This checklist reviews a CIIAA as a document. It can be used with the OpenAgreements CIIAA or another draft. The review starts with assignment scope and state carve-outs: later confidentiality, cooperation, and return provisions cannot cure an unlawful claim to an employee's invention. The California invention-assignment guide illustrates how state law can limit the form; final application depends on the employee's jurisdiction.
For each draft, the review identifies the employee's work jurisdiction and locates the operative assignment clause and prior-inventions schedule before comparing the clause, statutory carve-out, and required notice side by side. A conflict belongs at the exact clause; a generic saving clause does not substitute for a correctly bounded assignment. The remaining review covers confidentiality, protected disclosures, return of property, and cooperation.
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Assignment mechanics
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. On a touch screen, a tap shows all 2 sources in this group.
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.
Sources for this section
RCW 49.44.140(1) makes an assignment clause inapplicable to an invention the employee developed entirely on their own time without the employer's equipment, supplies, facilities, or trade secret information, unless the invention relates directly to the employer's business or to its actual or demonstrably anticipated research or development, or results from the employee's work.
A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.
See RCW 49.44.140(1).
RCW 49.44.140(1) declares that any provision purporting to apply to an own-time, own-resource invention outside the statute's exceptions is to that extent against the public policy of the state and void and unenforceable.
Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
See RCW 49.44.140(1).
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Carve-outs and notices
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.
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.
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.
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.
Sources for this section
RCW 49.44.140(1) makes an assignment clause inapplicable to an invention the employee developed entirely on their own time without the employer's equipment, supplies, facilities, or trade secret information, unless the invention relates directly to the employer's business or to its actual or demonstrably anticipated research or development, or results from the employee's work.
A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.
See RCW 49.44.140(1).
RCW 49.44.140(3) requires an employer whose agreement contains an assignment provision to give the employee, at the time the agreement is made, a written notification that the agreement does not apply to a qualifying own-time, own-resource invention.
If an employment agreement entered into after September 1, 1979, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time
See RCW 49.44.140(3).
RCW 49.44.150 requires the employee, even after meeting the burden of proving the RCW 49.44.140 carve-out conditions, to disclose all inventions being developed for the purpose of determining employer or employee rights.
Even though the employee meets the burden of proving the conditions specified in RCW 49.44.140 , the employee shall, at the time of employment or thereafter, disclose all inventions being developed by the employee, for the purpose of determining employer or employee rights.
See RCW 49.44.150.
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Confidentiality
Check what the defined term actually covers. An employer holds plenty of information it does not own, and a definition tethered only to the employer's own information leaves every inbound confidentiality obligation without a flow-down to the people handling the information. Look for both market grounds: information a third party entrusted to the employer in confidence, and information the employer has agreed to treat as confidential. Neither covers the other — entrustment reaches an implied duty with nothing signed, agreement reaches information promised protection but not yet received. A separate third-party-information covenant does not substitute: it governs the employee's conduct, it does not pull the information inside the defined term the rest of the agreement runs on.
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.
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Permitted disclosures and protected conduct
The agreement must give the federal whistleblower-immunity notice, or cross-reference a reporting policy the employee actually receives. A confidentiality and invention assignment agreement signed today governs the use of confidential information, so the notice duty applies to the draft under review. If the draft omits the notice, the employer cannot be awarded the Defend Trade Secrets Act's exemplary damages or attorney fees in an action against an employee who was not given notice.
The confidentiality definition and restrictions must leave covered employees free to discuss wages and working conditions. Federal labor law protects private-sector employees' concerted activity for mutual aid or protection, including joining together to improve wages and working conditions. Under the work-rule standard the Board adopted in 2023, a rule with a reasonable tendency to chill that activity is presumptively unlawful unless the employer shows a legitimate and substantial interest it cannot serve with a narrower rule. The standard may change; the statutory right does not depend on it. An express carve-out for discussions of pay and working conditions makes the definition's reach on that point explicit.
Sources for this section
The DTSA requires an employer to give notice of the trade-secret whistleblower immunity in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.
An employer shall provide notice of the immunity set forth in this subsection in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.
See 18 U.S.C. § 1833(b)(3)(A).
An employer complies with the notice requirement by cross-referencing a policy document, provided to the employee, that sets out the employer's reporting policy for a suspected violation of law.
An employer shall be considered to be in compliance with the notice requirement in subparagraph (A) if the employer provides a cross-reference to a policy document provided to the employee that sets forth the employer's reporting policy for a suspected violation of law.
See 18 U.S.C. § 1833(b)(3)(B).
An employer that does not give the required notice may not be awarded exemplary damages or attorney fees in a trade-secret action against an employee who did not receive it.
If an employer does not comply with the notice requirement in subparagraph (A), the employer may not be awarded exemplary damages or attorney fees under subparagraph (C) or (D) of section 1836(b)(3) in an action against an employee to whom notice was not provided.
See 18 U.S.C. § 1833(b)(3)(C).
Section 7 gives employees the right to engage in concerted activities for mutual aid or protection, the statutory basis for carving discussion of pay and working conditions out of confidentiality restrictions.
Employees shall have the right to self-organization, to form, join, or assist labor organizations, to bargain collectively through representatives of their own choosing, and to engage in other concerted activities for the purpose of collective bargaining or other mutual aid or protection, and shall also have the right to refrain from any or all of such activities except to the extent that such right may be affected by an agreement requiring membership in a labor organization as a condition of employment as authorized in section 158(a)(3) of this title.
See 29 U.S.C. § 157 (NLRA § 7).
The National Labor Relations Board protects the right of private-sector employees, with or without a union, to join together to improve wages, benefits, and working conditions.
Established in 1935, the National Labor Relations Board is an independent federal agency that protects employees from unfair labor practices and protects the right of private sector employees to join together, with or without a union, to improve wages, benefits and working conditions.
See NLRB Office of Public Affairs, news release of Feb. 21, 2023 (agency mission statement).
Under the work-rule standard the Board adopted in 2023, a rule with a reasonable tendency to chill employees from exercising their Section 7 rights is presumptively unlawful unless the employer proves a legitimate and substantial business interest it cannot advance with a more narrowly tailored rule.
Under the new standard adopted in Stericycle, the General Counsel must prove that a challenged rule has a reasonable tendency to chill employees from exercising their rights. If the General Counsel does so, then the rule is presumptively unlawful. However, the employer may rebut the presumption by proving that the rule advances a legitimate and substantial business interest and that the employer is unable to advance that interest with a more narrowly tailored rule.
See Stericycle, Inc., 372 NLRB No. 113 (2023); NLRB Office of Public Affairs, Board Adopts New Standard for Assessing Lawfulness of Work Rules (Aug. 2, 2023).
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Post-employment obligations
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.
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.
Sources for this section
Guth holds that invention-assignment provisions limitless in extent of time and in subject matter of invention are contrary to public policy.
those provisions of the contract which were limitless in extent of time and in subject matter of invention were contrary to public policy.
See Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).
Guth holds that invention-assignment provisions limitless in extent of time and in subject matter of invention are contrary to public policy.
those provisions of the contract which were limitless in extent of time and in subject matter of invention were contrary to public policy.
See Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934).
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Return, monitoring, and conduct
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.
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Technology and compliance controls
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.