Legal PIIA Template

PROPRIETARY INFORMATION AND INVENTION ASSIGNMENT AGREEMENT

This Proprietary Information and Invention Assignment Agreement (the Agreement) is entered into as of , by and between Employer Name: whose principal place of business is (Employer), and Employee Name: (Employee).

RECITALS

WHEREAS, Employer is engaged in the business of and possesses proprietary information, trade secrets, and inventions;

WHEREAS, Employee will have access to Employer's proprietary information and may make or conceive inventions, discoveries, improvements or developments relating to Employer's business during Employee's period of service; and

WHEREAS, Employer and Employee desire to set forth their agreement regarding the confidentiality of Employer's proprietary information and the assignment of rights in inventions made by Employee.

NOW, THEREFORE, in consideration of the mutual covenants and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties agree as follows:

1. DEFINITIONS

1.1 "Confidential Information" means all information, whether or not reduced to writing, concerning Employer's business, operations, products, services, know-how, trade secrets, improvements, designs, drawings, processes, source code, customer lists, pricing, marketing plans, financial information and other proprietary information disclosed to Employee by Employer or discovered or developed by Employee in connection with Employee's engagement, whether disclosed before or after the Effective Date.

1.2 "Invention" means any invention, discovery, improvement, process, formula, design, technology, software, mask work, know-how, or other work of authorship, whether or not patentable or copyrightable, conceived, reduced to practice, developed or created by Employee, either solely or jointly, during the period of Employee's engagement with Employer that relates to Employer's business or results from the use of Employer resources.

2. CONFIDENTIALITY OBLIGATIONS

2.1 Duty of Nondisclosure. Employee shall hold Confidential Information in strict confidence and shall not, without Employer's prior written consent, disclose, publish, or disseminate Confidential Information to any third party or use Confidential Information for Employee's own benefit or for the benefit of any third party, except as required in the performance of Employee's duties for Employer.

2.2 Use Limited to Employment. Employee's use of Confidential Information shall be limited to activities necessary for Employee's employment responsibilities. Employee shall take reasonable measures to prevent unauthorized disclosure, including but not limited to limiting access to those who have a need to know and employing reasonable physical, administrative and technical safeguards.

3. INVENTION ASSIGNMENT

3.1 Assignment. Employee hereby assigns and agrees to assign to Employer, without additional compensation, all right, title and interest in and to any and all Inventions, whether or not patentable or copyrightable, that Employee conceives, makes, develops or reduces to practice, either solely or jointly with others, during Employee's engagement with Employer, to the fullest extent permitted by applicable law.

3.2 Excluded Inventions. Employee shall not be required to assign any Invention for which no equipment, supplies, facilities, Confidential Information or trade secret information of Employer was used and which was developed entirely on Employee's own time, and that: (a) does not relate to Employer's business, research or development; and (b) does not result from any work performed by Employee for Employer. To assert an exclusion, Employee must identify prior inventions below and certify they were developed outside the scope of employment.

3.3 Procedure for Invention Disclosure. Employee shall promptly disclose in writing to Employer all Inventions made or conceived during the period of engagement and shall provide detailed written disclosure sufficient to identify and enable evaluation of the Invention.

4. PATENT AND COPYRIGHT ASSISTANCE

Employee shall, at Employer's expense, execute such assignments, applications, declarations, oaths, and other instruments and take such further actions as Employer may reasonably request to obtain, perfect, maintain, enforce and defend Employer's rights in Inventions, including but not limited to assisting in the preparation, filing and prosecution of patent, copyright and other applications and assignments.

5. RETURN OF MATERIALS

Upon termination of Employee's engagement or upon Employer's request, Employee shall promptly return all documents, notes, records, materials and other property of Employer, including all copies thereof and all devices and media containing Confidential Information.

6. TERM; SURVIVAL

The confidentiality and assignment obligations set forth in this Agreement shall survive the termination of Employee's engagement with Employer and shall continue for as long as such information remains Confidential Information, provided that Employee's nondisclosure obligations with respect to trade secrets shall continue for the period during which such information qualifies as a trade secret under applicable law.

7. REMEDIES

Employee acknowledges that unauthorized disclosure or use of Confidential Information or failure to assign Inventions may cause Employer irreparable harm for which monetary damages may be an inadequate remedy. Employer shall be entitled to seek injunctive relief, specific performance and other equitable remedies in addition to any other remedies available at law or in equity.

8. NOTICES

Notices shall be in writing and shall be deemed given when delivered in person, by registered mail, or by nationally recognized overnight courier, addressed to the addresses specified above or to such other address as either party may designate in writing.

9. GOVERNING LAW

This Agreement shall be governed by and construed in accordance with the laws of the State of without regard to its conflict of laws principles.

10. ENTIRE AGREEMENT; SEVERABILITY

This Agreement constitutes the entire agreement between the parties with respect to the subject matter hereof and supersedes all prior and contemporaneous agreements, understandings, negotiations and discussions, whether oral or written. If any provision of this Agreement is held to be invalid or unenforceable by a court of competent jurisdiction, such provision shall be reformed only to the extent necessary to make it valid and enforceable, and the remaining provisions shall continue in full force and effect.

11. AMENDMENT; WAIVER; COUNTERPARTS

No amendment to this Agreement shall be effective unless in a written instrument signed by both parties. No failure or delay by either party in exercising any right shall operate as a waiver of that right. This Agreement may be executed in counterparts, each of which shall be deemed an original and all of which together shall constitute one instrument.

12. CERTIFICATIONS

Employee certifies that the information provided in the Prior Inventions Disclosure above is true and complete to the best of Employee's knowledge. Employee understands that knowingly making a false disclosure may constitute grounds for discipline up to and including termination of employment.

I certify that the prior inventions list above is accurate and complete.

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