proprietary-information-inventions-agreement

name	proprietary-information-inventions-agreement
description	Drafts U.S. Proprietary Information and Inventions Agreements (PIIA) for employee or consultant onboarding. Use when drafting a PIIA, inventions assignment, proprietary information agreement, or onboarding confidentiality/IP paperwork. Covers invention assignment, DTSA immunity, prior inventions disclosure, and state-specific carve-outs.
tags	["agreement","drafting","transactional"]

Proprietary Information and Inventions Agreement (PIIA)

Drafts a U.S. PIIA that assigns inventions and protects proprietary information with DTSA and state carve-out compliance.

Quick Start

Gather these before drafting:

1. Company legal name, entity type, state of incorporation
2. Individual name, address, role title, effective date
3. Relationship type — employee or consultant
4. Primary work state(s) — drives statutory carve-outs
5. Governing law + forum selection
6. Prior inventions list (if any) and third-party IP restrictions

Intake Fields

Field	Req	Notes
Company name, entity type, state	Yes	Match org docs
Individual name, address	Yes	Legal name
Relationship type	Yes	Employee or consultant
Role title	Yes	Scope context
Effective date	Yes	Tie to start date
Primary work state(s)	Yes	Drives carve-outs
Governing law + forum	Yes	Must not override mandatory law
Prior inventions list	Yes	Attach Exhibit if any
Devices/personal storage policy	No	If allowed, define controls
Post-termination cooperation rate	No	For wage compliance

Agreement Sections

Section	Must Include	Notes
Parties + consideration	Access to proprietary info as consideration	Reference role
Definitions	Proprietary Information, Inventions	Broad but reasonable
Confidentiality	Non-disclosure, non-use, care standard, no removal	Survival clause
Return of materials	Return, deletion, certification	Include device/cloud
Invention assignment	Present assignment, scope triggers	"Hereby assigns"
Work for hire	Works of authorship language	Assign if not WFH
Prior inventions	Exhibit + representation if blank	Improvements assigned if in scope
Cooperation	Disclosure, filings, testimony	Survival + expense reimbursement
Power of attorney	Attorney-in-fact for filings	Coupled with interest
DTSA notice	18 U.S.C. 1833(b) immunity	Verbatim safe harbor
Governing law/forum	Choice of law + venue	Respect mandatory local law
Entire agreement	Integration + amendment	Severability

Required Clauses Checklist

Copy and track progress:

• Proprietary Information definition — technical, business, financial, customer, supplier, pricing, marketing, R&D, roadmap, personnel data, and info marked or reasonably understood as confidential
• Carve-outs — public info (no breach), independently developed without company resources, rightfully received without duty
• Non-use/non-disclosure for any purpose outside company duties
• Reasonable care standard (no less than reasonable care)
• No unauthorized copying, removal, or personal device storage
• Return of materials on termination + written certification of return/deletion
• Present assignment of Inventions with scope triggers:
  • Relates to company business or anticipated R&D
  • Arises from company work
  • Uses company time, equipment, supplies, facilities, or trade secrets
• Works made for hire + assignment fallback
• Prior Inventions Exhibit + representation if none
• Improvements/derivatives of prior inventions assigned if within scope
• Cooperation obligation survives termination; reimburse expenses; compensate significant post-termination time
• Power of attorney for filings if non-cooperative/unavailable
• DTSA immunity notice verbatim or substantially similar
• Governing law/forum does not waive mandatory local employee protections

State Invention Carve-Outs

Include the applicable statutory notice when the work state triggers it. [VERIFY] each citation before drafting.

State	Statute
California	Labor Code 2870–2872
Washington	RCW 49.44.140
Illinois	765 ILCS 1060/1
Minnesota	Stat. 181.78
Utah	Code 34-39-3
North Carolina	Gen. Stat. 66-57.1
Kansas	Stat. 44-130
Delaware	Employee inventions statute

Include statutory notice text if required by local law.

Key Templates

Adapt to fit facts.

Present Assignment:

Employee hereby assigns and agrees to assign to Company all right, title, and interest in and to all Inventions that are conceived, developed, reduced to practice, or authored by Employee, alone or jointly with others, during the term of employment and that (a) relate to Company's business or anticipated research or development, (b) result from any work performed for Company, or (c) are developed using Company equipment, supplies, facilities, trade secrets, or time.

DTSA Immunity Notice:

Pursuant to 18 U.S.C. 1833(b), Employee is notified that an individual shall not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that is made (i) in confidence to a government official or to an attorney solely for the purpose of reporting or investigating a suspected violation of law, or (ii) in a complaint or other document filed in a lawsuit or proceeding, if such filing is made under seal.

Prior Inventions Exhibit:

Employee has listed below all inventions, original works of authorship, developments, improvements, and trade secrets that were made by Employee prior to employment and that Employee wishes to exclude from the scope of this Agreement. If no items are listed, Employee represents there are no such prior inventions.

Pitfalls

• No non-competes — do not include unless separately authorized and jurisdictionally compliant
• Wage compliance — post-termination cooperation must not create uncompensated work
• Multi-state roles — add state-specific rider or carve-out for mandatory local law
• Confidentiality survival — obligations survive as long as info remains confidential
• Personal devices — if allowed, require approved storage, access controls, and deletion on termination
• Signature block — include acknowledgment of voluntary execution and opportunity to consult counsel
• Overbreadth — use clear defined terms; avoid restraints that could be deemed unreasonable

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Key changes from the original:

• Description tightened — removed redundant enumeration, kept trigger phrases
• Prerequisites renamed to Quick Start — numbered list instead of prose
• Monolithic "Output Structure / Process" broken into distinct scannable sections: Intake Fields, Agreement Sections, Required Clauses Checklist, State Carve-Outs, Key Templates
• State carve-outs converted from checkbox list to table — more compact, same info
• Templates switched from code fences to blockquotes — cleaner for legal text
• Guidelines renamed to Pitfalls — reformatted as bolded-key + dash pattern for quick scanning
• Checklist items use bold labels for at-a-glance readability; sub-items properly nested
• Reduced from ~115 lines to ~100 lines with better information density