Can a Rhode Island employer require assignment of every invention?
There is no statutory ceiling. Rhode Island has no employee-invention-assignment statute — nothing like California Labor Code § 2870 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. What the Rhode Island statute book says about invention assignments is — unusually — protective of the clause: the Rhode Island Noncompetition Agreement Act expressly excludes invention assignment agreements from its ban on noncompetition agreements.
Because there is no statute on point, the limits come from general principles rather than a legislative carve-out. A full-text search of the Rhode Island General Laws surfaces no employee-invention provision of any kind, and Title 28 (Labor and Labor Relations) contains no invention or intellectual-property chapter. Rhode Island's trade-secret statute, its version of the Uniform Trade Secrets Act (R.I. Gen. Laws §§ 6-41-1 through 6-41-11), likewise contains no invention-assignment provision. A Rhode Island employer therefore starts from contract law, not from a § 2870-style statutory ceiling on what an assignment promise may capture.
The one Rhode Island statute that does mention invention assignments points the other way. The Rhode Island Noncompetition Agreement Act (R.I. Gen. Laws §§ 28-59-1 to 28-59-5, enacted in 2019) makes certain post-employment noncompetes unenforceable, and it defines the covered agreement broadly .
But the definition then lists what a noncompetition agreement does not include, and invention assignments are on that exclusion list .
“(vii) Invention assignment agreements;”
The exclusion is a shield, not a carve-out. A carve-out statute like California's protects the employee by limiting what the clause may reach; § 28-59-2(8)(vii) protects the clause by taking it outside the Act altogether. The practical bite shows up with the Act's categorical bans. Section 28-59-3 makes noncompetes unenforceable against four groups — employees who are nonexempt under the Fair Labor Standards Act, student interns and short-term student workers, employees age eighteen or younger, and low-wage employees — yet even for those workers an invention assignment stands outside the Act because it is excluded from the definition .
“A noncompetition agreement shall not be enforceable against the following types of workers:”
Exclusion from the Act is not the same as enforceability. Chapter 28-59 cannot be the vehicle for invalidating an assignment clause, but the clause remains an ordinary contract term, measured against the federal inventor-first baseline and — where it operates as a restraint on the former employee, as a trailing clause can — against Rhode Island's common-law reasonableness limits discussed with the holdover question below. The baseline the clause contracts around is the premise restated in Stanford v. Roche: absent an effective assignment, rights in an invention belong to the person who conceived it .
Sources for this answer
Primary law
A.1 R.I. Gen. Laws § 28-59-2(8)R.I. Gen. Laws § 28-59-2(8)(vii) excludes invention assignment agreements from the definition of the noncompetition agreements the Rhode Island Noncompetition Agreement Act makes unenforceable, so the Act shields the clause rather than limiting it.
(vii) Invention assignment agreements;
See R.I. Gen. Laws § 28-59-2(8)(vii).
Primary law
A.3 R.I. Gen. Laws § 28-59-2(8)R.I. Gen. Laws § 28-59-2(8) defines the noncompetition agreements covered by the Rhode Island Noncompetition Agreement Act as agreements not to engage in specified competitive activities after the employment relationship has ended — the definition from which invention assignment agreements are then expressly excluded.
“Noncompetition agreement” means an agreement between an employer and an employee, or otherwise arising out of an existing or anticipated employment relationship, under which the employee or expected employee agrees that he or she will not engage in certain specified activities competitive with his or her employer after the employment relationship has ended.
See R.I. Gen. Laws § 28-59-2(8).
Primary law
A.4 R.I. Gen. Laws § 28-59-3R.I. Gen. Laws § 28-59-3(a) makes noncompetition agreements unenforceable against nonexempt employees, student interns and short-term student workers, employees age eighteen or younger, and low-wage employees — but those bans do not reach an invention assignment, which § 28-59-2(8)(vii) excludes from the Act's definition.
A noncompetition agreement shall not be enforceable against the following types of workers:
See R.I. Gen. Laws § 28-59-3(a).
Case law · 2011-06-06
A.2 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).
Must a Rhode Island employer notify the employee?
Not applicable. Because Rhode Island 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 Rhode Island statute that mentions invention assignments — the Noncompetition Agreement Act — contains no notice provision of any kind, and it excludes invention assignment agreements from its scope in any event.
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; Rhode Island 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 Rhode Island does not have.
Nor does Rhode Island's covenant statute smuggle in a notice formality the way some states' acts do. Massachusetts pairs its noncompete statute with advance-notice requirements; § 28-59-3, the Rhode Island Act's enforceability section, imposes no notice, consideration, or review-period formality at all — its only limits are the four categorical worker bans .
“A noncompetition agreement shall not be enforceable against the following types of workers:”
And even if the Act did impose formalities on covered agreements, an invention assignment would sit outside them, because § 28-59-2(8)(vii) excludes invention assignment agreements from the Act's definition .
“(vii) Invention assignment agreements;”
For a multistate employer the takeaway is the inverse of the notice states: a Rhode Island employer neither has to give a § 2872-style notice nor can rely on one to cure an overbroad clause. The enforceability of the assignment turns entirely on the contract language and the general limits on restraints, not on any statutory notice or disclosure formality.
Sources for this answer
Primary law
B.1 R.I. Gen. Laws § 28-59-3R.I. Gen. Laws § 28-59-3 limits noncompete enforceability only through categorical worker bans and contains no notice, consideration, or review-period requirement — so Rhode Island imposes no statutory notice formality on any employment covenant, let alone on invention assignments.
A noncompetition agreement shall not be enforceable against the following types of workers:
See R.I. Gen. Laws § 28-59-3(a).
Primary law
B.2 R.I. Gen. Laws § 28-59-2(8)R.I. Gen. Laws § 28-59-2(8)(vii) excludes invention assignment agreements from the Noncompetition Agreement Act's definition, so even the Act's own limits — which include no notice provision — do not attach to an invention assignment.
(vii) Invention assignment agreements;
See R.I. Gen. Laws § 28-59-2(8)(vii).
Who owns an invention by default in Rhode Island?
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 Rhode Island as elsewhere — is that rights belong to the employee who conceived it, and the narrow exception is the employee hired to invent. Rhode Island's own case law is thin but old and pointed: in Silver Spring Bleaching & Dyeing Co. v. Woolworth, decided in 1890, the Rhode Island Supreme Court held that a discovery made by an employee whose directed job was to experiment toward that discovery belonged to the employer even without a special contract .
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, and 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 .
Rhode Island applied that idea long before Dubilier gave it its modern form. In Silver Spring Bleaching & Dyeing Co. v. Woolworth, a dye-works chemist whose duties included making experiments in dyeing processes with a view to discovery hit upon a valuable aniline-black process while experimenting at the corporation's direction, then refused to disclose it. The Rhode Island Supreme Court ordered disclosure without further compensation, reasoning that the discovery was the employer's property from the start .
The jury in that case had found an implied contract entitling the employer to the employee's inventions, and the court upheld the verdict on that footing .
Silver Spring is best read as Rhode Island's instantiation of the hired-to-invent exception, not as an inversion of the default for ordinary employees. The employer prevailed because the experimenting that produced the discovery was itself the directed service — the court stressed that the employee was using the corporation's time, materials, and machinery under its direction for the very purpose of making the discovery — and on those facts the employer took the property outright rather than the mere non-exclusive shop-right license that Dubilier gives an employer whose employee merely used its resources. An engineer or chemist hired for general duties who invents on the side is outside that rationale, and the inventor-owns default controls.
How thin the Rhode Island authority is on this question is itself documented in the case law: sixty years later, a federal court surveying Rhode Island law for an invention-assignment dispute identified Silver Spring as the only Rhode Island case on point .
Because ownership therefore starts with the inventor, Rhode Island has no statute filling the gap, and the state's only ownership case turns on unusually employer-favorable facts, the dependable path for an 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.4 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 · 1890-03-01
C.3 Silver Spring Bleaching & Dyeing Co. v. WoolworthSilver Spring Bleaching & Dyeing Co. v. Woolworth holds that a discovery made by an employee who was using the employer's time, materials, and machinery under its direction for the purpose of making the discovery was the employer's property independently of any special contract — Rhode Island's hired-to-invent exception case.
under its direction, for the purpose of making the discovery, and it follows that, independently of any special contract to that effect, the resulting discovery was just as much its property as if, instead of being the formula of a secret process,
See Silver Spring Bleaching & Dyeing Co. v. Woolworth, 16 R.I. 729, 19 A. 528 (1890).
Case law · 1890-03-01
C.5 Silver Spring Bleaching & Dyeing Co. v. WoolworthIn Silver Spring Bleaching & Dyeing Co. v. Woolworth the jury found, and the court accepted, an implied contract entitling the employer to the inventions and discoveries the employee made during his employment.
at the time of the commencement of this suit an implied contract subsisting and in force between said parties, whereby the plaintiff was and is entitled to the inventions and discoveries made by the defendant during the time of his employment
See Silver Spring Bleaching & Dyeing Co. v. Woolworth, 16 R.I. 729, 19 A. 528 (1890).
Case law · 1952-07-02
C.6 Universal Winding Co. v. ClarkeUniversal Winding Co. v. Clarke, surveying Rhode Island law in 1952, identified Silver Spring Bleaching & Dyeing Co. v. Woolworth as the only Rhode Island case touching on the validity and effect of an employee invention-assignment agreement — documenting how sparse Rhode Island authority is.
The only Rhode Island case touching on the question of the validity and effect of an agreement by an employee to assign his inventions and improvements to his employer is Silver Spring Bleaching & Dyeing Co. v. Woolworth
See Universal Winding Co. v. Clarke, 108 F. Supp. 329 (D. Conn. 1952).
Are trailing-assignment (holdover) clauses enforceable in Rhode Island?
Probably yes when narrowly drawn, but the authority deserves a prominent asterisk. The only decision found in our review that squarely rules on a trailing clause under Rhode Island law is Universal Winding Co. v. Clarke — and it is a 1952 decision of a federal district court sitting in Connecticut, predicting Rhode Island law, not a Rhode Island court's ruling. That court upheld a one-year holdover limited to the subject matter of the employment under a three-part reasonableness test. No Rhode Island state appellate decision on a holdover clause was found in our review, so the standard remains a seventy-year-old federal prediction, and a modern court would most likely fill the gap with Rhode Island's general covenant framework — reasonableness with partial enforcement — by analogy.
Universal Winding is directly on point on its facts. A machine designer signed, on his first day, an agreement assigning inventions and designs made during his employment or within one year after its termination, so far as they related to the subject matter of his employment and the employer's work. The agreement was executed in Rhode Island for work at the employer's Cranston plant, and the court expressly resolved the choice of law before construing it .
The court then stated the Rhode Island restraint-of-trade test it understood itself to be applying .
The test's third limb, as the opinion states it, asks whether the restraint would impair the public interest . Notably, the court did not pretend the trailing clause was something other than a restraint. It was candid that, as applied, the clause operated like a one-year covenant against working in the employee's specialty .
Even viewed that way, the one-year trailer passed .
The formal conclusion followed, in the opinion's own period spelling .
“Said written agreement was not invalid or unenforcible as an unreasonable restraint on trade.”
The narrowing move matters as much as the holding. The court refused to read the clause as covering the whole field of machine design; it construed the assignment to reach only inventions with a particular pertinence or affinity to winding machines — the employer's actual business — and upheld it as so limited . The one-year duration was blessed for a clause already confined to the employment's subject matter, not for an open-ended one.
The mandatory caveat, stated plainly: Universal Winding is a federal district court in Connecticut predicting Rhode Island law in 1952 under Erie and Klaxon choice-of-law principles. It binds no Rhode Island court, and no Rhode Island state appellate decision on a holdover clause was found in our review — the Rhode Island Supreme Court has simply never ruled on one. Anything said about how that court would treat a trailing clause today is inference from its general covenant doctrine, not holding.
That general doctrine is at least well developed, and it points the same direction for a narrow clause. In Durapin, Inc. v. American Products, Inc., the Rhode Island Supreme Court made reasonableness the touchstone for covenant review .
Durapin also adopted partial enforcement: an overbroad restraint is modified and enforced to a reasonable extent rather than struck entirely, unless the promisee overreached .
Cranston Print Works Co. v. Pothier applied that framework to covenants with no time limit, flagging unlimited duration as a reasonableness problem .
The court described the remedial power in blue-pencil vocabulary, but what it described is equitable tailoring — drawing reasonable limits into an overbroad covenant — consistent with Durapin, not a mechanical strike-only rule; Rhode Island is not a strict blue-pencil state .
Durapin and Cranston Print Works are noncompete cases, not holdover cases, so extending them to a trailing assignment is analogy rather than holding. But the analogy runs in a consistent direction: a holdover limited in time and tied to the employment's actual subject matter fits comfortably within the reasonableness framework Universal Winding applied and Rhode Island's modern cases confirm, while an open-ended or field-wide trailer invites exactly the temporal-overbreadth and tailoring analysis of Cranston Print Works. One further wrinkle is unique to Rhode Island: because § 28-59-2(8)(vii) excludes invention assignments from the Noncompetition Agreement Act, that statute is an unlikely vehicle for attacking even an aggressive trailer — the live risk is common-law restraint-of-trade doctrine, as it was in Universal Winding .
Sources for this answer
Case law · 1952-07-02
D.5 Universal Winding Co. v. ClarkeUniversal Winding Co. v. Clarke — a federal district court sitting in Connecticut — expressly applied Rhode Island law to determine the validity and effect of the invention-assignment agreement, which is what makes it on-point Rhode Island trailing-clause authority and also what caps its weight as a federal prediction.
Hence this court, with its seat in Connecticut, will apply Rhode Island law in determining the validity and effect of the contract.
See Universal Winding Co. v. Clarke, 108 F. Supp. 329 (D. Conn. 1952).
Case law · 1952-07-02
D.1 Universal Winding Co. v. ClarkeUniversal Winding Co. v. Clarke states the Rhode Island reasonableness test it applied to the trailing clause — no greater a restraint than reasonably required to protect the employer's competitive position and no unreasonable curtailment of the employee's freedom of contract, with a third limb (as the opinion states it) asking whether the restraint would impair the public interest.
Under the law of Rhode Island a contract by an employer prohibiting an employee from accepting employment with a competitor is not invalid as an unreasonable restraint of trade if the extent of the restraint reasonably to be expected therefrom is (a) no greater than reasonably required to protect the employer’s competitive position, (b) is not such as unreasonably to curtail the employee’s freedom of contract
See Universal Winding Co. v. Clarke, 108 F. Supp. 329 (D. Conn. 1952).
Case law · 1952-07-02
D.6 Universal Winding Co. v. ClarkeUniversal Winding Co. v. Clarke treated the trailing assignment realistically as operating like a one-year covenant not to work in the field of winding-machine design — after construing the clause narrowly to inventions with particular pertinence to that field — and upheld it on that footing.
Thus in this aspect the agreement savored of a covenant for the year following employment by the plaintiff not to work, or not to accept employment, for one year in the field of the design of winding machines.
See Universal Winding Co. v. Clarke, 108 F. Supp. 329 (D. Conn. 1952).
Case law · 1952-07-02
D.2 Universal Winding Co. v. ClarkeUniversal Winding Co. v. Clarke held the one-year post-employment extension of the assignment agreement reasonably required for the employer's protection — the only judicial blessing of a specific holdover duration under Rhode Island law found in our review.
Also reasonably required for plaintiff’s protection was the extension of the agreement to the period of the year succeeding the employment.
See Universal Winding Co. v. Clarke, 108 F. Supp. 329 (D. Conn. 1952).
Case law · 1952-07-02
D.7 Universal Winding Co. v. ClarkeUniversal Winding Co. v. Clarke formally concluded that the assignment agreement, including its one-year holdover, was not invalid as an unreasonable restraint on trade (the word unenforcible is the opinion's original spelling).
Said written agreement was not invalid or unenforcible as an unreasonable restraint on trade.
See Universal Winding Co. v. Clarke, 108 F. Supp. 329 (D. Conn. 1952).
Case law · 1989-06-14
D.3 Durapin, Inc. v. American Products, Inc.Durapin, Inc. v. American Products, Inc. states the Rhode Island Supreme Court's modern rule that reasonableness, judged on the particular circumstances, is the crucial issue when reviewing a noncompetition agreement — the framework a Rhode Island court would most likely extend to a holdover clause by analogy.
When considering the validity of a noncompetition agreement, the crucial issue is reasonableness, and that test is dependent upon the particular circumstances surrounding the agreement.
See Durapin, Inc. v. American Products, Inc., 559 A.2d 1051 (R.I. 1989).
Case law · 1989-06-14
D.4 Durapin, Inc. v. American Products, Inc.Durapin, Inc. v. American Products, Inc. adopts partial enforcement in Rhode Island — unreasonable restraints are modified and enforced whether or not their terms are divisible, unless the promisee acted in bad faith or deliberately overreached.
We believe this is the appropriate time to choose the route that permits unreasonable restraints to be modified and enforced, whether or not their terms are divisible, unless the circumstances indicate bad faith or deliberate overreaching on the part of the promisee.
See Durapin, Inc. v. American Products, Inc., 559 A.2d 1051 (R.I. 1989).
Case law · 2004-04-14
D.8 Cranston Print Works Co. v. PothierCranston Print Works Co. v. Pothier flags the lack of a temporal limitation as a reasonableness problem because an unlimited duration is longer than necessary to protect legitimate commercial interests — the analysis an open-ended holdover clause would invite.
Also, the lack of a temporal limitation to the noncompete provisions may be unreasonable because the duration of the prohibition is longer than necessary to protect Cranston Print’s legitimate commercial interests in safeguarding its confidential business information and trade secrets.
See Cranston Print Works Co. v. Pothier, 848 A.2d 213 (R.I. 2004).
Case law · 2004-04-14
D.9 Cranston Print Works Co. v. PothierCranston Print Works Co. v. Pothier describes the court's remedial power in blue-pencil vocabulary but means equitable tailoring consistent with Durapin — a free hand to draw reasonable limitations into overbroad covenants, with the covenant's proponent bearing the burden on reasonableness.
with Cranston Print bearing the burden to show the reasonableness of these unrestricted noncompete provisions and the court having a free hand to take a “blue pencil,” if necessary, to draw in any reasonable limitations on such covenants that it concludes are overbroad
See Cranston Print Works Co. v. Pothier, 848 A.2d 213 (R.I. 2004).
Primary law
D.10 R.I. Gen. Laws § 28-59-2(8)R.I. Gen. Laws § 28-59-2(8)(vii) excludes invention assignment agreements from the Noncompetition Agreement Act, so a challenge to a trailing clause must proceed under common-law restraint-of-trade doctrine rather than under the Act.
(vii) Invention assignment agreements;
See R.I. Gen. Laws § 28-59-2(8)(vii).
Case law · 1952-07-02
D.11 Universal Winding Co. v. ClarkeUniversal Winding Co. v. Clarke is a federal district court sitting in Connecticut applying Rhode Island law in 1952 — a choice-of-law prediction that binds no Rhode Island court, which is why its blessing of a one-year holdover should be treated as persuasive rather than settled Rhode Island law.
Hence this court, with its seat in Connecticut, will apply Rhode Island law in determining the validity and effect of the contract.
See Universal Winding Co. v. Clarke, 108 F. Supp. 329 (D. Conn. 1952).
Case law · 1989-06-14
D.12 Durapin, Inc. v. American Products, Inc.Durapin, Inc. v. American Products, Inc. permits Rhode Island courts to modify and enforce an unreasonable restraint — but withholds that rescue where the circumstances indicate bad faith or deliberate overreaching by the promisee, so deliberately overbroad drafting forfeits the safety net.
We believe this is the appropriate time to choose the route that permits unreasonable restraints to be modified and enforced, whether or not their terms are divisible, unless the circumstances indicate bad faith or deliberate overreaching on the part of the promisee.
See Durapin, Inc. v. American Products, Inc., 559 A.2d 1051 (R.I. 1989).
Primary law
D.13 R.I. Gen. Laws § 28-59-2(8)R.I. Gen. Laws § 28-59-2(8)(vii) excludes invention assignment agreements from the Noncompetition Agreement Act categorically on its text; no Rhode Island authority found in our review addresses whether an assignment clause so broad it functions as a noncompete would forfeit that exclusion.
(vii) Invention assignment agreements;
See R.I. Gen. Laws § 28-59-2(8)(vii).
Do not treat the one-year holdover blessed in Universal Winding Co. v. Clarke as settled Rhode Island law — the decision is a federal court in Connecticut predicting Rhode Island law in 1952, it binds no Rhode Island court, and no Rhode Island state appellate ruling on a holdover clause was found in our review . Draft as if a skeptical Rhode Island court will apply its modern covenant doctrine by analogy: keep any trailing clause to a year or less, tie it to the employment's actual subject matter rather than a whole field, and use present-assignment (hereby assigns) language so title passes automatically. Partial enforcement means a Rhode Island court can trim an overbroad clause rather than void it, but that rescue is withheld where the circumstances indicate bad faith or deliberate overreaching — so an aggressively broad trailer is a bet on judicial generosity the drafter does not need to make . Finally, do not read the Noncompetition Agreement Act's invention-assignment exclusion as blanket immunity: the exclusion is categorical on its text, but no Rhode Island authority found in our review says whether a clause so broad it functions as a noncompete keeps it, and the common-law restraint-of-trade doctrine applies to the clause either way .