EXHIBIT 10.19
CONSULTING AGREEMENT
THIS CONSULTING AGREEMENT (this "Agreement"), dated as of May 4, 2006,
is entered into by and between Neah Power Systems, Inc., having a principal
place of business at 00000 00x Xxx XX, Xxxxx 000, Xxxxxxx, XX 00000 (the
"Company"), and MTBSolutions, Inc., having a principal place of business at 0000
X. Xxxxx Xxxxxx, Xxxxx 000, Xxx Xxxx, XX 00000-0000 (the "Consultant").
RECITAL
The Company wishes to engage the Consultant to provide consulting
services on the terms set forth herein, and the Consultant is willing to provide
such services on such terms.
NOW, THEREFORE, IT IS AGREED:
1. DUTIES AND SERVICES. The Consultant shall provide such
consulting services as described on EXHIBIT A, and such other services as may be
mutually agreed upon by the parties from time to time (the "Services").
Performance of the Services shall be governed by the terms and conditions of
this Agreement.
2. TERM AND TERMINATION. This Agreement shall continue in effect
and govern the terms and conditions of the Services until terminated by either
party upon thirty (30) days' prior written notice. Notwithstanding the
preceding, Consultant shall not terminate this Agreement until all mutually
agreed upon Services have been completed.
3. COMPENSATION. As compensation for the Services to be provided
hereunder, and conditioned upon Consultant's performance of such services, the
Consultant shall be entitled to fees as set forth on EXHIBIT A.
4. INDEPENDENT CONTRACTOR. The Consultant's relationship with the
Company is that of an independent contractor, and nothing in this Agreement is
intended to, or should be construed to, create a partnership, agency, joint
venture or employment relationship. Accordingly, the Consultant will not be
entitled to any of the benefits that Company may make available to its
employees; and the Consultant is solely responsible for, and will file, on a
timely basis, all tax returns and payments required to be filed with, or made
to, any federal, state or local tax authority with respect to the performance of
services and receipt of fees under this Agreement.
5. INVENTIONS.
(a) COMPANY INVENTIONS, All designs, artwork,
improvements, inventions, works of authorship, information fixed in any
tangible medium of expression, moral rights, trademarks, know-how,
ideas, and all other subject matter protectable under patent, copyright
moral right, mask work, trademark, trade secret or other laws
("Inventions"), made, conceived or developed by the Consultant, alone
or with others, which result from the Services, together with all
related intellectual property rights, shall be the sole property of the
Company ("Company Inventions").
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(b) OUT-OF-SCOPE INVENTIONS. If the Consultant
incorporates any Inventions relating in any way to Company's business or
demonstrably anticipated research or development that were conceived, reduced to
practice, created, derived, developed or made by the Consultant either outside
the scope of the Consultant's work for the Company under this Agreement or prior
to the execution of this Agreement (collectively, the "Out-of-Scope Inventions")
into any of the Company Inventions, Consultant hereby grants to the Company a
royalty-free, irrevocable, worldwide; fully paid-up license (with rights to
sublicense through multiple tiers of sublicensees) to practice all applicable
patent, copyright, moral right, mask work, trade secret and other intellectual
property rights relating to any Out-of-Scope Inventions that Consultant
incorporates, or permits to be incorporated, in any Company Inventions, solely
in connection with such Company Inventions. The Consultant agrees that the
Consultant will not incorporate, or permit to be incorporated, any Inventions
conceived, reduced to practice, created, derived, developed or made by others or
any Out-of-Scope Inventions into any Company Inventions without Company's prior
written consent.
(c) ASSIGNMENT, DISCLOSURE AND ASSISTANCE. The Consultant
agrees to promptly disclose to the Company every Company Invention. The
Consultant hereby assigns and agrees to assign to the Company or its designee
its entire right, title and interest worldwide in all such Company Inventions
and any associated intellectual property rights. The Consultant agrees to assist
the Company in any reasonable manner to obtain and enforce for the Company's
benefit patents, copyrights, maskworks, and other property rights in such
Company Inventions in any and all countries, and the Consultant agrees to
execute, when requested, patent, copyright or similar applications and
assignments to the Company and any other lawful documents deemed necessary by
the Company to carry out the purpose of this Agreement.
(d) LICENSE. Effective upon completion of the Services in
accordance with the terms of this Agreement, the Company hereby grants
Consultant a perpetual, royalty free, world wide, perpetual license to use
Company Innovations for any purpose except in connection with Fuel Cells. For
purposes of this Agreement, the term Fuel Cell shall mean a collection of
components whereby a fuel and an oxidizer are supplied to a device that converts
them into electricity. Fuel cells differ from batteries in that the energy
conversion continues as long as fuel and, if necessary, an oxidizing agent are
fed to the fuel cell. If components are contained in detachable assemblies (such
as a cartridge) that must be attached and/or connected to other assemblies so as
to form a complete fuel cell system, they are considered part of the fuel cell..
6. CONFIDENTIAL INFORMATION.
(a) DEFINITION OF CONFIDENTIAL INFORMATION. "Confidential
Information" as used in this Agreement shall mean the trade secrets, know-how
and other proprietary information of the Company or other third parties, and
includes, without limitation, processes, equipment, information related to the
current, future and proposed products and services of the Company, information
concerning research and development, financial information, and business
forecasts.
(b) NONDISCLOSURE AND NONUSE OBLIGATIONS. Except as
permitted in this paragraph, the Consultant shall not use, disclose or
disseminate the Confidential Information of the Company. The Consultant may use
the Confidential Information of the Company solely to perform its obligations
under this Agreement for the benefit of the Company. The Consultant will
exercise the same degree of care as it takes to protect its own confidential
information, but in no event less than reasonable care.
(c) INJUNCTIVE RELIEF. It is understood and agreed that
money damages would be not be a sufficient remedy for a breach of the
Consultant's confidentiality obligations under
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this Agreement and that the Company shall be entitled to injunctive relief as a
remedy for any such breach. Such remedy shall not be deemed to be the exclusive
remedy for the breach of the Consultant's obligations under this section, but
will be in addition to all other available legal or equitable remedies.
(d) EXCLUSIONS FROM NONDISCLOSURE AND NONUSE OBLIGATIONS.
The Consultant's obligations under this Section 6 with respect to any portion of
the Confidential Information of the Company shall not apply to any such portion
that the Consultant can demonstrate (i) was in the public domain at or
subsequent to the time such portion was communicated to the Consultant by the
Company though not fault of the Consultant, or (ii) was rightfully in the
Consultant's possession free of any obligation of confidence at or subsequent to
the time such portion was communicated to the Consultant by the Company. A
disclosure of Confidential Information by the Consultant either in response to a
valid order by a court of other governmental body, otherwise required by law, or
necessary to establish the rights of either party under this Agreement shall not
be considered a breach of this Agreement or a waiver of confidentiality for
other purposes, provided, however, that the Consultant shall provide prompt
prior written notice thereof to the Company to enable the Company to seek a
protective order or otherwise prevent such disclosure.
7. OWNERSHIP AND RETURN OF COMPANY PROPERTY. All
materials furnished to the Consultant by the Company, whether delivered to the
Consultant by the Company or made by the Consultant in the performance of
services under this Agreement (collectively, the "Company Property") are the
sole and exclusive property of the Company, and the Consultant hereby does and
will assign to the Company all rights, title and interest the Consultant may
have or acquire in the Company Property. At the Company's request and no later
than five (5) days after such request, the Consultant shall, at the Company's
option, destroy or deliver to Company (i) all Company Property, (ii) all
tangible media of expression in the Consultant's possession or control that
incorporate or in which are fixed any Confidential Information of the Company,
and (iii) written certification of the Consultant's compliance with the
Consultants obligations under this sentence.
8. NO VIOLATION OF THIRD PARTY RIGHTS. The Consultant
shall not communicate any information to the Company in violation of the
proprietary rights of third parties.
9. WARRANTY. The Consultant shall perform the Services
under this Agreement in a workmanlike and commercially reasonable manner, with a
standard of diligence and care normally employed by qualified persons in the
performance of comparable work in the same or similar locality. The Consultant
shall devote sufficient effort and resources to the performance of the Services
and shall be responsive to the Company's reasonable needs and requests in so
doing. The Consultant warrants that there is no other contract or duty on the
Consultant's part that conflicts with or is inconsistent with this Agreement.
Consultant will comply with all applicable specifications, laws, ordinances,
rules, regulations, orders, licenses, permits and other contractual or
governmental requirements.
10. MISCELLANEOUS.
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SUCCESSORS AND ASSIGNS. The Consultant may not subcontract or otherwise delegate
the Consultant's obligations under this Agreement without the Company's prior
written consent. Subject to the foregoing, this Agreement will be for the
benefit of the Company's successors and assigns, and will be binding on the
Consultant's assignees.
(a) NOTICES. Any notice required or permitted by this
Agreement shall be in writing and shall be delivered as follows, with notice
deemed given as indicated: (a) by personal delivery, when delivered personally;
(b) by overnight courier, upon written verification of receipt; (c) by telecopy
or facsimile transmission, upon acknowledgement of receipt of electronic
transmission; or (d) by certified or registered mail, return receipt requested,
upon verification of receipt. Notice shall be sent to the addresses set forth
above or to such other address as either party may specify in writing.
(b) GOVERNING LAW. This Agreement shall be governed in
all respects by the laws of the State of Washington, without giving effect to
conflicts of law principles. Venue for any dispute arising under this Agreement
will lie exclusively in the state or federal courts located in the state of
Washington.
(c) SEVERABILITY. If any provision of this Agreement is
held by a court of law to be illegal, invalid or unenforceable, that provision
shall be deemed amended to achieve as nearly as possible the same economic
effect as the original provision, and the legality, validity and enforceability
of the remaining provisions of this Agreement shall not be affected or impaired
thereby.
(d) ENTIRE AGREEMENT. This Agreement constitutes the
entire agreement, and supersedes all other prior agreements and understandings,
both written and oral, among the parties with respect to the subject matter
hereof, and is not intended to confer upon any party other than the parties
hereto any rights or remedies hereunder.
(t) WAIVER: AMENDMENT: MODIFICATION. No term or provision
hereof will be considered waived by the Company, and no breach excused by the
Company, unless such waiver or consent is in writing signed by the Company. The
waiver by the Company of, or consent by the Company to, a breach of any
provision of this Agreement by the Consultant, shall not operate or be construed
as a waiver of, consent to, or excuse of any other or subsequent breach by the
Consultant. This Agreement may be amended or modified only by mutual agreement
of authorized representatives of the parties in writing.
(g) ,SURVIVAL. The rights and obligations contained in
this Agreement, which by their nature require performance following termination,
shall survive any termination or expiration of this Agreement.
(h) COUNTERPARTS. This Agreement may be executed in one
or more counterparts, all of which taken together shall constitute one
instrument.
(i) PUBLIC DISCLOSURE. Consultant acknowledges that
Company will be required under applicable securities laws to disclose the
existence and terms of this Agreement.
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IN WITNESS WHEREOF, the parties have duly executed this Agreement as of
the date first above written.
"COMPANY" "CONSULTANT"
Neah Power Systems, Inc. MTBSolutions, Inc.
By: /s/ Xxxx Xxxxxxx By: /s/ Xxxx Xxxxxx
---------------- ---------------
Name: Xxxx Xxxxxxx Name: Xxxx Xxxxxx
Title: Exec. VP of Engineering Title: President
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EXHIBIT A
CONSULTING SERVICES
Consultant shall provide to Company package technology, manufacturing process,
materials and equipment advisory support services as it relates specifically to:
NPS Packaging Project and Reliability Engineering as defined in the attached
SUMMARY OF PROJECT ELEMENTS/Rev 1.1 dated March 31, 2006 and as executed per the
tasks defined in the attached Company Xxxxx dated April 6, 2006. Packaging
engineering services include but are not limited to:
o Design Refinement
o Materials Selection
o Manufacturing Process
o Assembly Process
o Creation of Samples
PROJECT PRICING.
(a) TOTAL PROJECT COST: $108,000
(b) PAYMENT SCHEDULE: Initial payment of $36,000 due upon
execution Balance in five monthly
payments of $14,400, commencing on June
4, 2006 and on the same day of each of
the following four months
(c) EXPENSES Company will reimburse Consultant for
reasonable expenses, subject to prior
approval to the extent such expenses
exceed $1,000
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