casemark/ciia-agreement

Confidentiality and Invention Assignment Agreement (CIIA)

Drafts an enforceable CIIA protecting company IP and trade secrets while complying with state invention assignment statutes and federal trade secret law.

Prerequisites

Gather before drafting:

1. Company info — legal entity name, state of incorporation, address
2. Employee/contractor info — full name, address, role, start date
3. Governing jurisdiction — controls invention carve-outs, restrictive covenants, consideration requirements
4. Company IP profile — proprietary information types, R&D activities, industry
5. Existing agreements — prior NDAs, CIIAs, employment or equity agreements to reconcile
6. Restrictive covenant preferences — non-solicitation/non-compete desired (with jurisdiction awareness)

Quick Start

1. Identify governing jurisdiction — this drives every downstream decision
2. Research uploaded documents for existing NDAs/CIIAs, formation docs, offer letters
3. Draft sections in order below, applying jurisdiction-specific rules
4. Attach required exhibits (Prior Inventions; CA §2870 if applicable)
5. Mark uncertain citations with [VERIFY] for attorney review

Document Structure

1. Preamble and Parties

• Full legal entity name, type, address
• Employee full name, address
• Effective date
• If contractor: adjust terminology; note different enforceability standards may apply

2. Recitals

Frame business justification — employee access to confidential information, IP creation potential, legitimate business interests. Incorporate company-specific facts from uploaded documents.

3. Confidential Information

Definition — all non-public information providing competitive advantage:

| Category | Examples | |---|---| | Technical/trade secrets | Formulas, algorithms, source code, processes | | Business | Strategic plans, pricing, financials, customer lists | | Product/service | Specs, designs, roadmaps, R&D | | Personnel | Compensation data, org structures | | Relationships | Customer/supplier identity, deal terms |

Standard exclusions: publicly available (not via breach), rightfully pre-possessed, received from non-breaching third party, independently developed.

Obligations: strict confidence, use solely for duties, no unauthorized disclosure, reasonable care standard, no copying/removal except for duties.

Duration: trade secrets indefinite; non-trade-secret info 3–5 years post-termination.

Return/destruction: all materials returned on termination; written certification required. For BYOD/remote: add deletion provisions for personal devices and cloud accounts.

4. Permitted Disclosures

DTSA Whistleblower Immunity Notice (mandatory for agreements entered/updated after 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 is made (i) in confidence to a federal, state, or local government official, either directly or indirectly, or to an attorney, and 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: nothing prohibits reporting law violations to government agencies or cooperating with investigations.

5. Invention Assignment

Scope: all ideas, inventions, discoveries, improvements, works, designs, processes, software, algorithms, know-how — patentable or not, sole or joint, during employment.

Assignment language:

• Present assignment ("hereby assigns") for immediate vesting
• Backup "agrees to assign" for jurisdictions not recognizing present assignment of future rights
• Covers inventions (a) related to company business/R&D, (b) using company resources/time/trade secrets, or (c) related to assigned work

Jurisdiction-specific invention carve-outs:

| State | Statute | Limitation | |---|---|---| | California | Labor Code §2870–2872 | Own-time/own-resources carve-out. Must attach §2870 as exhibit. | | Delaware | 19 Del. C. §805 | Own-time/own-resources carve-out | | Illinois | 765 ILCS 1060/2 | Own-time/own-resources carve-out | | Kansas | K.S.A. 44-130 | Own-time/own-resources carve-out | | Minnesota | Minn. Stat. §181.78 | Own-time/own-resources; must notify employee | | North Carolina | N.C.G.S. §66-57.1 | Own-time/own-resources carve-out | | Utah | Utah Code §34-39-3 | Employment inventions act limitations | | Washington | RCW 49.44.140 | Own-time/own-resources carve-out |

[VERIFY] — confirm current statutory citations at time of drafting.

For multi-state employers: include all applicable carve-outs or create state-specific addenda.

Prior Invention Disclosure (Exhibit A): employee lists pre-existing inventions related to company business; checkbox for "none to disclose"; if blank, treated as representation none exist.

Disclosure obligation: employee promptly discloses all inventions in writing during employment regardless of believed assignability.

Cooperation: employee assists with IP filings at company expense; post-termination includes reasonable compensation plus expenses.

Power of Attorney: irrevocable, coupled with interest, for IP documents if employee unavailable. Limited to already-assigned IP.

Works of authorship: designate as work-for-hire under Copyright Act; backup full assignment; moral rights waiver where permitted.

6. Restrictive Covenants

Evaluate jurisdiction before including any restrictive covenant.

| Type | Duration | Scope Guidance | |---|---|---| | Employee non-solicitation | 12 months | Limit to employees worked with/supervised | | Customer non-solicitation | 12–24 months | Limit to customers with material contact during final 12–24 months | | Non-competition | 6–12 months | Narrow scope, duration, geography |

No non-competes in CA, ND, OK (narrow exceptions for business sales/partnership dissolution only).

Enforceability requirements: reasonable scope/duration/geography, legitimate business interest, adequate consideration (some states require independent consideration post-hire), reformation clause (but draft reasonable — some jurisdictions void rather than reform).

Define terms precisely: "solicit" (direct/indirect), "competitive" (by reference to actual products/services), "customers" (recency + contact based).

7. General Provisions

| Provision | Key Points | |---|---| | Governing law | Specified state, no conflict-of-laws; verify employment context enforceability | | Forum/arbitration | Exclusive venue; if arbitration: rules (e.g., AAA Employment), location, binding | | Entire agreement | Supersedes prior IP/confidentiality agreements; carve out offer letter, handbook, equity | | Severability | Invalid provisions modified to minimum extent or severed | | Amendment | Written, signed by both parties | | Assignment | Company may assign to successors; employee may not | | Notice | Written; personal delivery, email, overnight courier, or certified mail | | Survival | Confidentiality, IP assignment, restrictive covenants survive termination | | Counterparts | Electronic signatures valid |

8. Acknowledgments

Employee acknowledges: read and understood agreement, opportunity to consult counsel, voluntary execution, restrictions reasonable, breach causes irreparable harm (injunctive relief), receipt of DTSA notice, and (if CA) receipt of §2870 copy.

9. Signature Blocks and Exhibits

• Employee: signature, printed name, date
• Company: signature, printed name, title (officer-level), date
• Exhibit A: Prior Inventions Disclosure
• Exhibit B (California): Full text of Labor Code §2870

Pitfalls and Checks

• Jurisdiction first — always identify governing state before drafting; it controls carve-outs, covenants, and consideration
• DTSA notice is mandatory for agreements entered/updated after May 11, 2016
• CA §2870 exhibit is mandatory for California-governed agreements
• Use both assignment forms — "hereby assigns" + "agrees to assign" for maximum enforceability
• Calibrate to role — senior executives support broader covenants; junior employees require narrower scope
• Post-hire consideration — verify whether jurisdiction requires independent consideration beyond continued employment
• Reconcile existing agreements — explicitly state whether CIIA supersedes or supplements prior NDAs/CIIAs
• Mark uncertain citations with [VERIFY] and flag for attorney review