--- name: invention-assignment-agreement title: Confidentiality and Invention Assignment Agreement (CIAA/PIIA) 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.' author: CaseMark author_url: https://github.com/CaseMark/skills/tree/main/skills/legal/invention-assignment-agreement license: Apache-2.0 version: 0.1.0 execution_mode: open jurisdiction: us practice: ip language: en 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