The Prior-Inventions Exhibit, One Side-Work Inventory to a Countersigned List

Your offer packet has an invention assignment agreement in it, plus a blank page titled something like "Exhibit A: List of Prior Inventions." That page needs a decision about every side project, repo, domain, open-source contribution, and freelance job you have. This guide is for candidates who hold an offer and haven't signed yet. It carries one candidate's mixed portfolio through every fork, wrong turns included, and ends with the actual exhibit lines, the email to legal, and the filed copy.

I'm not a law firm and this isn't legal advice. Where the evidence is thin I say so and tell you what to check. Where the agreement's wording and your state's statute matter more than any general rule, I point you back to those two documents.

What does the prior-inventions exhibit actually do?

The exhibit is a signed statement of what you owned before your start date. It is paired with a license the employer gets if any listed item is later used in its work. It does not keep your work safe from the employer. It establishes a date and an owner, and sometimes it hands over rights.

Three mechanics matter.

• The fields. The SEC-filed exhibits I reviewed ask for three things per item: Title, Date, and Identifying Number or Brief Description. There are checkboxes for "No inventions or improvements" and "Additional Sheets Attached".
• The blank. A blank page means something. Zillow's form reads: "if no such list is attached, I represent that there are no such Prior Inventions." Mavenir's form applies the same rule when Exhibit A is unsigned.
• The license. If a listed item ends up in company work, the employer typically gets "a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have made, modify, use and sell" it. Some forms go further.

The forms also disagree on scope, meaning which items they want listed at all. That disagreement drives most of the decisions in this guide.

The Intermex row is the one to watch for. Its license covers all prior inventions so the employer can "otherwise operate the current and future business of Employer," whether or not the item was ever incorporated. On a form like that, listing an item gives the employer a license to it outright. Two other clause patterns are worth searching your own agreement for:

• "Whether or not they are listed." One published clause defines prior inventions to include items "whether or not they are listed". On that form, leaving something off doesn't take it out of the definition.
• "Prior written consent." Some forms bar you from incorporating a prior invention into company work "without the Company's prior written consent". That clause works in your favour, because nothing slides into the license by accident.

Which state law sits under your agreement?

Your state's employee-invention statute can override the contract, and the state that counts is usually where you work, not the one named in the governing-law clause. California, Washington, and several other states void assignment of inventions made entirely on your own time with your own resources, as long as the invention doesn't relate to the employer's actual or anticipated business. Nevada does the opposite.

Notes on the table, because a few rows are less settled than they look:

• The wider list. Delaware (19 § 805), Kansas (44-130), New Jersey (34:1B-265), North Carolina (66-57.1), and Utah (34-39-3) also have similar laws. Whether they require written notice is not established in the sources I found. Sources even disagree on the count of protective states: one says seven, another says ten plus Nevada.
• Minnesota. The Minnesota citation number was not confirmed in my sources. Check it before relying on it.
• New York. Section 203-f keeps two exceptions: inventions that relate to the employer's business, and those that "result from any work performed by the employee for the employer." It requires no particular notice from employers. It is enforced by the state Department of Labor, with no express private right of action, and one practice guide notes there is "no developed body of New York case law construing it."
• Nevada. Under NRS 600.500 the employer is the default owner of in-scope patentable inventions and trade secrets. There is no employee carve-out. The limit is that the invention "must be developed in the course and scope of employment and it must relate directly to the work performed."
• Governing law vs. where you work. One practice guide says a California worker under a Delaware-law agreement is "likely" still governed by California law. "Likely" is the honest word there.

Holdover clauses and disclosure duties

A holdover clause, also called a trailing-assignment clause, claims inventions you make for some period after you leave. In California, the Federal Circuit in Whitewater West Industries v. Alleshouse (981 F.3d 1045) found a one-year post-termination clause "unnecessarily broad." California law voids a trailing clause that reaches post-employment inventions made without the former employer's trade secrets. In Washington, no published decision has squarely decided the question. Washington does require you to disclose inventions made during employment, and the employer then has 30 days to assert a claim.

The worked example: one candidate's mixed portfolio

The candidate here is a backend engineer I'll call Dana. Dana works in California and has accepted an offer from a fleet-dispatch software company. Its agreement reads like the Agora row above: the exhibit asks for items conceived before hire that "relate to the Company's current or proposed business." It also has a written-consent clause for incorporating any prior invention, and a 2870 notice is attached. The records are fictional. The forks are the ones real portfolios hit.

Dana's first pass produced 15 items:

If Dana already had a resume built from her own history, the project list behind it is a fast start on this inventory. Refolk pulls side projects and freelance work out of your records when it writes the resume, so the names and rough dates come over for free. What it won't hold is the registrar receipt or the client contract. You still have to dig those out yourself.

Settling ownership: 15 items down to 12

Ownership settles three rows before scope even comes up.

• The freelance dashboard (12). The client contract's assignment clause gives the deliverable to the client. It isn't Dana's to list. If the client NDA also stops Dana from describing it, look for the clause some agreements contain requiring you to tell the company you "have not listed all Prior Inventions" because of confidentiality obligations. Dana's agreement had none.
• The patents (13, 14). The assignment records name the former employer. Dana's first draft listed them as "Inventions: US Patent [number], [number]." That was the first wrong turn, and she struck it. I come back to it under failure modes.
• The open-source pull requests (9 to 11). These stay in. Under the Apache Individual Contributor License Agreement, the contributor "reserve[s] all right, title, and interest in and to Your Contributions." The contributions are Dana's. The library is not.

Applying scope: 12 down to 4

The scope sentence asks for items related to the company's current or proposed business, which is fleet dispatch. Against that test:

• Shiftboard and its domain (1, 2): related. Dispatch includes driver shift scheduling. Dana's first instinct was "clinics, not fleets, so unrelated." On a second read of the employer's product pages, scheduling is plainly in their "proposed business." Treat it as related.
• The geocoding cache library (8): related. Routing software geocodes.
• The geospatial contributions (9 to 11): related.
• Dotfiles, blog generator, CSV diff, two tutorials (3 to 7): unrelated. They leave the list. Their public commit history already dates them if anyone ever asks.

That leaves four related, owned items, plus the route-optimization idea (15). The idea is plainly related and has no dated artifact.

How do you decide list, leave off, or ask first?

Every item gets one of three calls, based on four questions asked in order: who owns it, whether the form's scope reaches it, whether a dated artifact proves it existed before the start date, and whether you might ever use it at work. "Ask first" is the call for anything you own, that is in scope, and that you plan to keep working on.

The matrix below covers the two variables that decide most calls once ownership is settled.

Dana's final calls:

The idea row was the third wrong turn. Dana had drafted "Route optimization plugin, conceived [date]." Agora-style forms do reach items "conceived in whole or in part" before employment, so an unbuilt idea can technically go on the list. But California 2872 puts the burden of proof on the employee, and an undated notebook page carries none of it. There is also a bigger problem. The idea relates to the employer's business, so the 2870 carve-out wouldn't cover work on it during employment, whatever time or equipment Dana used. Listing it would have meant claiming something she couldn't prove, and it would also have drawn attention to a competing plan. Whether undocumented pre-hire ideas hold up as prior inventions in court is not established in the sources I found.

The procedure: from inventory to a countersigned copy

The full job is eight steps. They take an afternoon if your records are findable and a week if they aren't. The durations below are my desk estimates. No practitioner source publishes timings, and how long legal review takes relative to a start date is not established anywhere I could find. Send step 7 as early as you can.

How to word each exhibit line without giving the work away

A good exhibit line identifies the item well enough that nobody can confuse it with something else, and reveals nothing about how it works. Title, date, identifier. If a competitor could rebuild the item from your line, the line is too long.

Dana's second wrong turn was here. The first draft of the Shiftboard line described the constraint model behind its scheduling and the data structure that made it fast. That reads as diligent, and some forms push in that direction by asking for descriptions "with particularity." But the exhibit goes into the employer's HR files and the employer is in an adjacent business. A detailed line hands over exactly the material you're trying to keep. Identity and date are what protect you, and the repo history and registrar receipt already prove both.

1. Title: "Shiftboard" scheduling application (unreleased, in development)
   Date: Conceived and first committed [YYYY-MM-DD]; domain registered [YYYY-MM-DD]
   Identifier: Private repository [host]/[handle]/shiftboard; domain [shiftboard-domain]

2. Title: "geocache" geocoding cache library
   Date: First commit [YYYY-MM-DD]
   Identifier: Public repository [host]/[handle]/geocache

3. Title: Contributions to [project name], an Apache-licensed open-source geospatial library
   Date: [YYYY-MM-DD] to [YYYY-MM-DD]
   Identifier: Merged contributions under author handle [handle]. The project itself is not owned by me; this line covers my contributions only.

Optional, only if context matters:
4. Title: US Patents [number] and [number]
   Identifier: Assigned to [former employer]. Listed for notice only; not claimed as my invention.

None of the templates I reviewed mention domain names. A domain isn't an invention in the usual sense, so Dana attached it to the app line as an identifier rather than giving it a line of its own. That keeps the registrar receipt next to the thing it dates.

Asking for a carve-out before you sign

A carve-out request asks the employer to confirm in writing that a specific item stays yours and that you may keep working on it on your own time. Send it before you sign, with the draft exhibit attached, because once the agreement is signed you have nothing left to trade.

There are published models to point to. GitHub's Balanced Employee IP Agreement (BEIPA), open-sourced in 2017 with a 2.0 version later, provides that for IP made outside the job but related to the business, "the employee maintains ownership and the company gets a non-exclusive and unlimited license." GitLab amended its own agreement and put "clarifying processes in place." An English-law adaptation of BEIPA exists for UK contracts. You don't need the employer to adopt any of these. They show that a balanced term is ordinary, not exotic.

Dana needed a carve-out only for Shiftboard. The other two lines needed only acknowledgment.

Subject: Prior inventions exhibit for [your name], start date [date]

Hi [name],

Before I sign the invention assignment agreement, I'm attaching my draft Exhibit A listing three prior inventions. Could you confirm two things in writing?

1. Acknowledgment: that items 1 to 3 on the exhibit were created before my start date and remain mine, subject only to the agreement's terms for items incorporated into company work with my prior written consent.

2. Carve-out for item 1 ("Shiftboard"): that I may continue developing it on my own time, with my own equipment, and without company confidential information, and that the company will not claim ownership of that continued work. I will not incorporate it into any company work without written consent from both sides. If useful, GitHub's Balanced Employee IP Agreement has model language for this.

I'd also like to confirm that the Labor Code 2870 notice attached to the agreement is the one that applies to me as a California employee.

Could you return a countersigned copy of the exhibit before [start date]? I'm glad to talk it through if anything here needs adjusting.

Thanks,
[name]

If the employer pushes back on the carve-out, you're left with three options: drop the item, keep it listed and never touch it on company time or equipment, or decide the offer is worth less than the project. Make that decision before your start date.

How this goes wrong

Most damage on this page comes from seven predictable mistakes. Each looks reasonable while you're making it. For each one: what goes wrong, and the check that catches it.

Some of these need more than a table cell.

• The blank page. The intention behind an empty page is "I have nothing worth mentioning." The legal effect on Zillow-style and Mavenir-style forms is "I represent I have nothing." Those aren't the same, and the second one is what you signed. A filed exhibit from 2tor shows the deliberate version: signed "No inventions" and dated.
• The patents. The exhibit is a statement of what you own. Listing a former employer's patents as your own is a false statement of ownership, even if you meant it as a CV of your past work.
• Detail. This is where honest candidates do the most damage. A request for "particularity" sounds like a request for the technical detail. It's satisfied by detail that identifies the item, not detail that explains how it works.
• The plan. Conception timing decides protection, and under 2872 the employee proves it. If an idea matters to you and isn't related to the new employer's business, write it up and date it before your start date. That record is the artifact. If it is related, no amount of dating rescues it from the related-to-business exception.
• Using it at work. The most common way a protected side project stops being entirely yours is that you, helpfully, drop it into a company codebase. If your form has a written-consent clause, that clause protects you only if you actually honour it.
• The wrong state. New York's 203-f has California-like exceptions but no notice duty. A missing notice that might help you in California does nothing for you in New York. Nevada has no carve-out at all.

Particularity means enough to identify the item, never enough to rebuild it.

Filing the signed copy and keeping it current

The countersigned exhibit plus your evidence folder is your case if the employer ever claims the work. Under California 2872 the burden of proof sits with you, so file the folder as if you'll need it years from now in a dispute you can't predict.

Dana's filed folder held: the countersigned exhibit, HR's email reply confirming the Shiftboard carve-out, an export of the Shiftboard and geocache commit logs as of the day before the start date, the domain registrar receipt, the ICLA confirmation, and the one-page decision table with reasons. The unrelated repos and the client contract went in too, as context, not as listed items.

After you start, keep three things current:

• Your work boundary. Side-project commits from personal machines and accounts, outside working hours. In Washington, also remember the duty to disclose inventions made during employment and the employer's 30-day window to claim them.
• Your public record. When you update your resume or profile after day one, describe side projects the way the exhibit does: name and date, not internals. If Refolk is tailoring your resume to future postings, the side-project lines it writes should match the exhibit's identifiers, so the two records never contradict each other.
• Your exit. When you leave, reread any holdover clause against the law of the state you'll be working in.