Can a U.S. Virgin Islands employer require assignment of every invention?
There is no statutory ceiling — and no local statute at all. The U.S. Virgin Islands has no employee-invention-assignment statute: no California Labor Code § 2870 analogue, no employer-ownership provision, and no notice requirement. An assignment clause's reach is therefore bounded only by ordinary contract law, the federal patent and copyright overlay, and the common-law rules a Virgin Islands court would select for itself under the territory's post-2011 methodology for choosing its common law.
The statutory silence is broad. A search of the Virgin Islands Code — including Title 24 (Labor) and Title 11 (Commerce and Trade) — surfaces no invention-assignment, employee-invention-ownership, or carve-out provision of any kind. The nearest neighbors are the territory's Uniform Trade Secrets Act (11 V.I.C. §§ 1001–1010), which supplies the trade-secret backdrop for the confidentiality side of an invention-assignment agreement, and the reception statute discussed below. One currency caveat belongs on the record: the freely searchable compilation of the Virgin Islands Code is a 2019 snapshot, and the official current code is hosted on LexisNexis, so the no-statute conclusion is as of our review date — though nothing in our review suggests any post-2019 enactment on this subject.
What makes the territory unusual is where its common law comes from. For most of the territory's history, 1 V.I.C. § 4 directed Virgin Islands courts to the Restatements as the default rules of decision .
That regime ended with Banks v. International Rental & Leasing Corp., in which the Supreme Court of the Virgin Islands held that the reception statute does not force mechanical adherence to the Restatements .
In Government of the Virgin Islands v. Connor, the same court — quoting Simon v. Joseph, which in turn drew on Matthew v. Herman — restated the working methodology that replaced automatic Restatement reception .
Connor also confirmed that the old reception statute no longer controls at all, tracing its demise to the 2004 statute that established the modern territorial judiciary .
“the Legislature implicitly repealed 1 V.I.C. § 4 through its adoption of 4 V.I.C. § 21 in 2004.”
The practical consequence is that a Virgin Islands 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. But the outer limits are genuinely untested: no Virgin Islands court found in our review has ever construed an employee invention-assignment clause, so any statement about how far such a clause can reach is a prediction about which common-law rule the territory's courts would adopt under the Banks factors, not a report of settled local doctrine.
Sources for this answer
Primary law
A.1 1 V.I.C. § 4 — Application of common law; restatements1 V.I.C. § 4 historically made the common law as expressed in the Restatements the rules of decision in Virgin Islands courts absent local law to the contrary — the reception backdrop against which the Banks methodology now operates, and the closest thing the territory has to a statute bearing on employee inventions.
The rules of the common law, as expressed in the restatements of the law approved by the American Law Institute, and to the extent not so expressed, as generally understood and applied in the United States, shall be the rules of decision in the courts of the Virgin Islands in cases to which they apply, in the absence of local laws to the contrary.
See 1 V.I.C. § 4.
Case law · 2011-12-15
A.2 Banks v. International Rental & Leasing Corp.Banks v. International Rental & Leasing Corp. holds that 1 V.I.C. § 4 does not compel Virgin Islands courts to mechanically apply the most recent Restatement — so with no invention-assignment statute, the rules governing an assignment clause are whatever common law the territory's courts select for themselves.
We conclude that the Legislature did not intend for section 4 of title 1 to compel this Court to mechanically apply the most recent Restatement.
See Banks v. Int'l Rental & Leasing Corp., 55 V.I. 967 (V.I. 2011).
Case law · 2014-02-24
A.3 Government of the Virgin Islands v. ConnorPDFGovernment of the Virgin Islands v. Connor, quoting Simon v. Joseph and citing Matthew v. Herman, restates the three non-dispositive Banks factors — prior V.I. adoption, the majority position elsewhere, and the soundest rule for the Virgin Islands — by which Virgin Islands courts now determine their common law.
courts should consider “three non-dispositive factors” to determine Virgin Islands common law: “(1) whether any Virgin Islands courts have previously adopted a particular rule; (2) the position taken by a majority of courts from other jurisdictions; and (3) most importantly, which approach represents the soundest rule for the Virgin Islands.”
See Gov't of the V.I. v. Connor, 60 V.I. 597 (V.I. 2014).
Case law · 2014-02-24
A.4 Government of the Virgin Islands v. ConnorPDFGovernment of the Virgin Islands v. Connor confirms that the Legislature implicitly repealed the 1 V.I.C. § 4 reception statute through its 2004 adoption of 4 V.I.C. § 21 — so automatic Restatement reception no longer supplies the rules governing an assignment clause.
the Legislature implicitly repealed 1 V.I.C. § 4 through its adoption of 4 V.I.C. § 21 in 2004.
See Gov't of the V.I. v. Connor, 60 V.I. 597 (V.I. 2014).
Must a U.S. Virgin Islands employer notify the employee?
Not applicable. Because the U.S. Virgin Islands 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). Any disclosure or assignment duty arises from the terms of the agreement itself and from whatever common-law rule a Virgin Islands court would select under the Banks methodology .
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; the Virgin Islands has enacted no such carve-out, so there is no statutory line for a notice to mark. That is why the entry is marked not applicable rather than a bare no: the question presupposes a statutory carve-out that the territory does not have.
Nor is there any Restatement-derived notice formality waiting in the background. Since Banks, Virgin Islands courts choose their common-law rules through the three-factor analysis rather than by automatic Restatement reception, and no Virgin Islands decision found in our review has imposed — or even considered — a notice or disclosure formality for invention-assignment agreements .
For a multistate employer the takeaway is the inverse of the notice states: a Virgin Islands 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 on the common-law limits a Virgin Islands court would adopt, not on any statutory notice or disclosure formality.
Sources for this answer
Case law · 2011-12-15
B.1 Banks v. International Rental & Leasing Corp.Banks v. International Rental & Leasing Corp. establishes that Virgin Islands common law is selected by the territory's courts rather than imposed by automatic Restatement reception — so with no statute and no adopting decision, no notice or disclosure formality currently conditions an invention-assignment agreement.
We conclude that the Legislature did not intend for section 4 of title 1 to compel this Court to mechanically apply the most recent Restatement.
See Banks v. Int'l Rental & Leasing Corp., 55 V.I. 967 (V.I. 2011).
Who owns an invention by default in the U.S. Virgin Islands?
Most likely the inventor, unless hired to invent — but in the Virgin Islands that is a prediction, not settled local doctrine. No Virgin Islands decision found in our review addresses employee-invention ownership at all, so a court facing the question would select a rule through the Banks three-factor analysis, and the rule it would almost certainly select is the federal and majority baseline: rights belong to the employee who conceived the invention, the employer may claim an invention only from an employee hired to invent, and use of the employer's time and materials yields at most a shop right.
Stanford v. Roche anchors the baseline. 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 starting point 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 .
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 .
The most analogous in-circuit authority is Ingle v. Landis Tool Co., a 1921 decision of the Third Circuit — the circuit whose federal courts hear Virgin Islands appeals. Describing and adhering to the rule it had settled in Pressed Steel Car Co. v. Hansen, the court framed the condition on which the default turns .
“in the absence of an express contract or agreement to invent,”
On that condition, the court explained, the employment relation standing alone gave the employer no title to the employee's invention .
Applying that rule, the court held that the employee draughtsman kept title to his invention because he had never promised to invent .
Ingle is federal patent-era case law, not Virgin Islands common law, and it predates the modern territorial court system — it is persuasive, not binding, on a Virgin Islands court. But it maps cleanly onto the Banks factors as Connor states them: no Virgin Islands court has adopted a contrary rule, the inventor-first default with hired-to-invent and shop-right exceptions is the position taken by the overwhelming majority of jurisdictions, and an in-circuit pedigree strengthens the argument that it is the soundest rule for the territory . The prediction is strong; it is still a prediction, and the dependable path for an employer is a written present-assignment (hereby assigns) clause that transfers title automatically on conception rather than leaving ownership to an untested default.
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 baseline a Virgin Islands court would apply absent a written assignment.
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 — the hired-to-invent exception to the inventor-owns default.
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 Ingle v. Landis Tool Co.Ingle v. Landis Tool Co., adhering to Pressed Steel Car Co. v. Hansen, conditions the employer's lack of title on the absence of an express contract or agreement to invent — the in-circuit statement of the trigger for the default rule.
in the absence of an express contract or agreement to invent,
See Ingle v. Landis Tool Co., 272 F. 464 (3d Cir. 1921).
Case law
C.5 Ingle v. Landis Tool Co.Ingle v. Landis Tool Co. states the Third Circuit rule that the employment relation alone does not vest the employer with the property right in an employee's invention or the patent monopoly — the employer takes at most a shop right to use the invention.
did not vest the employer with the entire property right of an invention of the employee, and to the patent monopoly thereof, or to anything more than a shop right to use such invention.
See Ingle v. Landis Tool Co., 272 F. 464 (3d Cir. 1921).
Case law
C.6 Ingle v. Landis Tool Co.Ingle v. Landis Tool Co. applies the default rule to hold that an employee who never contracted to invent kept title to his invention, placing the case within the principle of Pressed Steel Car Co. v. Hansen.
There was no contract on Carey’s part to invent, and consequently the case, as we have said, falls within the principle of Pressed Steel Car Company v. Hansen, supra.
See Ingle v. Landis Tool Co., 272 F. 464 (3d Cir. 1921).
Case law · 2014-02-24
C.7 Government of the Virgin Islands v. ConnorPDFGovernment of the Virgin Islands v. Connor states the three-factor Banks analysis — prior V.I. adoption, the majority position elsewhere, and the soundest rule for the Virgin Islands — through which a Virgin Islands court would select the default ownership rule for employee inventions.
courts should consider “three non-dispositive factors” to determine Virgin Islands common law: “(1) whether any Virgin Islands courts have previously adopted a particular rule; (2) the position taken by a majority of courts from other jurisdictions; and (3) most importantly, which approach represents the soundest rule for the Virgin Islands.”
See Gov't of the V.I. v. Connor, 60 V.I. 597 (V.I. 2014).
Are trailing-assignment (holdover) clauses enforceable in the U.S. Virgin Islands?
Unsettled. No Virgin Islands decision found in our review addresses a trailing or holdover invention-assignment clause, and there is no statutory temporal cap because there is no invention-assignment statute at all. What the territory does supply is trial-level restrictive-covenant law testing post-employment restraints for reasonableness — one decision striking an overbroad covenant and one enforcing a reasonable one — and a court would most likely test a holdover clause the same way by analogy. But that is an analogy to covenant law from a different doctrinal box, decided by trial courts before the territory's modern common-law methodology existed, so the holdover question remains genuinely open.
Two gaps define the Virgin Islands picture. First, there is no statute: nothing caps the duration of a post-employment trailing assignment or otherwise limits what such a clause may reach. Second, there is no case: our review found no Virgin Islands decision applying any standard to an invention-holdover clause, so even the choice of framework is a prediction.
The closest local law is restrictive-covenant doctrine. In Virgin Islands Diving Schools/Supplies, Inc. v. Dixon, the Territorial Court — a trial court — struck a tiered, island-wide non-compete and non-disclosure package as an unreasonable restraint under the Restatement (Second) of Contracts § 188 framework, stressing that the employer had no trade secrets or unique services to protect. The opinion places restraints on employment under a disfavoring presumption .
“it is also equally true that the law disfavors agreements which restrain employment.”
Weighing the covenant's breadth against the employer's actual protectable interest, the Dixon court concluded the restraint could not stand — and struck it rather than trimming it .
The counterpoint is Williamson v. Hess, in which the same court — again at trial level — enforced a three-year veterinary non-compete limited to St. Thomas and St. John, applying a multi-factor reasonableness test in which the territory's small-island geography figured on both sides of the analysis .
Three limits on the analogy keep this cell at unsettled rather than a reasonableness rule. First, both decisions are trial-level: the Supreme Court of the Virgin Islands, established in 2007, has never ruled on restrictive covenants, let alone on invention assignments. Second, both predate Banks, so a court today could re-run the full three-factor analysis rather than simply following them — although under the first Connor factor they would count as prior Virgin Islands adoption of a reasonableness approach to post-employment restraints . Third, a trailing assignment is not a non-compete; extending covenant reasonableness to a clause that assigns post-employment inventions is a bare analogy that no Virgin Islands court has drawn. Reformation is equally open: no Virgin Islands authority found in our review says whether an overbroad clause would be narrowed or simply struck, and the one on-point covenant precedent struck the restraint entirely .
Sources for this answer
Case law · 1983-10-19
D.1 Virgin Islands Diving Schools/Supplies, Inc. v. DixonPDFVirgin Islands Diving Schools/Supplies, Inc. v. Dixon — a trial-level Territorial Court decision — states that Virgin Islands law disfavors agreements which restrain employment, the presumption a holdover assignment clause operating as a post-employment restraint would face by analogy.
it is also equally true that the law disfavors agreements which restrain employment.
See Virgin Islands Diving Schools/Supplies, Inc. v. Dixon, Civil No. 1046/1982 (V.I. Terr. Ct. Oct. 19, 1983).
Case law · 1983-10-19
D.3 Virgin Islands Diving Schools/Supplies, Inc. v. DixonPDFVirgin Islands Diving Schools/Supplies, Inc. v. Dixon concludes that a restraint broader than needed to protect the employer's legitimate business interest fails — and the court struck the covenant rather than narrowing it, leaving reformation practice unaddressed in the territory.
The sum total of all these factors leads the Court to conclude that the restraint involved here is greater than is needed to protect the Plaintiff's legitimate business interest.
See Virgin Islands Diving Schools/Supplies, Inc. v. Dixon, Civil No. 1046/1982 (V.I. Terr. Ct. Oct. 19, 1983).
Case law · 1979-05-19
D.2 Williamson v. HessWilliamson v. Hess — a trial-level Territorial Court decision enforcing a reasonable covenant — applies a five-pronged reasonableness test measured by the circumstances and context in which enforcement is sought, the fact-driven framework a holdover clause would most likely face by analogy.
And this five-pronged test of reasonableness must be measured by the circumstances and context in which enforcement is sought.
See Williamson v. Hess, 16 V.I. 284 (V.I. Terr. Ct. 1979).
Case law · 2014-02-24
D.4 Government of the Virgin Islands v. ConnorPDFGovernment of the Virgin Islands v. Connor states the three-factor Banks analysis a Virgin Islands court would run before extending pre-Banks trial-level covenant reasonableness law to a trailing-assignment clause — prior V.I. adoption, the majority position elsewhere, and the soundest rule for the Virgin Islands.
courts should consider “three non-dispositive factors” to determine Virgin Islands common law: “(1) whether any Virgin Islands courts have previously adopted a particular rule; (2) the position taken by a majority of courts from other jurisdictions; and (3) most importantly, which approach represents the soundest rule for the Virgin Islands.”
See Gov't of the V.I. v. Connor, 60 V.I. 597 (V.I. 2014).
Case law · 2011-12-15
D.5 Banks v. International Rental & Leasing Corp.Banks v. International Rental & Leasing Corp. holds that Virgin Islands courts are not compelled to mechanically apply the most recent Restatement — so every unlitigated invention-assignment question in the territory is resolved by a court's own rule selection, not a pre-set doctrine an employer can rely on.
We conclude that the Legislature did not intend for section 4 of title 1 to compel this Court to mechanically apply the most recent Restatement.
See Banks v. Int'l Rental & Leasing Corp., 55 V.I. 967 (V.I. 2011).
Case law · 2011-06-06
D.6 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).
Do not treat the U.S. Virgin Islands like a mainland state with settled invention-assignment doctrine — and do not treat it like a carve-out state either. There is no statute, no notice safe harbor, and no Virgin Islands decision on employee inventions, so every rule on this page short of the federal baseline is a prediction about how a court would choose its common law under the territory's rule-selection methodology . Draft with present-assignment (hereby assigns) language so title passes automatically rather than resting on a future promise, because ownership starts with the inventor and an employer's rights are only as good as the words that transfer them . Keep any trailing or holdover assignment narrow, short, and tied to the employer's confidential information and pre-departure work, because the territory's only on-point restraint law disfavors agreements which restrain employment and struck the one overbroad covenant it examined , while its reasonableness testing is context-driven and fact-intensive .