CONSULTING SERVICES AGREEMENT
This Consulting Agreement (the "Agreement") is entered into the 9th day of
December, 1996 by and between Acute Therapeutics, Inc., a Delaware corporation
(the "Company") and ▇▇. ▇▇▇▇▇ ▇▇▇▇▇ (the "Consultant"). Any capitalized terms
used but not otherwise defined herein shall have the meanings set forth in the
KL4 Surfactant Sublicense, by and between ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇ and the Company,
dated October 28, 1996 (the "KL4 Sublicense ") .
WHEREAS, ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇ ("J&J") is the exclusive licensee of the Scripps
Clinic and Research Foundation ("Scripps"), with respect to certain technology
relating to the synthetic pulmonary surfactant known as KL4 (the "KL4
Technology");
WHEREAS, the Company has been established to obtain the exclusive license
to the KL4 Technology from J&J set forth in the KL4 Sublicense and to
commercialize the KL4 Technology;
WHEREAS, Consultant is affiliated with Scripps and has been engaged in
research and development regarding KL4 Surfactant for a number of years; and
WHEREAS, the Company desires to have the benefit of Consultant's knowledge
and experience and Consultant desires to provide consulting services to the
Company, all as hereinafter provided in this Agreement.
NOW, THEREFORE, in consideration of the mutual promises hereinafter set
forth and other good and valuable consideration, the receipt of which is hereby
acknowledged, the parties hereby agree as follows:
1. Term of the Agreement. The Company hereby retains the services of
Consultant and Consultant hereby agrees to render consulting services
("Services") to the Company for a two (2) year period commencing on the date
hereof and continuing until the date which is two (2) years from the date
hereof, subject, however, to prior termination as hereinafter provided in
Section 5.
2. Duties. Consultant's duties shall include, but are not limited to, those
duties set forth in Exhibit A hereto and such other duties as the Company may
from time to time prescribe.
3. Compensation. In consideration for her consulting services hereunder,
the Company shall pay to Consultant (i) a consulting fee at the annual rate of
$80,000, payable monthly in installments of $6,666.67 on or before the 15th day
of each month and (ii) a royalty equal to [***] of LICENSED PRODUCTS sold by
the Company and, in respect of sales of LICENSED PRODUCTS by Company's
sublicensees, royalties equal
[***] Confidential treatment requested.
to [***] Company shall report the sales of LICENSED PRODUCTS and receipt of
royalties from sublicensees to Consultant, and shall pay Consultant any
payments due to Consultant in respect of sales of LICENSED PRODUCTS, at the
same time that Company reports the same and makes payment to J&J pursuant to
the KL4 Sublicense. All payments due to Consultant in respect of sales of
LICENSED PRODUCTS shall generally be subject to the arrangements set forth in
the KL4 Sublicense as if Consultant was the LICENSOR thereunder.
4. Proprietary Information.
a. Consultant understands that the Company possesses Proprietary
Information which is important to its business. For purposes of this Agreement,
"Proprietary Information" is information that was developed, created, or
discovered by the Company, or which became known by, or was conveyed to the
Company (including, without limitation, "Results" as defined below), which has
commercial value in the Company's business. "Proprietary Information" includes,
but is not limited to, information about the Company's business operations and
research, programs, technologies, ideas, know-how, processes, formulas,
compositions, techniques, inventions (whether patentable or not), business and
product development plans, customers and other information concerning the
Company's actual or anticipated business, research or development, or which is
received in confidence by or for the Company from any other person. Proprietary
Information does not include information which Consultant demonstrates to the
Company's satisfaction, by written evidence, (i) is in the public domain by
reason of prior publication not directly or indirectly resulting from any act or
omission of Consultant, or (ii) was already known to Consultant at the time of
the Company's disclosure to Consultant and which Consultant was free to use and
disclose without restriction and without breach of any obligation to any person
or entity. Consultant understands that the consulting arrangement creates a
relationship of confidence and trust between Consultant and the Company with
regard to Proprietary Information.
b. Consultant understands that the Company possesses "Company
Materials" which are important to its business. For purposes of this Agreement,
"Company Materials" are documents or other media that contain Proprietary
Information or any other information concerning the business, operations or
plans of the Company, whether such documents have been prepared by Consultant or
by others. "Company Materials" include, but are not limited to, blueprints,
drawings, photographs, charts, graphs, notebooks, customer lists,
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computer disks, tapes or printouts, sound recordings and other printed,
typewritten or handwritten documents.
c. All Proprietary Information and all patents, patent rights,
copyrights, trade secret rights and other rights in connection therewith shall
be the sole property of the Company. At all times, both during the term of this
Agreement and after its termination, Consultant will keep in confidence and
trust and will not use or disclose any Proprietary Information without the prior
written consent of an officer of the Company except as may be necessary in the
ordinary course of performing the Services under this Agreement. Consultant
acknowledges that any disclosure or unauthorized use of Proprietary Information
will constitute a material breach of this Agreement and cause substantial harm
to the Company for which damages would not be a fully adequate remedy, and,
therefore, in the event of any such breach, in addition to other available
remedies, the Company shall have the right to obtain injunctive relief.
d. All Company Materials shall be the sole property of the Company.
Consultant agrees that during the term of this Agreement, Consultant will not
remove any Company Materials from the business premises of the Company or
deliver any Company Materials to any person or entity outside the Company,
except as required to do in connection with performance of the Services under
this Agreement. Consultant further agrees that, immediately upon the Company's
request and in any event upon completion of the Services, Consultant shall
deliver to the Company all Company Materials (including, without limitation, all
Inventions covered by paragraphs 4.e.(i) and 4.e.(ii) below), apparatus,
equipment and other physical property or any reproduction of such property,
excepting only Consultant's copy of this Agreement.
e. For purposes of this Agreement, "Inventions" shall mean all
improvements, inventions, designs, formulas, works of authorship, computer
programs, ideas, processes, techniques, know-how and data, whether or not
patentable) made or conceived or reduced to practice or developed by Consultant,
either alone or jointly with others, as a direct result of services performed
under this Agreement. The parties agree that all Inventions shall be subject to
those certain Scripps Uniform Consulting Agreement Provisions, a copy of which
is attached hereto as Exhibit B (the "Uniform Provisions"). To the extent
permitted by the Uniform Provisions, or in the event that the Uniform Provisions
do not apply in relation to a particular Invention, Consultant agrees that:
(i) he will promptly disclose all such Inventions to the Company
and rights to all such Inventions which Consultant makes, conceives, reduces to
practice or develops (in whole or in part, either alone or jointly with others)
during the term of this Agreement in connection with the course of performing
the Services or which relate to any Proprietary Information shall be the sole
property of the Company. Consultant agrees to assign and hereby assigns to the
Company all rights to any such Inventions. The Company shall be the sole owner
of all patents, copyrights and other intellectual property or other rights in
connection therewith.
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(ii) Consultant agrees to perform, during and after the term of
this Agreement, all acts deemed necessary or desirable by the Company to permit
and assist it, in obtaining, maintaining, defending and enforcing patents,
copyrights, trade secret rights or other rights on such Inventions and
improvements in any and all countries. Such acts may include, but are not
limited to, execution of documents and assistance or cooperation in legal
proceedings. Consultant hereby irrevocably designates and appoints the Company
and its duly authorized officers and agents, as Consultant's agents and
attorneys-in-fact to act for and in behalf and instead of Consultant, to execute
and file any documents and to do all other lawfully permitted acts to further
the above purposes with the same legal force and effect as if executed by
Consultant.
f. Consultant represents that other than previously disclosed to the
Company, Consultant has no inventions or improvements relating to the KL4
Technology.
g. During the term of this Agreement and for one (l) year thereafter,
Consultant will not encourage or solicit any employee of the Company to leave
the Company for any reason.
h. Consultant agrees that during the term of this Agreement, Consultant
will not engage in any employment, business, or activity that is in any way
competitive with the business or proposed business of the Company, and
Consultant will not assist any other person or organization in competing with
the Company or in preparing to engage in competition with the business or
proposed business of the Company.
i. Consultant represents that performance of all the terms of this
Agreement will not breach any agreement to keep in confidence proprietary
information acquired by Consultant in confidence or in trust prior to the
execution of this Agreement. Consultant has not entered into, and Consultant
agrees not to enter into, any agreement either written or oral that conflicts or
might conflict with Consultant's performances of the Services under this
Agreement.
5. Termination. Consultant agrees that this Agreement may be terminated by
either the Company or Consultant at any time, for any reason, with or without
cause, by giving sixty (60) days written notice to the other party.
6. Independent Contractor Status. Consultant is an independent contractor
and is solely responsible for all taxes, withholdings, and other similar
statutory obligations, including, but not limited to, Workers' Compensation
Insurance; and Consultant agrees to defend, indemnify and hold Company harmless
from any and all claims made by any entity on account of an alleged failure by
Consultant to satisfy any such tax or withholding obligations.
7. No Authority. Consultant has no authority to act on behalf of or to
enter into any contract, incur any liability or make any representation on
behalf of the Company.
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8. Obligations. Consultant's performance under this Agreement shall be
conducted with due diligence and in full compliance with the highest
professional standards of practice in the industry. Consultant shall comply with
all applicable laws and Company safety rules in the course of performing the
Services. If Consultant's work requires a license, Consultant has obtained that
license and the license is in full force and effect.
9. Indemnification. Consultant will indemnify and hold Company harmless,
and will defend Company against any and all loss, liability, damage, claims,
demands or suits and related costs and expenses to persons or property that
arise, directly or indirectly, from acts or omissions of Consultant, or breach
of any term or condition of this Agreement.
10. Survival. Consultant agrees that all obligations under paragraphs 4(c)
through 4(e) and paragraphs 4(g), 6 and 9 of this Agreement shall continue in
effect after termination of this Agreement, and that the Company is entitled to
communicate Consultant's obligations under this Agreement to any future client
or potential client of Consultant.
11. Governing Law. Consultant agrees that any dispute in the meaning,
effect or validity of this Agreement shall be resolved in accordance with the
laws of the State of New York without regard to the conflict of laws provisions
thereof. Consultant further agrees that if one or more provisions of this
Agreement are held to be unenforceable under applicable New York law, such
provision(s) shall be excluded from this Agreement and the balance of the
Agreement shall be interpreted as if such provision were so excluded and shall
be enforceable in accordance with its terms.
12. Successors and Assigns. This Agreement shall be binding upon
Consultant, and inure to the benefit of, the parties hereto and their respective
heirs, successors, assigns, and personal representatives; provided, however,
that it shall not be assignable by Consultant.
13. Entire Agreement. This Agreement contains the entire understanding of
the parties regarding its subject matter and can only be modified by a
subsequent written agreement executed by the President of the Company.
14. Notices. All notices required or given herewith shall be addressed to
the Company or Consultant at the designated addresses shown below by registered
mail, special delivery, or by certified courier service:
a. To Company:
Acute Therapeutics, Inc.
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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b. To Consultant:
▇▇. ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇.
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
15. Attorney Fees. If any action at law or in equity is necessary to
enforce or interpret the terms of this Agreement, the prevailing party shall be
entitled to reasonable attorneys' fees, costs and necessary disbursements, in
addition to any other relief to which the party may be entitled.
CONSULTANT HAS READ THIS AGREEMENT CAREFULLY AND UNDERSTANDS AND ACCEPTS
THE OBLIGATIONS WHICH IT IMPOSES UPON CONSULTANT WITHOUT RESERVATION. NO
PROMISES OR REPRESENTATIONS HAVE BEEN MADE TO CONSULTANT TO INDUCE CONSULTANT TO
SIGN THIS AGREEMENT. CONSULTANT SIGNS THIS AGREEMENT VOLUNTARILY AND FREELY, IN
DUPLICATE, WITH THE UNDERSTANDING THAT ONE COUNTERPART WILL BE RETAINED BY THE
COMPANY AND THE OTHER COUNTERPART WILL BE RETAINED BY CONSULTANT.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the day and year set forth above.
ACUTE THERAPEUTICS, INC.
________________________________
By: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: President/CEO
CONSULTANT
________________________________
By: ▇▇▇▇▇ ▇▇▇▇▇
EXHIBIT A
DUTIES OF CONSULTANT
Consultant shall assist Acute Therapeutics, Inc. ("ATI") with executing ATI's
strategic plan of successfully commercializing pulmonary surfactants. Consultant
generally will take guidance from ▇▇. ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇.
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EXHIBIT B
Scripps Uniform Consulting Agreement Provisions
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