We prosecute and defend claims alleging unreasonable, over-reaching restrictions on post employment competition.

We prosecute claims asserting the unenforceability on public policy grounds of overreaching contracts requiring assignment of patents and inventions of physicians, engineers and scientists whether they are employees or contractors.

A brilliant facet of the American experiment is the constitutionally impelled patent monopoly for the individual inventor.  For more than two centuries this incentive has unleashed individual tinkerers and moonlighters to mine their intellectual capital, originally in their barns, and more recently in their garages and basement labs.

Knowledge is a scarce resource. The education, know-how and intellectual capital of America’s physicians, scientists and engineers, in today’s medical and scientific knowledge based economy, are even scarcer, more precious resources.

Yet many hospitals, academic and research institutions, and knowledge based technology companies routinely require physicians, scientists and engineers to sign contracts purporting to require the individual, whether an employee or a contractor, to assign all of his patents and inventions to his employer regardless of whether the individual’s duties and responsibilities are inventive in nature.

In Federalist Paper 43 James Madison said that the “public good fully coincides” with the individual economic incentive to create “useful inventions.”  As Abraham Lincoln explained the patent law enables the ingenious to profit; it added "the fuel of interest to the fire of genius.”

The Law Office of Richard Goren contends that overreaching restrictions on the individual’s free exercise of his intellectual capital in order to create useful things and devices for his own account injures the public interest.

“The public interest … [lies] in every person’s carrying on his trade freely; all interference with individual liberty of action in trading, and all restraints of trade of themselves, if there is nothing more, are contrary to public policy, and therefore void.”  Nordenfelt v. Maxim Nordenfelt Guns, 1894 A.C 535, 565 (Macnaghten, J.).

Judge Edward Harrington, a United States District Court Judge for the District of Massachusetts explained in dicta:
  • There is a “strong public policy discouraging contracts that create an unreasonable restraint on trade. For over one hundred years, courts have looked skeptically upon employment contracts that require an employee to assign his inventions to his employer. … Where such contracts are open-ended with respect to time limit or subject matter, they may be considered unenforceable as against public policy.
The American Law Institute Restatement Third of Employment Law (April 2011 draft) © 2011, American Law Institute, espouses the evolving principle that to be enforceable an agreement requiring an employee to assign his patents to the employer must be reasonable. 

Very much like post-employment restrictions on competition, to be enforceable the inventions assignment agreement must be reasonable in scope. Among other things to be examined to determine reasonableness under the circumstances are: the duties and responsibilities of the inventor; whether the inventor has any managerial, policy making functions; whether in claiming ownership of the invention, the inventor has breached any special or fiduciary duty he owes to his employer; whether the employment contract precludes moonlighting; whether the inventor made any material use of his employer’s resources or personnel; whether the inventor’s creative efforts were conducted on his own time and expense without use of his employer’s trade secrets or confidential information; whether the Eureka moment and subsequent reduction to practice occurred as a direct result of the inventor’s performance of his duties and responsibilities; and,  whether the creative efforts took place outside of the employer’s premises.

Whether an inventions assignment agreement is reasonable in scope necessarily can only be made on a case by case basis.

You take a job as a software engineer for a medical device company. Your employment contract, a standard form for all employees, provides that any invention you conceive or reduce to practice during the term of your employment belongs to your employer. The contract does not preclude you from moonlighting on your own time.

Not all of your inventions should belong to the medical device company.  Suppose you invent a medical device at home on your own time, at your sole expense and without use of the employer’s resources, facilities or proprietary knowledge. The only software involved is commercially available off the shelf or open source software. Suppose it is a non-medical invention. Or, suppose it is a medical invention but completely unrelated to your engineering duties or to the company’s business. 

Where the Eureka moment or the reduction to practice of an invention is founded upon the engineer’s general knowledge and experience, can the employer assert ownership of all of his employee’s intellectual capital?

If the same invention would be useful in the employer’s business but is completely unrelated to your duties or responsibilities, should the employer’s standard employment contract requiring assignment of all inventions be enforceable?

Or should you own the invention but your employer have a “shop right,” a non-assignable royalty free license to use the invention in its business?

Where the employer has no skin in the game, and there is no material use of its facilities, personnel or trade secrets, enforcement of an unreasonable inventions covenant should be denied on public policy grounds.

The Law Office of Richard Goren contends that if the employee or contractor, whether an engineer, scientist, physician or factory manager, is not hired or assigned to do inventive work, a patent or inventions assignment agreement is not reasonable in scope to the extent applied to inventions created off premises, on the inventor’s own time and at his sole expense, without use of his employer’s trade secrets or confidential information and without material use of the employer’s resources provided the inventions do not relate directly to a policy making function performed by the employee or contractor and provided the employee or contractor is not acting in bad faith.

The Law Office of Richard Goren contends that if the employee or contractor, whether an engineer, scientist, physician or factory manager, is employed to do inventive work,that not all inventions belong to the employer. For example is it reasonable that an engineer or scientist who is paid to invent medical devices should be required to assign to his employer a patent for a consumer kitchen product conceived by the inventor at home on his own time and expense?

No One Owns Engineer, Scientist Or Physician’s Knowledge

No one other than the individual engineer, scientist or physician has a property right in the knowledge, experience, and intuition she has accumulated over decades of post secondary education, training and experience.  If and to the extent a hospital, university, research institution or technology company insists the individual has contracted away her intellectual capital, public policy requires a court to deny or limit the enforceability of that contract as the circumstances may equitably warrant solely to the extent necessary to protect trade secrets or good will of the hospital, university, research institution or technology company.

Thus, public policy supports a limiting and narrow interpretation of broad, all encompassing inventions assignment contracts.

Where an individual’s livelihood and fundamental property rights are at stake, a Court should use its sharpest red pencil to hold unenforceable an “all inventions” assignment contract which as applied either does not serve legitimate business interests or is not “consonant with the public interest.” See Boulanger v. Dunkin' Donuts Inc., 442 Mass. 635, 639-40 (2004). Then in a second blue pencil pass, any surviving provisions must be trimmed so as to be “reasonably limited in time and space” under the circumstances and not injurious to the public interest.


While employees are subject to a duty not to compete with their employers, an employee who does not make or implement policy with substantial independent discretion has no common law duty of loyalty precluding him from moonlighting on his own time even for a competitor provided he does not use or disclose his employer’s confidential information.

So an employer wishing to restrict moonlighting by such a non-managerial employee must have an enforceable written agreement. To be enforceable the restriction must be reasonably tailored in scope, geography and time to further a protectable interest of the employer. An employer may have a legitimate protectable interest in its confidential information, its customer relationships, and its investment in the employee’s reputation in the market or in the purchase of a business owned by the employee.

But no employer owns your brain, your intellectual capital and your general knowledge and experience.  An employer cannot claim that its confidential information includes information acquired by employees or contractors in increasing their general experience, knowledge and skills in performing their ordinary duties.

Because restraints of trade are antithetical to the public interest, restricting ordinary competition can never be a legitimate business purpose.  So where a hospital, research institute, or technology company does not preclude an employee or a contractor from outside business activities, a court should refuse to enforce a contract to the extent it would prevent the employee from employing his intellectual capital on his own time and expense in competition with the hospital, research institute, or technology company without use of the employer’s trade secrets, confidential information or resources.