piia

# 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:

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

## Quick Start

1. Gather prerequisites above
2. Determine if individual works in a state with invention-assignment statute (see table below)
3. Draft sections in order: Introduction → Confidentiality → Invention Assignment → General Provisions
4. Attach Prior Inventions Exhibit (even if blank)
5. Include DTSA immunity notice verbatim
6. 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