Confidentiality and Invention Assignment Agreement Reviewer Checklist

Confirm the assignment clause effects a present transfer of covered inventions, not only a future promise. The usual formulation pairs a present assignment with an agreement to assign later-arising inventions, so the company has an immediate ownership hook while still covering inventions that do not yet exist at signing.

Confirm the agreement does not purport to assign inventions that applicable law leaves with the employee. The assignment clause, state-specific notice, and survival language should all point the same way: company inventions transfer, but inventions protected by an own-time carve-out or other state-law limit do not. A.1A.2

If the draft covers inventions made after signing, check whether it includes a promise to assign or agree to assign those later-arising inventions. This is the forward-looking companion to present assignment language; without it, the agreement may be strong for existing inventions but thin for inventions conceived later during employment.

Where the agreement addresses copyrightable works, check that it treats qualifying employee works as works made for hire and also includes an assignment backstop. The backstop matters because not every work that a company wants to own will fit the statutory work-made-for-hire categories.

If patentable inventions are in scope, check whether the assignment reaches priority claims and later patent-family filings, including continuations, continuations-in-part, divisions, reissues, and foreign counterparts. This prevents the assignment from stopping at the initial disclosure while later filings around the same invention remain ambiguous.

If the draft includes moral-rights language, confirm it is framed as a waiver or assignment only to the extent applicable law permits. A blanket transfer of non-transferable rights overstates what the employee can give and should be narrowed to a lawful waiver mechanism.

For federally funded, defense, or government-contract work, check whether the agreement lets the company direct assignment or licensing to the United States or another required third party. For ordinary private-sector employment, this may be unnecessary complexity.

Confirm the agreement carves out inventions developed entirely on the employee's own time, without company resources or trade secrets, that do not relate to the company's business or research and do not result from company work. In statute states this is the legal floor; elsewhere it is the contract boundary that keeps the assignment from looking overbroad. B.1

Check that the employee has a schedule or other mechanism to identify prior inventions excluded from the assignment, and that the agreement records whether the list is complete. The disclosure is the clean boundary between what the employee brought to the company and what the company later claims.

Confirm the agreement gives written notice of any statutory own-time invention carve-out in the signed agreement itself. Several states require written notice, and embedding the notice in the agreement avoids a separate proof problem over whether the employee received it. B.2

If the draft requires disclosure of inventions the employee believes are carved out, confirm the duty is limited to review and does not convert protected employee inventions into assigned company property. The disclosure mechanism should help classify inventions, not erase the carve-out. B.3

Where employee-owned or prior IP may be incorporated into company products, check whether the company receives a license to use that embedded IP. This is situational: it should solve an actual product-use dependency rather than swallow all employee property as a workaround around the carve-out.

If the agreement includes a residuals or general-knowledge carve-out, confirm it preserves the employee's ordinary skill, experience, and unaided memory while still protecting true confidential information and trade secrets. This keeps confidentiality from functioning as a disguised post-employment restraint.

Check whether the confidentiality term distinguishes trade secrets from ordinary confidential information. A tiered structure can keep trade secrets protected while giving non-trade-secret confidential information a more practical finite duration.

Where trade secrets are covered, check whether the duty lasts only while the information remains a trade secret. That formulation tracks the legal reason for protection and avoids an untethered indefinite obligation for information that no longer qualifies.

Confirm the agreement does not require assignment of inventions conceived after employment beyond what the governing jurisdiction permits. The safest baseline is to limit assignment to inventions made during employment and avoid post-employment holdover language unless state law and business need both support it. D.1

Check that post-termination cooperation duties are limited to reasonable times, reasonable notice, and reimbursed out-of-pocket expenses. The obligation should read as ministerial help with filings and enforcement, not as an open-ended restraint on the former employee.

Confirm the agreement includes further-assurances language and, where appropriate, an attorney-in-fact appointment coupled with an interest. These mechanics let the company perfect or record title if a former employee later cannot or will not sign routine documents.

If the draft requires invention records or notebooks, check that it says those records are company property and must be maintained with enough detail to support disclosure, prosecution, or ownership review. The duty should support the invention process rather than create a vague paperwork breach.

Where the draft states a duration for post-employment IP assistance, confirm the endpoint is tied to the relevant IP or another defensible period. A defined duration helps keep the surviving duty narrow and administrative.

If the agreement requires post-termination disclosure of later inventions or filings, confirm that window stays within the governing jurisdiction's holdover limits. Treat the trailing disclosure duty like a holdover clause: it needs a lawful scope, a clear duration, and a reason tied to company work. D.2

If company information may sit on personal devices, accounts, or cloud services, check whether the return clause also requires deletion and reasonable verification. Physical return language alone does not cover modern bring-your-own-device storage.

If the company monitors systems or devices, check whether the agreement gives a no-expectation-of-privacy and monitoring disclosure consistent with applicable notice laws. The clause should match the actual monitoring program rather than reserve a surveillance right the company does not operate.

If the agreement restricts competing or conflicting work during employment, confirm the restriction ends with employment and does not blur into a post-employment non-compete. During-employment loyalty language belongs in a different risk category than a continuing restraint after termination.

For employees handling controlled technology or technical data, check whether the agreement prohibits export or re-export in violation of applicable law. This is most useful when the employee's work actually touches export-controlled materials.

If employees use generative AI or automated coding tools, check whether the agreement restricts submitting company confidential information, source code, or work product into unauthorized tools. The clause should align with the company's actual acceptable-use and security policies.

For software roles, check whether the agreement addresses unauthorized introduction of copyleft or other open-source components into company products. The restriction should point to policy and approval workflow rather than ban ordinary developer knowledge or lawful open-source use outright.