Enforceability TBD: From Status to Contract in Intellectual Property Law

26 Pages Posted: 3 Jun 2016

See all articles by Orly Lobel

Orly Lobel

University of San Diego School of Law

Date Written: June 2, 2016


Much of the recent history of intellectual property has been a move from status to contract, resulting in an unchecked expansion of controls over knowledge beyond the boundaries once drawn in IP law. When employers introduce these contractual arrangements as standard HR provisions, they are imposed without negotiation and largely without notice. Oftentimes new employees are asked to sign these contracts as a “take it or leave it” condition to their continued employment. These provisions may appear in unilateral, generic individual employment contracts or as part of corporate handbooks and manuals. The problem is compounded with the breadth of the contractual clauses, which employ language and terms far more expansive than the recognized boundaries of intellectual property, resulting in uncertainty about their enforceability. The courts employ multifactor tests to determine, ex post, the “reasonableness” of such clauses as non-compete, non-disclosure, innovation assignment, and holdover clauses. These complicated provisions exact a high cost to innovation and job mobility, resulting in the chilling of talent flow and entrepreneurship. They also induce the vertical integration of firms to the detriment of knowledge exchanges and competition.

Keywords: Intellectual Property, Patents, Non-Competes, Trade Secrets, Employment Law, Human Capital, Incentives, Experimental Studies, Behavioral Law and Economics, Antitrust, Competition Law, Innovation Policy, Knowledge Networks, Commons, Contract Theory, Copyright, Creativity, Motivation, Contract Law

JEL Classification: O34, O15, J41, A10, J21, J60, J61, J58, J62, J63, J68, K00, K2, K21, K23, L51, K32, I1, I18, H3, A13

Suggested Citation

Lobel, Orly, Enforceability TBD: From Status to Contract in Intellectual Property Law (June 2, 2016). Boston University Law Review, Vol. 96, 2016, San Diego Legal Studies Paper No. 16-217, Available at SSRN: https://ssrn.com/abstract=2788857

Orly Lobel (Contact Author)

University of San Diego School of Law ( email )

5998 Alcala Park
San Diego, CA 92110-2492
United States

HOME PAGE: http://www.orlylobel.com/

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