invention-assignment-agreement

name	invention-assignment-agreement
language	en
description	Drafts a U.S. Confidentiality and Invention Assignment Agreement (CIAA/PIIA) for employee or contractor onboarding. Covers confidential information, DTSA immunity notices, state-specific invention assignment carve-outs (CA, DE, IL, KS, MN, NC, UT, WA), present-tense IP assignment, work-made-for-hire, restrictive covenants, and prior invention disclosure. Use when drafting IP assignment agreements, onboarding employees or contractors, or protecting trade secrets in employment contexts. Trigger keywords: CIAA, PIIA, invention assignment, confidentiality agreement, IP assignment, trade secret, non-compete, non-solicitation, work made for hire, employee onboarding IP.
tags	["agreement","corporate","drafting","research","transactional"]

Confidentiality and Invention Assignment Agreement (CIAA/PIIA)

Drafts an execution-ready CIAA securing company IP and trade secrets while complying with state invention assignment statutes and federal DTSA requirements.

Prerequisites

1. Parties — company legal name, state of formation, address; employee/contractor name, address, title
2. Governing jurisdiction — determines invention carve-outs, non-compete enforceability, required exhibits
3. Relationship type — employee vs. independent contractor (affects WMFH eligibility)
4. Prior inventions — pre-employment IP to exclude (Exhibit A)
5. Restrictive covenants — non-solicitation of employees/customers, non-compete (if any)
6. Existing agreements — prior CIAAs, equity awards, offer letters to reconcile

Core Workflow

1. Parties & Recitals

• Full entity name, jurisdiction, principal address
• Employee name, address, role
• Recitals: access to CI, IP creation during employment, legitimate business interest

2. Confidential Information

Definition categories:

Category	Examples
Technical	Source code, algorithms, formulas, processes, designs, R&D data
Business	Strategic plans, pricing, financials, customer/supplier lists
Personnel	Compensation, performance reviews, org structure
Third-party	Information received under NDA from customers, partners, suppliers

Standard exceptions (all four required):

1. Publicly available through no breach by employee
2. Rightfully in employee's possession pre-disclosure (written records required)
3. Received from third party without confidentiality obligation
4. Independently developed without use of company CI (written records required)

Obligations: strict confidence; company-purposes only; reasonable care standard; return all materials + written certification on termination (including personal devices/cloud); no copying/removal beyond job requirements.

Duration: trade secrets — indefinite (never cap with fixed term); other CI — [3–5 years] post-termination.

DTSA immunity notice (mandatory post-May 11, 2016):

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: (i) is made in confidence to a federal, state, or local government official or to an attorney solely for the purpose of reporting or investigating a suspected violation of law; or (ii) is made in a complaint or other document filed in a lawsuit if such filing is made under seal.

Omitting this bars exemplary damages and attorney's fees under 18 U.S.C. § 1833(b).

3. Invention Assignment

Scope: ideas, discoveries, improvements, works of authorship, software, algorithms, processes, know-how, data — whether or not patentable, made alone or jointly during employment.

Assignment triggers (any one):

1. Relates to company's current or anticipated business/R&D
2. Uses company equipment, facilities, time, materials, or trade secrets
3. Results from assigned tasks

Assignment language: use present-tense "hereby assigns" for immediate vesting. Include fallback "agrees to assign" for jurisdictions not recognizing present assignment of future rights.

State invention carve-outs:

State	Statute	Notes
California	Labor Code § 2870–2872	Must attach full § 2870 as exhibit (required by § 2872) [VERIFY]
Delaware	19 Del. C. § 805	Similar to CA scope [VERIFY]
Illinois	765 ILCS 1060/2	Similar to CA scope [VERIFY]
Kansas	K.S.A. § 44-130	Similar to CA scope [VERIFY]
Minnesota	Minn. Stat. § 181.78	Similar to CA scope [VERIFY]
North Carolina	N.C. Gen. Stat. § 66-57.1	Similar to CA scope [VERIFY]
Utah	Utah Code § 34-39-3	Similar to CA scope [VERIFY]
Washington	RCW § 49.44.140	Similar to CA scope [VERIFY]

Prior inventions (Exhibit A): employee lists excluded pre-employment IP or represents none exists. Use checkbox: ☐ No prior inventions / ☐ See attached list.

Disclosure: employee promptly discloses all inventions in writing; company confirms ownership in writing.

Cooperation / POA: employee cooperates post-termination at company expense; irrevocable POA coupled with interest, surviving death/incapacity, limited to IP prosecution for assigned inventions.

Copyright / WMFH: works within scope of employment are WMFH under 17 U.S.C. § 101; include backup assignment for non-qualifying works. Contractors: WMFH limited to enumerated categories — always include backup assignment.

Moral rights: employee waives to extent permitted by law. Not waivable in certain non-US jurisdictions.

4. Restrictive Covenants

Non-solicitation of employees (generally enforceable):

• Prohibit direct/indirect solicitation or recruitment
• Limit to employees with whom departing employee worked or about whom they obtained CI
• Duration: 12 months post-termination

Non-solicitation of customers (generally enforceable):

• Competitive-purpose solicitation only; "customers" = material contact during final [12–24] months
• Duration: 12–24 months post-termination

Non-compete — check jurisdiction before including:

Jurisdiction	Status
California	Void (Bus. & Prof. Code § 16600; 2023 amendments reinforce) [VERIFY]
North Dakota	Generally prohibited
Oklahoma	Generally prohibited
Minnesota	Prohibited for agreements on/after Jan. 1, 2023 [VERIFY]
All others	Permissible if reasonable in scope, duration, geography

If including: 6–12 months; geographic scope = actual operating territory; activity scope = actual products/services. Include blue-pencil/reformation clause. Check if jurisdiction requires independent consideration for post-hire covenants.

5. General Provisions

Provision	Key points
Governing law	Specify state; some states void choice-of-law stripping home-state protections
Forum selection	State/federal courts in [county/state] or AAA Employment Arbitration
Entire agreement	Supersedes prior CIAAs; carve out offer letter, equity, handbook
Severability	Reform invalid provisions to minimum; sever if court declines
Amendment	Written, signed by both parties
Assignment	Company assigns to successors; employee requires consent
Tolling	Covenant periods tolled during breach (verify enforceability)
Survival	CI, IP assignment, covenants, cooperation survive termination
Counterparts	Electronic signatures acceptable

6. Acknowledgments & Execution

Employee acknowledges:

• Read and understands the agreement
• Opportunity to consult independent counsel
• Voluntarily executed, without duress
• Restrictions are reasonable
• Received DTSA immunity notice
• (CA / applicable states) Received copy of Labor Code § 2870

Signature blocks: employee (signature, name, date) + company officer (signature, name, title, date).

7. Exhibits

• Exhibit A — Prior Inventions Disclosure
• Exhibit B — Cal. Labor Code § 2870 full text (CA only, required by § 2872 [VERIFY])

Guidelines

• Present-tense assignment: "hereby assigns" vests on creation; "agrees to assign" alone may require a second transfer act
• DTSA notice: mandatory post-May 11, 2016; omission bars exemplary damages/fees under 18 U.S.C. § 1833(b)
• CA non-competes: void regardless of choice-of-law clause if employee is CA-based; SB 699 / AB 2288 reinforce [VERIFY effective dates]
• Multi-state: include carve-outs for all states where employees work; consider jurisdiction addenda
• Trade secret duration: statutory protection is indefinite — never cap with fixed term
• Contractor WMFH: limited to enumerated 17 U.S.C. § 101 categories; always add backup assignment
• Post-hire consideration: IL, WA, MN require independent consideration (raise, bonus, promotion) for restrictive covenants after hire [VERIFY]
• Verify all [VERIFY] citations against current codifications before use

Troubleshooting

• Missing DTSA notice: employer loses right to exemplary damages and attorney's fees — add notice and have employee re-acknowledge
• No state carve-out for employee's jurisdiction: assignment clause may be unenforceable for personal-time inventions — add applicable statutory language
• Non-compete in prohibited state: clause is void and may expose employer to penalties (CA) — remove or convert to non-solicitation
• No prior invention disclosure: ambiguity over pre-existing IP ownership — require Exhibit A even if employee checks "none"
• Contractor treated as employee for WMFH: misclassification risk — always include backup assignment regardless of relationship type