary purpose under Prudential Locations, and is the kind of restraint the Traeger factors were built to sustain. A broad clause claiming every invention a former employee conceives for months or years after departure is at meaningful risk of being an illegal restraint under subsection (a) with no reformation backstop found in our review — but the invention-specific application of all of this remains undecided.
Sources for this answer
Primary law
D.1 HRS § 480-4HRS § 480-4(a) supplies the statutory default — every contract in restraint of trade or commerce in Hawaii is illegal — that a post-employment trailing-assignment clause would have to overcome if characterized as a restraint.
Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce in the State, or in any section of this State is illegal.
See Haw. Rev. Stat. § 480-4(a).
Primary law
D.4 HRS § 480-4HRS § 480-4(c) makes restrictive covenants lawful only when ancillary to a legitimate purpose not violative of chapter 480 and not substantially anticompetitive — the statutory condition any restraint-functioning holdover clause would have to satisfy.
ancillary to a legitimate purpose not violative of this chapter, unless the effect thereof may be substantially to lessen competition or to tend to create a monopoly in any line of commerce in any section of the State
See Haw. Rev. Stat. § 480-4(c).
Case law · 1976-06-17
D.5 Technicolor, Inc. v. TraegerTechnicolor, Inc. v. Traeger holds that the covenants enumerated in HRS § 480-4(c) are not exclusive — the holding that lets an unlisted restraint, such as a trailing invention assignment, be analyzed under the rule of reason rather than condemned automatically.
Our understanding of the above committee report is that the restrictive covenants and agreements enumerated under § 480-4(c) were not meant to be exclusive in their respective fields.
See Technicolor, Inc. v. Traeger, 57 Haw. 113, 551 P.2d 163 (1976).
Case law · 1976-06-17
D.6 Technicolor, Inc. v. TraegerTechnicolor, Inc. v. Traeger, quoting Goldschmid's law-review formulation, states the three-factor test under which Hawaii courts find a restrictive covenant unreasonable — overbreadth relative to the protected interest, undue hardship on the person restricted, or public injury outweighing the benefit.
(i) it is greater than required for the protection of the person for whose benefit it is imposed; (ii) it imposes undue hardship on the person restricted; or(iii) its benefit to the covenantee is outweighed by injury to the public.
See Technicolor, Inc. v. Traeger, 57 Haw. 113, 551 P.2d 163 (1976) (quoting Goldschmid, Antitrust's Neglected Stepchild, 73 Colum. L. Rev. 1193, 1196 (1973)).
Case law · 2006-09-13
D.7 7's Enterprises, Inc. v. Del Rosario7's Enterprises, Inc. v. Del Rosario, applying the Traeger reasonableness test, holds that specialized training is a legitimate interest when combined with protectable business interests such as trade secrets, confidential information, or special customer relationships — the interest catalogue a trade-secret-tethered holdover clause would draw on.
Hence, as a matter of law, we hold that training that provides skills beyond those of a general nature is a legitimate interest which may be considered in weighing the reasonableness of a non-competition covenant, when combined with other factors weighing in favor of a protectable business interest such as trade secrets, confidential information, or special customer relationships.
See 7's Enterprises, Inc. v. Del Rosario, 111 Haw. 484, 143 P.3d 23 (2006).
Case law · 2022-02-17
D.2 Prudential Locations, LLC v. GagnonPrudential Locations, LLC v. Gagnon holds that even a restrictive covenant satisfying the Traeger three-factor reasonableness test is unenforceable unless ancillary to a legitimate purpose not violative of chapter 480 — the threshold gate a holdover clause would face before any reasonableness analysis.
Even if a restrictive covenant otherwise satisfies the Traeger three-factor reasonableness test, it is unenforceable unless it is ancillary to a legitimate purpose not violative of Chapter 480.
See Prudential Locations, LLC v. Gagnon, 150 Haw. 470, 506 P.3d 134 (2022).
Case law · 2022-04-01
D.3 Prudential Locations, LLC v. Gagnon (amended opinion)Prudential Locations, LLC v. Gagnon holds, among its numbered holdings, that restricting competition is not a legitimate ancillary purpose because HRS § 480-4(a) prohibits contracts in restraint of trade — so a holdover clause justified as suppressing a former employee's competition fails at the threshold.
restricting competition is not a legitimate ancillary purpose, as HRS § 480-4(a) prohibits contracts in restraint of trade or commerce in the State
See Prudential Locations, LLC v. Gagnon, 151 Haw. 136, 509 P.3d 1099 (2022) (amended opinion).
Case law · 2022-04-01
D.10 Prudential Locations, LLC v. Gagnon (amended opinion)Prudential Locations, LLC v. Gagnon quotes the 2015 Act 158 legislative findings that embracing employee mobility is a superior strategy for nurturing an innovation-based economy — the legislative purpose behind the technology-business restraint ban in HRS § 480-4(d).
academic studies have concluded that embracing employee mobility is a superior strategy for nurturing an innovation-based economy
See Prudential Locations, LLC v. Gagnon, 151 Haw. 136, 509 P.3d 1099 (2022) (amended opinion) (quoting 2015 Haw. Sess. Laws Act 158, § 1).
Primary law
D.8 HRS § 480-4HRS § 480-4(c)(4) is the one employee covenant the statute expressly blesses — a time-limited covenant not to use the employer's trade secrets in competition — marking the scope within which a trade-secret-tethered holdover clause has its strongest statutory footing.
A covenant or agreement by an employee or agent not to use the trade secrets of the employer or principal in competition with the employee's or agent's employer or principal, during the term of the agency or thereafter, or after the termination of employment, within such time as may be reasonably necessary for the protection of the employer or principal, without imposing undue hardship on the employee or agent.
See Haw. Rev. Stat. § 480-4(c)(4).
Primary law
D.9 HRS § 480-4HRS § 480-4(d), added by 2015 Act 158, voids noncompete and nonsolicit clauses in technology-business employment contracts outright — void and of no force and effect — leaving no room for judicial narrowing of a clause held within the ban.
Except as provided in subsection (c)(4), it shall be prohibited to include a noncompete clause or a nonsolicit clause in any employment contract relating to an employee of a technology business. The clause shall be void and of no force and effect.
See Haw. Rev. Stat. § 480-4(d).
Primary law
D.11 HRS § 480-4HRS § 480-4(d) defines noncompete clause as a geographic-and-temporal work prohibition and nonsolicit clause as employee-poaching only — narrow definitions a trailing invention-assignment clause does not facially satisfy, so the tech-business voidness rule reaches it only under an untested functional-noncompete characterization.
"Noncompete clause" means a clause in an employment contract that prohibits an employee from working in a specific geographic area for a specific period of time after leaving employment with the employer. "Nonsolicit clause" means a clause in an employment contract that prohibits an employee from soliciting employees of the employer after leaving employment with the employer.
See Haw. Rev. Stat. § 480-4(d).
Primary law
D.12 HRS § 607-14.9HRS § 607-14.9 awards reasonable attorneys' fees and costs to a prevailing employee — but not a prevailing employer — in any action involving an agreement that purportedly restricts an employee from competing, a one-way enforcement-cost deterrent that may reach an invention-holdover dispute so characterized.
In a civil action which involves the interpretation or enforcement of an agreement or alleged agreement which purportedly restricts an employee from competing with an employer, or former employer, or working for a competitor of an employer or former employer, any employee or former employee who prevails shall be awarded reasonable attorneys' fees and costs.
See Haw. Rev. Stat. § 607-14.9.
Primary law
D.13 S.B. 1161, 33d Leg. (Haw. 2025)Senate Bill 1161 (2025, introduced but not enacted) would extend the HRS § 480-4(d) restraint ban to restaurant and retail-store employees, citing Census Bureau findings crediting the 2015 technology ban with increased job mobility and new-hire wages — a signal of continued legislative hostility to post-employment restraints.
A 2017 study published by the United States Census Bureau Center for Economic Studies found that as a result of this ban, job mobility and new‑hire wages in the State increased by eleven per cent and four per cent, respectively.
See S.B. 1161, 33d Leg., Reg. Sess. (Haw. 2025) (not enacted).
Tether the trailing clause to what Hawaii law already protects. HRS § 480-4(c)(4) blesses exactly one employee covenant — a covenant not to use the employer's trade secrets in competition, limited to the time reasonably necessary and without undue hardship — so a holdover assignment confined to inventions derived from the employer's trade secrets or confidential information, with a short trailing period, tracks the statutory safe harbor and serves a legitimate ancillary purpose rather than the competition-restricting purpose the Hawaii Supreme Court has held illegitimate. For employees of a technology business, also avoid drafting that operates as a work prohibition tied to geography and time: HRS § 480-4(d) does not facially cover an assignment clause, but a clause a court characterized as a functional noncompete would be void and of no force and effect, with no narrowing to fall back on .
Price the fee shift before suing to enforce a holdover clause. Under HRS § 607-14.9, a prevailing employee or former employee in an action involving an agreement that purportedly restricts competing is awarded reasonable attorneys' fees and costs — and the statute gives a prevailing employer nothing. No Hawaii decision found in our review says whether an invention-holdover dispute is such an action, so an employer should treat the one-way fee exposure as live when deciding whether to litigate an aggressive clause .