CONSULTING AGREEMENT
Exhibit 4(c)(11)
This Consulting Agreement (the “Agreement”) is made by and between Xxxxxx X. Xxxxxx, M.D., an
individual with an address of Center for Neurologic Diseases, Harvard Medical School, Xxxxxxx and
Women’s Hospital, 000 Xxxxxxxx Xxxxxx-XXXX, Xxxxxx, XX 00000 (“Consultant”), and Elan
Pharmaceuticals, Inc., a Delaware corporation with an address of 000 Xxxxxxx Xxxxxxxxx, Xxxxx Xxx
Xxxxxxxxx, Xxxxxxxxxx 00000 (“Elan”), and is effective as of May 20, 2004 (“Effective Date”).
RECITALS
A. Consultant possesses special expertise and knowledge within the field of research and
clinical practice relating to various diseases (“Consultant Field”);
B. Elan has need for Consultant’s services with respect to the treatment and/or prevention of
neurodegenerative disease, autoimmune disease and pain (“Elan Field”); and
C. Elan and Consultant now desire to enter into this Agreement whereby Consultant shall
perform consulting services for Elan on the terms and conditions set forth below.
AGREEMENT
NOW, THEREFORE, Consultant and Elan agree as follows:
1. Description of Services. Subject to the terms and conditions of this Agreement,
Consultant shall perform services for Elan, according to the time frame agreed upon by the parties,
with respect to the Elan Field, including but not limited to advising and/or speaking at various
Elan Committee meetings, providing review of and advice on the merit or value of Elan’s research
and development concerning Elan Field, as well as information on new developments and opportunities
in neurodegenerative disease, autoimmune disease, and pain.
2. Term and Renewal. This Agreement shall be effective as of the Effective Date and
shall remain in effect for a period of three (3) years unless terminated pursuant to this
Agreement. This Agreement may only be renewed for additional periods on terms mutually agreed upon
in writing by the parties. Neither party shall have any obligation to renew this Agreement.
3. Fees and Expenses.
(a) In return for services actually rendered, Elan will pay Consultant at a rate of $200.00
per hour, not to exceed $1,200.00 per day.
(b) Elan shall also reimburse Consultant for all out-of-pocket expenses actually incurred by
Consultant in rendering services under this Agreement so long as such expenses, in Elan’s opinion,
are reasonable and necessary. Such expenses will include reasonable and necessary travel (air
travel to be coach only), lodging and meals. Consultant shall provide Elan with a written expense
report, complete with receipts or other reasonable
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documentation, for all such expenses requested
for reimbursement.
(c) The aggregate fees and expenses payable to Consultant for the Term of this Agreement shall
not exceed $10,000.00 without Elan’s prior written consent.
4. Invoices. Amounts due hereunder shall be payable no later than thirty (30) days
from Elan’s receipt of a written invoice with an expense report and accompanying supporting
documentation therefor.
5. Confidentiality; Proprietary Information; Intellectual Property.
(a) Any and all information which Elan or its Affiliates may disclose to Consultant under this
Agreement will be considered confidential, including, but not limited to, information related to
the Elan Field. “Affiliate” shall mean any corporation or other entity that controls, is
controlled by, or is under common control with, a party hereto. An entity shall be regarded as in
control of another corporation or entity if it owns or directly or indirectly controls more than
50% of the voting securities or other ownership interest of the other corporation or entity.
(b) Consultant further agrees that all discussions and negotiations with respect to this
Agreement are confidential.
(c) Consultant understands that Elan possesses and will continue to possess information that
has been created, discovered or developed, or has otherwise become known to Elan or its Affiliates
and/or in which property rights have been assigned or otherwise conveyed to Elan or its Affiliates,
which information has commercial value in the business in which Elan is engaged. All such
information, including the information described in Sections 5 (a) and (b) above, and including any
other information developed by or on behalf of Consultant pursuant to this Agreement, is
hereinafter referred to as “Proprietary Information.” By way of illustration, but not limitation,
Proprietary Information includes trade secrets, processes, formulae, data and know-how,
improvements, inventions, techniques, marketing plans, strategies, forecasts and customer and
contact lists. Accordingly, Consultant further agrees as follows:
(i) All Proprietary Information shall be the sole property of Elan or its Affiliates and their
assigns, as the case may be, and such parties shall be the sole owners of all patents and other
rights in connection therewith. At all times during this Agreement and at all times after
expiration or termination of this Agreement, Consultant will keep in confidence and trust all
Proprietary Information, and will not use or disclose any Proprietary Information without the prior
written consent of Elan, except as may be necessary in the ordinary course of performing the duties
of Consultant hereunder. No announcement, oral presentation or publication of any kind relating to
any Proprietary Information shall be made by Consultant without the prior written consent of Elan;
and
(ii) All documents, data, records, apparatus, equipment and other physical property, whether
or not pertaining to Proprietary Information, furnished to Consultant by or on behalf of Elan or
developed by or on behalf of Consultant pursuant to this Agreement, shall be and remain the sole
property of Elan and/or its Affiliates and shall be returned promptly as and when requested by
Elan. Should Elan not so request, Consultant agrees to return and
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deliver all such property upon
expiration or termination of this Agreement for any reason and Consultant shall not retain or
reproduce any such property upon expiration or termination.
Notwithstanding the foregoing, Proprietary Information shall not be deemed to include information
that Consultant can demonstrate (a) was already in Consultant’s possession at the time of
disclosure by or on behalf of Elan as evidenced by Consultant’s written records, (b) is or
hereafter becomes generally available to the public other than as a result of a breach of this
Agreement by Consultant, (c) was made known to Consultant by a third party lawfully in possession
of such information as evidenced by Consultant’s written records, or (d) is required to be
disclosed pursuant to a governmental or court proceeding, provided that Consultant notifies Elan in
writing in a timely manner of the required disclosure such that Elan has an opportunity to seek a
protective order to limit the nature and scope of the information to be disclosed, and this
exception only permits disclosure to the extent and to the persons, as required by such
governmental or court proceeding.
(d) Consultant further agrees as follows:
(i) Consultant shall promptly disclose to Elan or its designee all intellectual property
(including, but not limited to any inventions, improvements, formulae, processes, techniques,
know-how, data, patents or applications for patents, trade secrets, trademarks, copyrights and
confidential information as described in this Section 5), made or conceived or reduced to practice
or learned by Consultant (collectively, “Intellectual Property”) which: (A) result from the tasks
assigned to Consultant hereunder; (B) are funded by or on behalf of Elan or its Affiliates; or (C)
result from the use or property or premises owned, leased or contracted for by or on behalf of Elan
or its Affiliates.
(ii) Consultant agrees to and does hereby sell, assign, transfer and set over to Elan, its
Affiliates, successors or assigns, as the case may be, all right, title and interest in and to all
Intellectual Property developed or conceived individually or in conjunction with others in
performance of this Agreement, to be held and enjoyed by Elan, its Affiliates, successors or
assigns, as the case may be, to the full extent of the term for which any patents may be granted
and as fully as the intellectual property would have been held by Consultant had this Agreement,
sale or assignment not been made.
(iii) Consultant shall execute and deliver any and all instruments and documents and perform
any and all acts, necessary to obtain, maintain or enforce patents, trademarks, trade secrets and
copyrights for such Intellectual Property, and shall make, execute and deliver any and all
instruments and documents and perform any and all acts necessary to obtain, maintain or enforce
patents, trademarks, trade secrets and copyrights for such Intellectual Property as Elan may
designate in any and all countries. All costs and expenses of application and prosecution of such
patents, trademarks, trade secrets and copyrights shall be paid by Elan.
(iv) Any copyrightable material prepared by Consultant as a result of Consultant’s
activities
with Elan, in performance of this Agreement, are prepared as works for hire for the benefit of
Elan. Consultant hereby assigns to Elan any copyright to which Consultant is entitled for any
copyrightable material prepared in the course of the performance of this Agreement for Elan. Elan
shall have the right to reproduce, modify and use such material and all results generated as the
result of services rendered under this Agreement for any purpose related to its lawful business.
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(v) Upon the written request of Elan, Consultant shall make any assignment provided for in
this Section 5 directly to, or for the benefit of, an Elan Affiliate or Elan’s designee, including
Consultant’s performance of any related obligations hereunder.
6. Remedies. (a) Consultant acknowledges that Elan will have no adequate remedy at
law if Consultant breaches the terms of Section 5 hereof. Accordingly, in such event, Elan shall
have the right, in addition to any other rights it may have at law or equity, to obtain in any
tribunal of competent jurisdiction injunctive relief to restrain any breach or threatened breach.
(b) If, due to reasons within Consultant’s reasonable control, Consultant’s products or services
fail to meet standards generally accepted in the applicable industry, or if Consultant fails to
provide agreed-upon products or services in a timely manner Elan shall have the right, in addition
to any other remedy it may have at law or equity, to: (i) terminate this Agreement immediately upon
written notice to Consultant; (ii) require that defective products or services be replaced or
remedied, as the case may be, without charge to Elan; and (iii) correct, or have corrected by a
third party, the defective product or service and withhold from amounts owing to Consultant
hereunder all amounts incurred by Elan in taking such corrective measures.
7. Termination. This Agreement may be terminated (a) by Elan with or without cause
upon thirty (30) days’ prior written notice to Consultant, or (b) by Consultant in the event of a
material breach by Elan, provided that Consultant provides Elan with written notice of such breach
and Elan fails reasonably to cure such breach within thirty (30) days of receipt of such notice.
In the event this Agreement is terminated pursuant to this Section prior to completion of the
work to be performed, Consultant shall cease work upon Elan’s request, and shall be entitled to
receive its fee for work actually and reasonably performed through the effective date of
termination.
The provisions of Sections 5-6 and 9-14, inclusive, shall survive expiration or termination of
this Agreement.
8. Independent Contractor. Nothing in this Agreement shall be construed to create an
employment relationship between Consultant and Elan. Consultant shall be an independent contractor
and shall have no authority to enter into contracts on behalf of Elan, bind Elan to any third
parties or act as an agent on behalf of Elan in any way. Consultant shall not be entitled to
receive any compensation, or medical or other benefits as an Elan employee. Accordingly,
Consultant shall account for and report, and be liable for the payment of all applicable federal
and state income taxes, social security taxes, and all other taxes due on
payments received by Consultant hereunder. Consultant hereby acknowledges that Elan will
report as compensation all payments to Consultant hereunder.
9. Consultant’s Representations and Warranties. Consultant hereby represents and
warrants to Elan that (a) Consultant has the authority to enter into and perform this Agreement and
(b) performance of Consultant’s services as contemplated by this Agreement will not result in the
breach or violation of any contract, arrangement or understanding (including without limitation any
intellectual property rights or any agreement of confidentiality or non-
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disclosure, whether written
or oral) which Consultant may have with any third party (including without limitation current and
former employers of Consultant and any other companies or persons for which Consultant has
performed or is performing consulting services).
10. Compliance Standards. During the term of this Agreement and any renewal term,
Consultant shall comply with all applicable laws, rules and regulations in the conduct of the
services being performed.
11. Severability. If any provision of this Agreement is declared void or
unenforceable, such provision shall be deemed modified to the extent necessary to allow
enforcement, and all other portions of this Agreement shall remain in full force and effect.
12. Entire Agreement, Amendments. This Agreement contains the entire and complete
agreement between the parties with respect to the subject matter hereof, and supersedes all prior
oral and/or written agreements with respect to the subject matter hereof, other than any currently
effective confidentiality agreement. Any changes to this Agreement must be in writing and signed
by both parties.
13. Successors. This Agreement shall be binding upon and inure to the benefit of the
successors, assigns and legal representatives of the parties.
14. Governing Law. This Agreement shall be governed by and construed in accordance
with the laws of the State of California without regard to its conflicts of laws provisions, and
the parties agree to personal jurisdiction and venue in the state and federal courts of San
Francisco, California, in any suit or proceeding arising out of the subject matter of this
Agreement.
15. Execution in Counterparts or by Facsimile. This Agreement may be executed in one
or more counterparts, each of which shall be deemed an original but all of which together shall
constitute one and the same document. This Agreement may be executed by facsimile. The parties
agree that facsimile copies of signatures have the same effect as original signatures.
DATED as of the Effective Date, and executed by:
| ELAN PHARMACEUTICALS, INC | XXXXXX X. XXXXXX, M.D. | |||||||
By:
|
/s/ Xxxx Xxxxxx | /s/ Xxxxxx X. Xxxxxx | ||||||
Name:
|
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