Confidentiality and Invention Assignment Agreement (CIAA/PIIA)

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:

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:

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:

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

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