Drafting comprehensive Proprietary Information and Inventions Agreements manually is time-consuming and repetitive, especially when onboarding multiple employees. Lawyers spend hours customizing templates, ensuring compliance with state laws, and incorporating proper IP assignment language, all while risking inconsistencies across agreements.
Drafting comprehensive Proprietary Information and Inventions Agreements requires balancing broad IP protection with state-specific legal limitations, particularly in jurisdictions like California with employee-protective statutes. Attorneys spend hours researching compliance requirements, customizing provisions for different roles, and ensuring enforceability while avoiding overly broad restrictions that courts may strike down.
CaseMark automates PIIA drafting with built-in state law compliance, generating customized agreements that protect confidential information and assign inventions while adhering to jurisdictional requirements. The platform includes mandatory DTSA notices, appropriate scope limitations, and enforceable provisions tailored to your company's needs and the employee's location.
This workflow is applicable across multiple practice areas and use cases
New companies need PIIAs for founders and initial employees to protect IP from inception, ensuring all inventions and proprietary information belong to the company.
Corporate formation attorneys routinely draft PIIAs as essential formation documents to establish clear IP ownership, especially critical for technology startups and companies with valuable trade secrets.
Investors require portfolio companies to have comprehensive PIIAs in place as a condition of funding to ensure the company owns all employee-created IP and protects confidential information.
VC/PE due diligence heavily scrutinizes IP ownership and protection; attorneys need to quickly generate or review PIIAs to satisfy investor requirements and close deals.
M&A due diligence requires reviewing existing PIIAs to confirm IP ownership, and acquirers often require new PIIAs for key employees post-acquisition to protect transferred assets.
M&A attorneys need to verify that target companies have proper PIIAs covering all employees to ensure clean IP transfer, and may need to generate new agreements for retained employees after closing.
IP licensing attorneys need to verify that licensors have proper PIIAs ensuring they own the IP being licensed, and may draft PIIAs for contractors developing licensed technology.
Licensing transactions require confirmation of IP ownership chain; attorneys must ensure PIIAs are in place for all contributors to the licensed IP to avoid ownership disputes.
Corporate governance attorneys implement PIIA policies across organizations to ensure consistent IP protection and compliance with board-mandated confidentiality requirements for executives and directors.
Governance attorneys establish company-wide IP protection frameworks and need standardized PIIAs for board members, executives, and employees to fulfill fiduciary duties of protecting corporate assets.
California Labor Code Section 2870 limits invention assignments to those developed using employer resources, relating to the employer's business, or resulting from work performed for the employer. A compliant PIIA must include specific notice language informing employees of their rights under this statute and cannot assign inventions developed entirely on the employee's own time without company resources and unrelated to company business. CaseMark automatically includes the required statutory notice and properly scopes the assignment provision.
Yes, the Defend Trade Secrets Act of 2016 requires employers to include immunity notice language in any contract or agreement with employees that governs the use of trade secrets or confidential information. Failure to include this notice can prevent the employer from recovering exemplary damages and attorney fees in a trade secret misappropriation lawsuit. CaseMark automatically includes the compliant DTSA notice in the exact language recommended by the statute.
Best practice is to include a prior inventions disclosure exhibit that allows employees to list any inventions, ideas, or proprietary information they developed before joining the company that they want excluded from the assignment. This protects both parties by creating a clear record of what is and isn't assigned. The agreement should state that if the exhibit is left blank, the employee represents there are no prior inventions to disclose. CaseMark generates a properly formatted prior inventions exhibit as part of every PIIA.
A PIIA combines confidentiality obligations with invention assignment provisions, making it more comprehensive than a standard NDA. While both protect confidential information, a PIIA also assigns intellectual property rights to the employer and establishes ownership of work product created during employment. PIIAs are essential for companies in technology, research, and innovation-driven industries where employee-created IP is a core business asset.
While you can use a base template, the agreement must comply with the specific laws of each employee's work location. States like California, Delaware, Illinois, Kansas, Minnesota, North Carolina, Utah, and Washington have statutes limiting invention assignments, requiring specific notice language or scope restrictions. CaseMark addresses this by allowing you to specify the employee's jurisdiction and automatically adjusting provisions to ensure compliance with applicable state laws.