{ "type": "practice-guide", "canonical": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky", "links": [ { "rel": "self", "href": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky.json", "type": "application/json" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky", "type": "text/html" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky/markdown", "type": "text/markdown" }, { "rel": "alternate", "href": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky/json", "type": "application/json" } ], "data": { "topic": "invention-assignment", "state": "kentucky", "frontmatter": { "title": "Employee Invention Assignment in Kentucky", "description": "Kentucky 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 unless hired to invent, with the employer holding at most a shop right to use the invention without royalties under the Dorton cases, and the enforceability of a post-employment holdover clause is unsettled — no Kentucky authority found in our review, and the one in-state federal holdover case applied North Carolina law by party agreement.", "state": "Kentucky", "lastReviewed": "2026-07-03", "license": "CC BY 4.0", "authors": [ "steven-obiajulu" ], "summary": { "bottomLine": "Kentucky 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 unless hired to invent, with the employer holding at most a shop right to use the invention without royalties under the Dorton cases, and the enforceability of a post-employment holdover clause is unsettled — no Kentucky authority found in our review, and the one in-state federal holdover case applied North Carolina law by party agreement.", "keyLaw": "No Kentucky invention-assignment statute; Dorton v. Ashland Oil & Refining Co., 197 S.W.2d 274 (Ky. 1946); Stanford v. Roche, 563 U.S. 776 (2011)", "statutoryCarveOut": "none", "defaultOwnership": "employee", "employeeNoticeRequired": "n/a", "holdoverClauseLimit": "unsettled", "carveOutScope": "Kentucky has no statutory own-time carve-out; the reach of an assignment clause is limited only by ordinary contract law, the common-law inventor-owns default (subject to the hired-to-invent doctrine and the employer's shop right recognized in the Dorton cases), and the federal patent and copyright overlay." }, "about": [ "Kentucky invention assignment", "Kentucky no invention-assignment statute", "Kentucky employee invention ownership", "Dorton v. Ashland Oil shop right", "Kentucky shop right", "Kentucky hired to invent", "Kentucky holdover trailing assignment", "Creech v. Brown consideration" ], "translations": [ { "language": "中文", "status": "planned" }, { "language": "Español", "status": "planned" }, { "language": "Português", "status": "planned" }, { "language": "Deutsch", "status": "planned" } ], "relatedForm": { "slug": "openagreements-confidentiality-invention-assignment-agreement" } }, "questions": [ { "slug": "statutory-carve-out", "label": "Can the employer require assignment of every invention?", "heading": "Can a Kentucky employer require assignment of every invention?", "answerText": "There is no statutory ceiling. Unlike California or New York, Kentucky 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. Kentucky's own employee-invention case law gives an employer an inference-based right to use an employee's invention, not a statutory claim to title, and the baseline the contract operates against is that rights in an invention belong to the inventor.", "sources": [ { "id": "dorton-use-not-title", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Dorton v. Ashland Oil & Refining Co.", "citation": "Dorton v. Ashland Oil & Refining Co., 303 Ky. 279, 197 S.W.2d 274 (Ky. 1946).", "url": "https://www.courtlistener.com/opinion/3446993/dorton-v-ashland-oil-refining-co/", "deepLink": "https://www.courtlistener.com/opinion/3446993/dorton-v-ashland-oil-refining-co/#:~:text=An%20examination%20of%20the%20authorities,without%20the%20payment%20of%20royalties.", "proposition": "Dorton v. Ashland Oil & Refining Co. supports the rule that under Kentucky common law an employer's default entitlement to an employee's invention is an inference-based right to use it in its business without paying royalties — a use right supplied by case law, not a statutory ceiling or a statutory grant of title.", "verbatimQuote": "An examination of the authorities cited in that opinion on this question, including 35 Am. Jur., Master and Servant, section 95, will show that the inference is that the employer has the right to use an invention of its employee in its business without the payment of royalties.", "date": "1946-10-22", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-dorton-use-not-title" }, { "id": "stanford-baseline", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems", "citation": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).", "url": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/", "deepLink": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/#:~:text=Since%201790%2C%20the%20patent%20law,invention%20belong%20to%20the%20inventor.", "proposition": "Stanford 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.", "verbatimQuote": "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.", "date": "2011-06-06", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-stanford-baseline" } ] }, { "slug": "employee-notice", "label": "Must the employer give the employee written notice of the carve-out?", "heading": "Must a Kentucky employer notify the employee?", "answerText": "Not applicable. Because Kentucky 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). Whatever rights a Kentucky employer holds over employee inventions arise from the contract itself or from the common-law inference the Kentucky courts draw from the employment relationship, not from a statutory scheme with notice formalities.", "sources": [ { "id": "dorton-notice", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Dorton v. Ashland Oil & Refining Co.", "citation": "Dorton v. Ashland Oil & Refining Co., 303 Ky. 279, 197 S.W.2d 274 (Ky. 1946).", "url": "https://www.courtlistener.com/opinion/3446993/dorton-v-ashland-oil-refining-co/", "deepLink": "https://www.courtlistener.com/opinion/3446993/dorton-v-ashland-oil-refining-co/#:~:text=An%20examination%20of%20the%20authorities,without%20the%20payment%20of%20royalties.", "proposition": "Dorton v. Ashland Oil & Refining Co. shows that Kentucky locates an employer's default rights in an employee's invention in a common-law inference from the employment relationship, not in a statutory carve-out — so there is no statutory notice requirement for an invention-assignment clause in Kentucky.", "verbatimQuote": "An examination of the authorities cited in that opinion on this question, including 35 Am. Jur., Master and Servant, section 95, will show that the inference is that the employer has the right to use an invention of its employee in its business without the payment of royalties.", "date": "1946-10-22", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-dorton-notice" } ] }, { "slug": "default-ownership", "label": "Absent a written assignment, who owns the invention?", "heading": "Who owns an invention by default in Kentucky?", "answerText": "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 Kentucky 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; short of that, Kentucky's own case law gives the employer at most a shop right to use the invention without paying royalties, never ownership.", "sources": [ { "id": "stanford-inventor", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems", "citation": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).", "url": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/", "deepLink": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/#:~:text=Since%201790%2C%20the%20patent%20law,invention%20belong%20to%20the%20inventor.", "proposition": "Stanford v. Roche confirms the long-standing premise of U.S. patent law that rights in an invention belong to the inventor.", "verbatimQuote": "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.", "date": "2011-06-06", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-stanford-inventor" }, { "id": "stanford-traceback", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems", "citation": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).", "url": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/", "deepLink": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/#:~:text=Thus%2C%20although%20others%20may%20acquire,trace%20back%20to%20the%20inventor.", "proposition": "Stanford 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.", "verbatimQuote": "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.", "date": "2011-06-06", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-stanford-traceback" }, { "id": "dubilier-hired-to-invent", "authorityType": "case-law", "tier": "primary-source-backed", "title": "United States v. Dubilier Condenser Corp.", "citation": "United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).", "url": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/", "deepLink": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/#:~:text=One%20employed%20to%20make%20an,his%20employer%20any%20patent%20obtained.", "proposition": "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.", "verbatimQuote": "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.", "date": "1933-05-08", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-dubilier-hired-to-invent" }, { "id": "dubilier-shop-right", "authorityType": "case-law", "tier": "primary-source-backed", "title": "United States v. Dubilier Condenser Corp.", "citation": "United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).", "url": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/", "deepLink": "https://www.courtlistener.com/opinion/1087847/united-states-v-dubilier-condenser-corp/#:~:text=Recognition%20of%20the%20nature%20of,right%20to%20practice%20the%20invention.", "proposition": "United States v. Dubilier Condenser Corp. states the classic shop-right rule — an employee who conceives and perfects an invention on the employer's time with the employer's materials must accord the employer a non-exclusive right to practice the invention, not ownership of it.", "verbatimQuote": "Recognition of the nature of the act of invention also defines the limits of the so-called shop-right, which shortly stated, is that 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.", "date": "1933-05-08", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-dubilier-shop-right" }, { "id": "dorton-shop-right", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Dorton v. Ashland Oil & Refining Co.", "citation": "Dorton v. Ashland Oil & Refining Co., 303 Ky. 279, 197 S.W.2d 274 (Ky. 1946).", "url": "https://www.courtlistener.com/opinion/3446993/dorton-v-ashland-oil-refining-co/", "deepLink": "https://www.courtlistener.com/opinion/3446993/dorton-v-ashland-oil-refining-co/#:~:text=An%20examination%20of%20the%20authorities,without%20the%20payment%20of%20royalties.", "proposition": "Dorton v. Ashland Oil & Refining Co. supports the rule that Kentucky recognizes the shop right as the employer's default entitlement — the right to use an employee's invention in its business without paying royalties, drawn by inference from the master-and-servant authorities, not ownership of the invention.", "verbatimQuote": "An examination of the authorities cited in that opinion on this question, including 35 Am. Jur., Master and Servant, section 95, will show that the inference is that the employer has the right to use an invention of its employee in its business without the payment of royalties.", "date": "1946-10-22", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-dorton-shop-right" }, { "id": "ashland-shop-right-first-appeal", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Ashland Oil & Refining Co. v. Dorton", "citation": "Ashland Oil & Refining Co. v. Dorton, 300 Ky. 385, 189 S.W.2d 394 (Ky. 1945).", "url": "https://www.courtlistener.com/opinion/3446015/ashland-oil-refining-co-v-dorton/", "deepLink": "https://www.courtlistener.com/opinion/3446015/ashland-oil-refining-co-v-dorton/#:~:text=The%20testimony%20covered%20a%20wide,without%20the%20payment%20of%20royalty.", "proposition": "Ashland Oil & Refining Co. v. Dorton, the first appeal in the Dorton litigation, characterized the trial testimony as tending to establish the employer's entitlement to shop rights — the right to use the employee's invention in its business without paying royalty — the recognition the second appeal then grounded in the master-and-servant authorities.", "verbatimQuote": "The testimony covered a wide range and tended to establish that the invention was perfected and utilized under such circumstances as to entitle appellant to “shop rights, ” that is, the right to use said invention in its business without the payment of royalty.", "date": "1945-05-22", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-ashland-shop-right-first-appeal" } ] }, { "slug": "holdover-clause-limit", "label": "Are post-employment trailing-assignment clauses enforceable?", "heading": "Are trailing-assignment (holdover) clauses enforceable in Kentucky?", "answerText": "Unsettled. Kentucky has no statute capping the duration or reach of a post-employment trailing assignment — there is no invention-assignment statute at all and no general non-compete statute either — and no Kentucky decision found in our review addresses a holdover invention-assignment clause. The one holdover dispute litigated in a Kentucky forum was decided under North Carolina law because the parties agreed that law governed, so it does not state Kentucky law. A Kentucky court asked to enforce a trailing clause would most likely draw on the Commonwealth's general reasonableness standard for restraints of trade and its consideration rules for mid-employment restrictive agreements — an analogy, not settled authority.", "sources": [ { "id": "n-harris-nc-law", "authorityType": "case-law", "tier": "primary-source-backed", "title": "N. Harris Computer Corp. v. DSI Investments, LLC", "citation": "N. Harris Computer Corp. v. DSI Investments, LLC, No. 1:19-cv-00142-GNS-HBB (W.D. Ky. June 17, 2022).", "url": "https://business.cch.com/ipld/NHarrisCopmuterDSIInvestments20220617.pdf", "proposition": "N. Harris Computer Corp. v. DSI Investments shows that the one holdover invention-assignment dispute litigated in a Kentucky federal forum was decided under North Carolina law by party agreement — so it does not state Kentucky law on trailing-assignment clauses, and Kentucky authority on the question remains absent.", "verbatimQuote": "The parties agree that North Carolina law governs the interpretation, validity, and enforcement of the Assignment.", "date": "2022-06-17", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-n-harris-nc-law" }, { "id": "hammons-reasonableness", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Hammons v. Big Sandy Claims Service, Inc.", "citation": "Hammons v. Big Sandy Claims Serv., Inc., 567 S.W.2d 313 (Ky. Ct. App. 1978) (quoting Ceresia v. Mitchell, 242 S.W.2d 359 (Ky. 1951)).", "url": "https://www.courtlistener.com/opinion/2419936/hammons-v-big-sandy-claims-service-inc/", "deepLink": "https://www.courtlistener.com/opinion/2419936/hammons-v-big-sandy-claims-service-inc/#:~:text=Also%2C%20it%20has%20been%20held,hardship%20on%20the%20party%20restricted.", "proposition": "Hammons v. Big Sandy Claims Service, restating the standard from Ceresia v. Mitchell, supports Kentucky's general rule that an agreement in restraint of trade is reasonable only if it affords fair protection to the covenantee without interfering with the public interest or imposing undue hardship on the party restricted — the reasonableness analogy a Kentucky court would most likely draw on for a trailing-assignment clause.", "verbatimQuote": "Also, it has been held in Kentucky that an agreement in restraint of trade is reasonable if, on consideration of the subject, nature of the business, situation of the parties and circumstances of the particular case, the restriction is such only as to afford fair protection to the interests of the cove-nantee and is not so large as to interfere with the public interests or impose undue hardship on the party restricted.", "date": "1978-06-09", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-hammons-reasonableness" }, { "id": "creech-consideration", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Charles T. Creech, Inc. v. Brown", "citation": "Charles T. Creech, Inc. v. Brown, 433 S.W.3d 345 (Ky. 2014).", "url": "https://www.courtlistener.com/opinion/5444327/charles-t-creech-inc-v-brown/", "deepLink": "https://www.courtlistener.com/opinion/5444327/charles-t-creech-inc-v-brown/#:~:text=He%20remained%20an%20at%2Dwill%20employee,the%20Agreement%20is%20not%20enforceable.", "proposition": "Charles T. Creech, Inc. v. Brown holds that a restrictive agreement signed by an existing at-will employee who received no promotion, no wage increase, and no specialized training in exchange was unenforceable for lack of consideration — the consideration doctrine a mid-employment invention-assignment rollout in Kentucky would have to reckon with.", "verbatimQuote": "He remained an at-will employee with no promotion, no increase in wages, and no specialized training. In short, Brown received no consideration from Creech in exchange for signing the Agreement or after he signed the Agreement. Therefore, the Agreement is not enforceable.", "date": "2014-06-19", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-creech-consideration" }, { "id": "stanford-traceback-practice", "authorityType": "case-law", "tier": "primary-source-backed", "title": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems", "citation": "Bd. of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).", "url": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/", "deepLink": "https://www.courtlistener.com/opinion/218133/board-of-trustees-of-the-leland-stanford-junior-university-v-roche/#:~:text=Thus%2C%20although%20others%20may%20acquire,trace%20back%20to%20the%20inventor.", "proposition": "Stanford 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.", "verbatimQuote": "Thus, although others may acquire an interest in an invention, any such interest — as a general rule — must trace back to the inventor.", "date": "2011-06-06", "anchor": "https://openagreements.org/practice-guides/invention-assignment/us/kentucky#src-stanford-traceback-practice" } ] } ] } }