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EXHIBIT 10.14
ENDOCARE, INC.
SCIENTIFIC ADVISORY BOARD AGREEMENT
This Consulting Agreement ("Agreement") is entered into as of 12/2, 1997
between Foundation Research, Inc., a Massachusetts Corporation ("Consultant")
and ENDOCARE, INC., a Delaware corporation ("Corporation"). In consideration of
the mutual covenants set forth in this Agreement, the parties agree as follows:
1. TERM OF RETENTION AS CONSULTANT
Upon the terms and conditions set forth in this Agreement, Corporation
hereby agrees to retain Consultant, and Consultant agrees to act, as a
consultant to Corporation. During the term of this Agreement, Consultant agrees
to perform the duties set forth in Exhibit A to this Agreement.
2. COMPENSATION
For services to Corporation under Section 1 during the term of this
Agreement, Consultant shall receive from Corporation a daily consulting fee of
$1500.00 per day payable after submitting invoices for services provided. All
compensation packages, including stock option grants shall be held confidential
by both parties.
3. EXPENSES
Corporation shall reimburse Consultant for reasonable out-of-pocket
expenses incurred by Consultant in connection with Corporation's business, but
only after 1) an expense report has been submitted by Consultant and approved by
an executive officer of the Corporation; and 2) Consultant provides Corporation
with such substantiating receipts or other documentation as Corporation may
reasonably require.
4. TERM
The term of this Agreement shall begin on the date set forth in the
first paragraph and shall renew for one year terms in accordance with this
Section, unless notice is given at least thirty (30) days prior to the end of
the initial one year term or any successive term, by the Corporation or the
Consultant. The termination of this Agreement pursuant to this Section shall not
release either party from any accrued obligation to pay any sum to the other
party (whether then or thereafter payable) or operate to discharge any liability
incurred prior to the termination date. In addition, the obligations under the
following sections shall survive the termination of this Agreement.
5. CONFIDENTIAL INFORMATION
(a) As used in this Agreement, the term "Confidential Information"
refers to any and all valuable information of a confidential, proprietary or
secret nature related to the present or
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future business of Corporation, the research and development activities of
Corporation or the business of any customer of or supplier or contractor to
Corporation. Confidential Information is to be broadly construed and includes,
without limitation: (i) information disclosed by Corporation or its customers,
suppliers or contractors ("together, "Contractors") to Consultant in the course
of retention by Corporation as well as information developed or learned by
Consultant during the course of retention; (ii) information that has or could
have commercial value or other utility in the business in which Corporation or
its Contractors are engaged or contemplate being engaged; (iii) information of
which the unauthorized disclosure could be detrimental to the interests of
Corporation or its Contractors, whether or not such information is identified as
Confidential Information by Corporation or its Contractors; and (iv) trade
secrets, processes, formulas, data, source code, know-how, improvements,
inventions, techniques, test results, specifications, costs and pricing data,
employee information, terms of Corporation's agreements, production and
marketing plans and strategies, and information concerning Corporation's
Contractors.
(b) Consultant acknowledges that the Confidential Information is a
valuable and unique asset of Corporation, and Consultant agrees at all times
during the period of retention by Corporation and thereafter to keep in
confidence and trust all Confidential Information. Consultant agrees that during
the period of retention by Corporation and for a period of five (5) years
thereafter, it will not directly or indirectly use or exploit the Confidential
Information other than in the course of performing duties as a consultant of or
other contractor to Corporation, nor will Consultant directly or indirectly
disclose any Confidential Information to any person or entity, except in the
course of performing duties to Corporation with the consent of Corporation's
executive officers. Consultant will abide by Corporation's policies and
regulations, as established from time to time, for the protection of its
Confidential Information. Consultant agrees to use best efforts to ensure that
Corporation's confidential information, and any records or documents containing
such information, will not be exposed to theft, embezzlement or unauthorized
reproduction or disclosure.
6. COMPANY OWNERSHIP OF INNOVATIONS
(a) As used in the Agreement, "Developments" means all inventions,
discoveries, written or printed materials, trade secrets, designs, techniques,
know-how, data or other technical developments which Consultant makes,
conceives, reduces to practice or learns of, either individually or jointly with
others, during the term of this Agreement, and which are related to or useful in
the business of Corporation or result from Consultant's retention by Corporation
or from the use of premises owned, leased or otherwise use or acquired by
Corporation.
(b) Subject to the terms of this Agreement, Consultant agrees that any
and all Developments are and will be the exclusive property of Corporation.
Consultant hereby assigns to Corporation all right, tide and interest Consultant
may have or may acquire in and to all Developments. Consultant shall execute any
assignments to Corporation or other documents requested by Corporation to
evidence such assignment or Corporation's ownership of all such Developments and
otherwise agrees to cooperate fully with and aid Corporation in establishing,
enforcing and disposing of Corporation's patent and other proprietary rights
with respect to all
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Developments. In the event Corporation is unable to secure Consultant's
signature on any document necessary to apply for, prosecute, obtain or enforce
any patent, copyright or other right or protection relating to any Development,
whether due to mental or physical incapacity or any other cause, Consultant
hereby irrevocably designates and appoints Corporation and each of its duly
authorized officers as its agent and attorney-in-fact, to act for and in its
behalf and stead to execute and file and such document and to do all other
lawfully permitted acts to further the prosecution, issuance and enforcement of
such patents, copyrights or other rights or protections with the same force and
effect as if executed and delivered by Consultant.
(c) Except with respect to inventions which are to be assigned to or
owned by the United States under contracts between Corporation and departments
or agencies of the United States, the foregoing assignment to Corporation of
Developments will not apply to any invention that Consultant develops entirely
on its own time without the using Corporation's equipment, supplies, facilities
or trade secret information, except for those inventions that either: (i) relate
at the time of conception or reduction to practice of the invention to
Corporation's business or to its actual or demonstrably anticipated research or
development; or (ii) result from any work performed by Consultant for
Corporation.
(d) Consultant will make full and prompt disclosure to Corporation of
all Developments made, conceived, reduced to practice or learned by Consultant,
either individually or jointly with others, during the term of this Agreement.
Consultant shall attach to this Agreement a schedule containing a complete
listing of any Developments relevant to its retention by Corporation that were
made, conceived or first reduced to practice by Consultant alone or jointly with
others prior to its retention by Corporation, or which are covered by the
exclusion set forth in (c) above, and that Consultant desires to remove from the
operation of this Agreement. Corporation agrees to hold any disclosure in such
schedule in confidence.
(e) Corporation recognizes that Consultant and its employees and agents
are engaged in activities with various entities independent of those pertinent
to the Corporation. Nothing in the Agreement is intended to be construed to
limit, interfere, or otherwise create an interest by the Corporation in the
Consultant's activities, or those of its clients, employees and/or agents.
7. RETURN OF COMPANY MATERIALS
Upon the termination of this Agreement for any reason, Consultant agrees
promptly and without request to deliver to Corporation all originals and copies
of notebooks, documents, reports, flies, samples, mailing lists, computer
programs and other records and data which are then in Consultant's possession or
under its control and which pertain to its retention by Corporation or include
Confidential Information or Developments, and to return to Corporation any other
tangible personal property owned by Corporation, unless such return is waived in
writing by Corporation. Provided such retention is disclosed to Corporation and
subject to the Consultant's confidentiality obligations, Consultant may retain
copies of any such records required to be retained by Consultant to satisfy tax
reporting or other legal requirements. Consultant recognizes that the
unauthorized taking of any of Corporation's trade secrets is a crime and could
also result in civil liability to Corporation.
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8. COMPETITION
Consultant agrees that, during the term of this Agreement, it will not,
except for Corporation or with the written consent of an executive officer of
Corporation, engage or have an interest, directly or indirectly, in any other
business or venture which would interfere with the performance of its
obligations to Corporation or which competes with any material part of
Corporation's business. However, this restriction shall not prevent Consultant
from passively owning or investing in (a) any shares or other assets which are
owned on the date of this Agreement and are listed on a schedule attached to
this Agreement or (1%) less than one percent (1%) of the outstanding shares of a
corporation which are publicly traded.
9. REMEDIES
Consultant acknowledges that services under this Agreement and
agreements in Sections 5-8 are of a special, unique, unusual, extraordinary
and/or intellectual character, which give them particular value, that violation
of this Agreement will constitute a material breach of trust and confidence and
may be an invasion of privacy, that the breach of these agreements set forth in
this Agreement could not reasonably or adequately be compensated in damages in
an action at law, and that Corporation shall be entitled to injunctive relief
for such a breach. Such relief may include, but shall not be limited to, an
injunction restraining Consultant from rendering any service or engaging in any
activity which breaches or would violate this Agreement. However, no remedy
conferred by any of the specific provisions of this Agreement is intended to be
exclusive of any other remedy, and each and every remedy shall be cumulative and
shall be in addition to every other remedy existing at law or in equity. The
election of any one or more remedies by Corporation shall not constitute a
waiver of its rights to pursue other available remedies.
10. CONFLICTING AGREEMENTS
Consultant represents that retention by Corporation under this Agreement
and related actions have not breached, and will not breach, any covenant to keep
in confidence proprietary information or any other agreement with a third party.
Consultant has not entered into, and agrees that it will not enter into, any
agreement either written or oral in conflict with this Agreement.
11. MISCELLANEOUS
(a) GOVERNING LAW
All questions with respect to the construction of this Agreement
and the rights and liabilities of the parties shall be governed by the laws of
the State of California, excluding its conflict of laws rules.
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(b) SUCCESSORS AND ASSIGNS
This Agreement shall inure to the benefit of and be binding upon
the parties and their respective successors and assigns. Consultant may not
assign or otherwise transfer any rights or obligations under this Agreement
without Corporation's prior written consent and any such transfer in violation
of this paragraph shall be void.
(c) ENTIRE AGREEMENT
This Agreement contains all of the terms and conditions agreed
upon by the parties, and supersedes any prior agreements or understandings, with
respect to the subject matter of this Agreement.
(d) AMENDMENT OR MODIFICATION OF AGREEMENT
This Agreement may be modified, altered or amended only by the
written agreement of both the parties.
(e) ATTORNEYS' FEES AND COSTS
In any legal proceeding to enforce or interpret the terms of
this Agreement, the prevailing party shall be entitled to reasonable attorney's
fees and costs and necessary disbursements in addition to any other relief to
which it or he may be entitled.
(f) COUNTERPART
This Agreement may be executed in one or more counterparts, each
of which shall be a valid original agreement.
(g) SEVERABILITY
If any provision of this Agreement or its application to any
person or circumstance is held invalid or unenforceable to any extent, the
remainder of this Agreement and its other application shall not be affected and
shall be enforceable to the fullest extent permitted by law.
(h) FURTHER ACTIONS
Each party agrees to execute and deliver any further documents
and to do any additional acts reasonably required to carry out the terms of this
Agreement.
(i) WAIVERS
Any provision of this Agreement may be waived at any time by the
party entitled to the benefit thereof by a written instrument executed by the
party or by a duly authorized officer of the party. No waiver of any of the
provisions of this Agreement will be deemed, or
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will constitute, a waiver of any other provision, whether or not similar, nor
will any waiver constitute a continuing waiver.
(j) NOTICES
Any notice or other communication to a party provided for in
this Agreement shall be deemed to have been duly given if delivered personally
in writing to the party or on the date of its delivery, in writing addressed to
the party, at such party's address determined in accordance with this paragraph.
The address of Consultant shall be: Foundation Research, Inc., 00 Xxxxxx Xxxxxx,
Xxxxxxxxx, XX 00000. The address of Corporation shall be: 7 Studebaker, Xxxxxx,
XX 00000. Either party may change its or his address for purposes of this
Agreement by a notice given to the other party in accordance with this
paragraph.
(k) INDEPENDENT CONTRACTOR
Consultant is retained by Corporation only for the purposes and
to the extent set forth in this Agreement, and the relationship to Corporation
shall, during the term of this Agreement, be that of an independent contractor.
Consultant shall not be considered as having employee status or as being
entitled to participate in any plans, arrangements or distributions by
Corporation pertaining to any pension, stock, bonus, profit sharing or similar
benefits for Corporation's employees. Corporation shall not withhold any of
Consultant's compensation payments for income tax purposes and shall not have
any obligations with regard to Social Security payments for Consultant,
insurance or workers' compensation coverage for Consultant, or any similar
items. Nothing contained in this Agreement shall be deemed or construed to
constitute a relationship of partnership, joint venture, principal and agent,
employer and employee, franchisor and franchisee, or any other association
between the parties.
(1) JURISDICTION
Each party to this Agreement agrees that an action or proceeding
to determine or enforce any rights or obligations under this Agreement may be
brought in the courts of the State of California in and for the Counties of
Orange and Los Angeles. Each party consents to the jurisdiction of such courts
over such party for purposes of any such action or proceeding.
(m) GENDER
Where required by the context, the masculine gender of pronouns
shall be deemed to include the feminine or the neuter.
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EXECUTED at Irvine, California as of the date first written above.
CORPORATION:
ENDOCARE, INC.,
a Delaware corporation
By: /s/ Xxxx Xxxxx
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Xxxx Xxxxx, President
FOUNDATION RESEARCH, INC.:
By: /s/ XXXXXXXX XXXXXX
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Xxxxxxxx Xxxxxx, M.D.
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Printed Name
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EXHIBIT A
DUTIES
To advise Company on product developments presented. To provide feedback to
Company on matters of clinical and market acceptance of new technologies.
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