What is a PIIA?
A PIIA (Proprietary Information and Invention Assignment Agreement) is a contract that combines two key provisions:
- Proprietary Information (Confidentiality) - Similar to an NDA, this section requires you to keep company information confidential
- Invention Assignment - This section requires you to assign (transfer ownership of) certain inventions, ideas, and intellectual property to your employer
PIIAs are standard in technology, research, and creative industries. They are sometimes called CIIAAs (Confidential Information and Invention Assignment Agreements), IP Assignment Agreements, or simply "invention assignment agreements."
Employers use PIIAs to ensure they own the intellectual property created by employees during their employment. Without an assignment, employees might retain ownership of valuable inventions, creating disputes and hindering the company's ability to commercialize innovations.
NDA vs. PIIA: Key Differences
| Aspect | NDA (Standalone) | PIIA |
|---|---|---|
| Primary Purpose | Protect confidential information from disclosure | Protect confidential information AND assign invention rights |
| IP Ownership | Does not address who owns inventions | Explicitly assigns invention ownership to employer |
| Scope | Information you receive from the company | Information you receive AND ideas you create |
| Prior Inventions | Usually not addressed | Typically requires disclosure and exclusion of prior inventions |
| Duration of IP Rights | N/A (does not transfer IP) | Permanent transfer of assigned inventions |
| Typical Industries | All industries | Tech, biotech, R&D, engineering, creative |
An NDA only requires you to keep secrets. A PIIA requires you to give up ownership of certain creations. This distinction matters significantly for employees who innovate, code, design, or create as part of their work or in their personal time.
What Typically Gets Assigned
The scope of invention assignment varies significantly between agreements. Here is what you might see:
Narrow Assignment (More Employee-Friendly)
- Inventions conceived or developed during work hours
- Inventions using company resources, equipment, or facilities
- Inventions directly related to the company's current business
- Inventions resulting from work assigned to you
Broad Assignment (More Employer-Friendly)
- Any invention "relating to" the company's business (even tangentially)
- Inventions in any field the company "might" enter
- All inventions conceived during employment, regardless of when or where
- Inventions for some period after employment ends (holdover clauses)
Some PIIAs attempt to claim all ideas you have during employment, including those completely unrelated to your job, developed on personal time, without company resources. Many states have laws limiting such overreach, but not all do. Always review the scope carefully.
State Law Protections
Several states have enacted laws protecting employees from overly broad invention assignment clauses. These laws typically require that employees retain rights to inventions developed entirely on their own time, without company resources, and unrelated to company business.
The following states have statutes limiting employer claims on employee inventions:
- California - Labor Code Section 2870 (strongest protection)
- Delaware - Title 19, Chapter 8
- Illinois - 765 ILCS 1060/2
- Kansas - K.S.A. 44-130
- Minnesota - Minn. Stat. Section 181.78
- North Carolina - N.C.G.S. Section 66-57.1
- Utah - Utah Code Section 34-39-3
- Washington - RCW 49.44.140
California's Protection (Model for Others)
California Labor Code Section 2870 is the strongest protection. It provides that employers cannot require assignment of inventions that:
- Were developed entirely on the employee's own time
- Did not use any company equipment, supplies, facilities, or trade secrets
- Do not relate to the employer's business or anticipated business
- Do not result from any work performed for the employer
In California, employers must provide written notice of Section 2870 rights in any contract requiring invention assignment. If your PIIA does not include this notice, the assignment provision may be unenforceable to the extent it violates Section 2870.
Real-World Scenarios
Understanding how PIIAs apply in practice helps you protect your interests. Here are common scenarios:
Weekend App Development
You're a software engineer who builds an unrelated mobile app on weekends using your personal laptop.
Likely yours (in states with protections, if truly unrelated)Side Project Using Work Skills
You're a data scientist who creates a machine learning tool at home that could be useful for your employer's industry.
Depends on specifics (the "relates to" language matters)Idea During Work Hours
You think of an invention during a meeting, even though it's unrelated to the meeting topic or your job.
May belong to employer (conceived during work hours)Using Company Equipment
You develop an unrelated invention at home but used your work laptop to write some code.
Likely company's (used company equipment)Prior Invention Not Disclosed
You had an invention before joining but forgot to list it on the prior inventions disclosure form.
Disputed territory (documentation is critical)Invention After Leaving
You develop an invention 3 months after leaving, in a field your former employer works in.
Check holdover clause (some PIIAs extend 6-12 months)Negotiating Your PIIA
PIIAs are more negotiable than most employees realize. Here are key areas to address:
Prior Inventions Disclosure
Most PIIAs include an exhibit where you list inventions you created before employment. This is critical - anything you do not list may be claimed by the employer later. Be thorough and include:
- Any patents, patent applications, or invention disclosures
- Side projects, apps, or open source contributions
- Works in progress you plan to continue developing
- General descriptions of areas you work on personally
Many employees write "None" on the prior inventions form, even if they have side projects. This creates a presumption that any later-discovered invention was created during employment. Always document your prior work, even if it seems minor.
Scope Limitations to Request
-
Narrow the "relates to" language - Request that it only covers your specific job duties, not the company's entire business or "anticipated" business
-
Exclude personal time inventions - Request explicit language carving out inventions made entirely on personal time without company resources
-
Remove or shorten holdover period - If there is a post-employment assignment period, negotiate it down or eliminate it
-
Add a side project approval process - Request a mechanism to get written confirmation that specific side projects are not covered
-
Include state law notice - If you are in a state with employee invention protections, ensure the required notice is included
Documentation During Employment
To protect your side projects during employment:
- Keep a clear record of when you work on personal projects (time logs, commits, etc.)
- Use only personal equipment and accounts for personal projects
- Do not discuss personal projects at work or with coworkers
- Consider getting written confirmation from the company that specific projects are not covered
- Keep copies of the PIIA and any prior inventions disclosures you submitted
When PIIAs Are Appropriate
PIIAs serve legitimate business purposes in many contexts. Employers are reasonable to require them when:
- R&D roles - Employees hired specifically to invent or create are expected to assign work product
- Significant resources invested - When the employer provides substantial resources, training, or data to enable invention
- Core technology development - Engineers, scientists, and developers working on core product development
- Customer-funded work - Work product that must be delivered to or owned by customers
- Regulatory requirements - Some industries require clear IP ownership chains
When PIIAs May Be Overreaching
- Roles with no creative or inventive component (administrative, sales, etc.)
- Attempting to claim inventions in completely unrelated fields
- Extending claims to long periods after employment ends
- Requiring assignment without any additional consideration beyond base salary