Proprietary Information and Inventions Agreement (PIIA)

Drafts an enforceable PIIA protecting company IP and confidential information while complying with state invention-assignment statutes.

Prerequisites

Collect before drafting:

Parties — company legal name, state of organization, principal office; individual's full name, address, role/title
Effective date and relationship type (employment vs. consulting)
Governing law jurisdiction
Prior inventions — pre-existing IP the individual intends to exclude
Existing agreements — offer letter, equity docs that may overlap

Quick Start

Gather prerequisites above
Determine if individual works in a state with invention-assignment statute (see table below)
Draft sections in order: Introduction → Confidentiality → Invention Assignment → General Provisions
Attach Prior Inventions Exhibit (even if blank)
Include DTSA immunity notice verbatim
Validate against pitfalls checklist

Core Sections

1. Introduction & Consideration

Full legal names, addresses, entity type
State PIIA is a material condition of employment/engagement
Consideration: access to proprietary information + compensation + engagement itself

2. Confidentiality

Proprietary Information definition — include:

Technical data, trade secrets, know-how, R&D, product plans
Business strategy, financials, pricing, customer/supplier lists
Information in any form (written, oral, electronic, visual)

Standard carve-outs: publicly available (not via breach), independently developed, received from unrestricted third party.

Obligations:

No disclosure without written authorization; use only for assigned duties
Care standard: at least same as own confidential info, no less than reasonable care
No storage on personal devices/unapproved systems
Obligations survive termination indefinitely while info remains confidential

Return of materials: immediate return of all documents, files, devices, credentials on termination; written certification of deletion; company right to remote wipe.

3. Invention Assignment

"Inventions" defined as: all discoveries, developments, designs, ideas, improvements, processes, software, works of authorship — patentable or not.

Covered if any of: (a) relate to company's actual or anticipated business/R&D, (b) result from work for the company, (c) developed using company equipment, facilities, or trade secrets.

State invention-assignment carve-outs (mandatory):

| State | Statute | Core protection | |---|---|---| | California | Lab. Code § 2870 | Own time, no company resources, unrelated to business | | Delaware | 19 Del. C. § 805 | Same framework | | Illinois | 765 ILCS 1060/2 | Own time, no company resources | | Kansas | K.S.A. § 44-130 | Similar protection | | Minnesota | Minn. Stat. § 181.78 | Own time, no company resources, unrelated | | North Carolina | N.C.G.S. § 66-57.1 | Similar framework | | Utah | Utah Code § 34-39-3 | Own time, no company resources | | Washington | RCW 49.44.140 | Own time, no company resources, unrelated |

Include applicable statutory notice verbatim when individual works in a covered state.

Assignment clause: use "hereby assigns and agrees to assign" — worldwide, all IP rights. For works of authorship: "work made for hire" + fallback assignment.

Prior Inventions Exhibit: individual lists excluded inventions (title, date, description). If blank → representation that none exist. Improvements using company resources → assigned to company.

Cooperation: prompt disclosure of all inventions; execute IP filings; survives termination with reimbursement + reasonable rate; irrevocable power of attorney (coupled with interest) as fallback.

4. General Provisions

DTSA Immunity Notice (18 U.S.C. § 1833(b)) — REQUIRED verbatim:

NOTICE: 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 federal, state, or local government official, either directly or indirectly, 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 other proceeding, if such filing is made under seal.

Include: governing law & forum selection, consent to jurisdiction, entire agreement clause, amendment by signed writing only, severability with blue-pencil language, relationship to other agreements.

Signature block: individual (with acknowledgment of counsel opportunity) + authorized company officer. Attach Prior Inventions Exhibit.

Pitfalls & Checks

State carve-outs are non-negotiable — never draft assignment overriding statutory protections; include verbatim notice where required
Avoid overbreadth — unreasonable restraints risk unenforceability
DTSA notice must appear in substantially statutory form
Post-termination cooperation must not create uncompensated work violating wage/hour laws
Consulting vs. employment — copyright work-for-hire doctrine is narrower for independent contractors; verify relationship qualifies
Multi-state/international — flag conflicts of law; mandatory local protections override choice-of-law clauses