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Exhibit 10.04
PATENT PURCHASE AGREEMENT
THIS PATENT PURCHASE AGREEMENT (this "Agreement") is made this 26th day
of April, 1995, by and between Xxxxxxx Xxxxxxxxxxxxx, Ph.D., a resident of
Georgia ("Seller") and AtheroGenics, Inc., a Georgia corporation ("Buyer").
WITNESSETH:
WHEREAS, Seller is the inventor of that certain United States Patent
No. 5,262,439 for "Soluble Analogs of Probucol" issued on November 16, 1993 (the
'439 patent) and corresponding foreign applications and patents (the "Patents").
WHEREAS, Seller previously granted all right, title and interest to the
Patents to The Regents of the University of California ("U.C.") and U.C. has
returned to Seller all of its right, title and interest to the Patents for
consideration in part of [*] (the "Return Price"); and
WHEREAS, the Patents are subject to a License to the United States
Government executed on March 27, 1995 (the Government License) by virtue of
funding provided by the Department of Health and Human Services for work
incorporated in the Patents; and
WHEREAS, Buyer wishes to obtain all right, title and interest, other
than rights conferred in the Government License, to the Patents and the
inventions covered by the Patents from Seller and Seller desires to transfer the
Patents to Buyer;
NOW, THEREFORE, for good and valuable consideration, the receipt of
which is hereby acknowledged, the parties hereto agree as follows:
1. BUYER'S ACQUISITION OF THE PATENT.
(a) Seller shall sell and assign all of its right, title and interest
to the Patents to Buyer pursuant to the Assignment of Patents attached hereto as
Exhibit "A".
(b) In full consideration of Seller's sale and transfer of the Patents
in accordance with Section 1(a), Buyer shall (i) pay Seller an amount equivalent
to the Return Price, (ii) make the payment set forth in Section 1(c) below, and
(iii) make the royalty payments to Seller set forth in Section 2.
(c) Upon consummation of the transactions contemplated herein, not
including periodic royalty payments, Buyer shall reimburse Seller (or pay on
behalf of Seller) up to [*] of any of the fees charged by Xxxxxxxxx, Wise &
Xxxxxxx for services performed for Seller in connection with the transactions
contemplated herein, including the reacquisition of Patents by Seller from U.C.
[*] Certain confidential information contained in this document, marked
by an asterisk within brackets, has been omitted and filed
separately with the Securities and Exchange Commission pursuant to
a request for confidential treatment under Rule 406 of the
Securities Act of 1933, as amended.
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2. ROYALTY PAYMENTS TO SELLER.
(a) In consideration of Seller's sale and assignment of the Patents to
Buyer, Buyer shall pay Seller for the period beginning on the Closing Date and
extending until the last to expire valid claim in the jurisdiction where the
patent is enforceable ("Term") a royalty of [*] of the gross selling price paid
to Buyer by a purchaser of any process, service or product in which any one of
claimed inventions of the Patents is utilized as a necessary component net of
any discounts, allowances, taxes, rebates, returns, import or export duties and
transportation prepaid or allowed.
(b) Royalty payments shall be made by Buyer to Seller on a semiannual
basis on January 1 and July 1 of each year during the Term and Buyer shall
provide Seller with an accounting of all sales of products in respect of the
Patents upon Seller's request. All records and books of account with respect to
the Patents shall be available at all reasonable times at the principal office
of Buyer for inspection by Seller not more than twice per year.
3. IMPROVEMENTS ON PATENT.
(a) Rights to all improvements made relating to inventions claimed in
the Patents ("Improvements"), which Improvements are made by Seller, shall be
covered by that certain Patent, Copyright and Noncompetition Agreement of even
date.
(b) All Improvements made by Buyer shall become the exclusive property
of Buyer, and Seller shall not be entitled to any royalty payments with respect
to such Improvements.
4. REPRESENTATIONS AND WARRANTIES OF SELLER.
The Representations and Warranties of Seller shall survive the
Assignment of the Patents.
(a) Seller represents that to the best of his knowledge he has full
power and authority to execute, deliver and perform this Agreement and that the
provisions of this Agreement do not conflict with any other agreement to which
Seller is a party or by which Seller is bound.
(b) Seller is the sole and exclusive owner of the Patents, subject to
the Government License, and has the unrestricted right to sell and assign the
Patents to Buyer.
(c) No claim has been asserted against Seller by any person which
challenges or questions the ownership or validity of the Patents or
effectiveness of any of the claimed inventions of the Patents and to the
knowledge of Seller the making, using or selling of any of the claimed
inventions of the Patents or the know-how in connection therewith does not
infringe in any respect on the rights of any person or entity.
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(d) Other than the Government License, Seller has not assigned any
interest or right to obtain an interest in the Patents to anyone other than
Holder.
(e) Seller is the true, sole inventor of the inventions claimed in the
Patents.
5. CONDITIONS TO BUYER'S OBLIGATIONS. Buyer's obligations hereunder
shall be subject to the satisfaction of the following conditions:
(a) The representations and warranties made by Seller herein shall be
true and correct as of the date hereof and as of the Closing Date with the same
force and effect as though said representations and warranties had been made on
and as of the Closing Date and Seller shall have complied with all of the
covenants and agreements required to be performed by Seller on or prior to the
Closing Date.
(b) Seller shall have executed and delivered to Buyer the Consulting
Agreement attached hereto as Exhibit "B" along with any other agreement required
thereby.
(c) All actions taken by Seller in connection with the transactions
contemplated by this Agreement and all documents and papers relating to such
transactions shall be satisfactory to Buyer, and Seller shall have delivered to
Buyer a certificate, dated as of the Closing Date, certifying that the
conditions set forth in Section 5(a) and Section 5(b) have been satisfied.
6. MISCELLANEOUS.
(a) The provisions of this Agreement shall be binding upon and inure to
the benefit of the heirs, personal representatives, successors and permitted
assigns of the parties hereto.
(b) This Agreement is not assignable by Seller without the prior
written consent of the other party. Any amendments to this Agreement shall be in
writing and shall be signed by both parties.
(c) Any notice or other communication required or permitted to be given
under this Agreement shall be in writing and shall be mailed by certified or
registered mail, return receipt requested, or sent by facsimile, or by overnight
courier or express mail service:
If to Seller:
Xxxxxxx Xxxxxxxxxxxxx, Ph.X.
Xxxxx University School of Medicine
Department of Gyn-Ob
X.X. Xxx 00000
Xxxxxxx, XX 00000
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with a copy to:
Xxxxxxxxx, Wise & Xxxxxxx
0000 Xxxxxx Xxx, Xxxxx 000
Xxxx Xxxx, XX 00000-0000
Attention: Xxxxxx Xxxxxx, Esq.
If to Buyer:
AtheroGenics, Inc.
0000 Xxxxxxxxx Xxxx, X.X.
Xxxxx 0000, Xxxx Xxxxx
Xxxxxxx, Xxxxxxx 00000
Attention: President
with a copy to:
Lyon & Lyon
First Interstate World Center
000 Xxxx Xxxxx Xxxxxx, Xxxxx 0000
Xxx Xxxxxxx, XX 00000-0000
Attention: Xxxxx X. Xxxxxxxxx, Ph.D
All notices given shall be deemed effective upon receipt or if mailed the
earlier of receipt or 5 days after mailing. A change of address is effective
when given by one party to the other party in writing pursuant to the notice
provisions of this Section 6(c).
(d) This Agreement is executed by Buyer in, and shall be construed in
accordance with and governed by the laws of, the State of Georgia without giving
effect to the principles of conflicts of law thereof.
(e) This Agreement may be executed in one or more counterparts, each of
which shall for all purposes be deemed to be an original, and all of which shall
constitute the same instrument.
(f) This Agreement (including the Exhibits hereto) constitutes the sole
understanding of the parties with respect to the subject matter hereof;
provided, however, that this provision is not intended to abrogate any other
written instrument or agreement between the parties executed with or after this
Agreement.
(g) Each party hereto agrees to do all acts and to make, execute and
deliver such written instruments as from time to time shall reasonably be
required to carry out the terms and provisions of this Agreement. Furthermore,
Seller shall, at any time after the date hereof, take all actions necessary to
apply for and to obtain Letters Patent or other comparable legal protection if
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before Closing, or assist Buyer in applying for and obtaining Letters Patent or
other legal protection if after Closing in any additional jurisdiction upon
Buyer's request and at Buyer's expense.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the day and year first above written.
Xxxxxxx Xxxxxxxxxxxxx
----------------------------------
Xxxxxxx Xxxxxxxxxxxxx, Ph.D.
ATHEROGENICS, INC.
R Xxxxx Xxxxxxxxx
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By: R Xxxxx Xxxxxxxxx, M.D., Ph.D.
President
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ASSIGNMENT
WHEREAS THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, a
corporation duly organized under and pursuant to the laws of CALIFORNIA, and
having its principal place of business at 000 Xxxxxxxx Xxxxx, 00xx Xxxxx,
Xxxxxxx, Xxxxxxxxxx 00000-0000 (hereinafter referred to as the assignor) is the
owner of the invention entitled "SOLUBLE ANALOGS OF PROBUCOL" set forth in
United States Patent Number 5,262,439 issued on November 16, 1993; and
WHEREAS XXXXXXX XXXXXXXXXXXXX, Emory University Department of
GYN OB, X.X. Xxx 00000, Xxxxxxx, XX 00000, (hereinafter referred to as the
assignee), desires to acquire the entire right, title and interest in and to
said inventions and said Letters Patent of the United States, and in and to any
Letters Patent or Patents, United States or foreign, to be obtained therefor and
thereon;
NOW THEREFORE, for good and valuable consideration, the
receipt of which is hereby acknowledged, said assignor does sell, assign,
transfer and set over to assignee, his successors, legal representatives and
assigns, its entire right, title and interest in and to the above mentioned
inventions, Letters Patent, and any and all Letters Patent or Patents in the
United States of America and all foreign countries which may be granted therefor
and thereon, and to any and all divisions, continuations, continuations-in-part,
reissues and extensions, and all its rights under the International Convention
for the Protection of Industrial Property, the same to be held and enjoyed by
said assignee to the full end of the term or terms for which Letters Patent or
Patents may be granted, as fully and entirely as the same would have been held
and enjoyed by the assignor, had this sale and assignment not been made.
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ASSIGNOR hereby covenants that no assignment, sale, agreement
or encumbrance has been or will be made or entered into which would conflict
with this Assignment.
ASSIGNOR hereby authorizes and requests the Commissioner of
Patents and Trademarks to record this Assignment for said Letters Patent or any
legal equivalent thereof in the name of ASSIGNEE, his successors and assigns, in
accordance with this Assignment.
WITNESS MY HAND AT Alameda California, this 25th day of
January, 1995.
THE REGENTS OF THE UNIVERSITY OF
CALIFORNIA
By: Xxxxx X Xxxxxxxxx
------------------------------
STATE OF CALIFORNIA )
) SS.
COUNTY OF ALAMEDA )
On this 25th day of January, 1995, before me, Xxxxxx X. Xxxxx a Notary
Public, personally appeared Xxxxx X. Xxxxxxxxx, proved to me on the basis of
satisfactory evidence to be the person whose name is subscribed to this
instrument, and acknowledged that he executed the same in his authorized
capacity, and that by his signature on the instrument the person, or the entity
upon behalf of which the person acted, executed the instrument. Witness my hand
and official seal.
Xxxxxx X. Xxxxx
--------------------------------
Notary Public in and for
said County and Xxxxx
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XXXXXXX XX XXX XXXXXX XXXXXX GOVERNMENT
Invention Title: Soluble Analogs of Probucol
Inventor(s): Xxxxxxx Xxxxxxxxxxxxx
Patent or Application Serial No: 5,262,439
U.S. Filing/Issue Date: Issued November 16, 1993
Grant/Contract Identification No: HL 14197
Foreign Applications filed/intended in (countries): Canada, EPO, Japan
The invention identified above is a Subject Invention under 35 U.S.C. 200, et
seq., and the Standard Patent Rights clause at 37 CRF 401.13 or FAR 52.227-11,
which are included among the terms of the above-identified grant/contract award
from the Public Health Service/National Institutes of Health. This document is
confirmatory of:
1. The nonexclusive, nontransferable, irrevocable, paid-up
license granted to the Federal Government in the invention
described in the patent application and in any of all
divisions, continuations, and continuations in part, and in
any and all patents and re-issues granted thereon; and
2. All other rights acquired by the Government by reason of the
above identified grant/contract award and the laws and
regulations which are applicable to the award.
The Government is hereby granted an irrevocable power to inspect and make copies
of the above-identified patent application.
Signed this 27 day of March, 1995.
By: /s/ Xxxxxxx Xxxxxxxxxxxxx
---------------------------------
[Inventor(s) Name]
Street Address: 0000 Xxxxx Xxxxx Xxxxx, Xxxxxxx
--------------------------------
City, State, & Zip Code: Xxxxxxx, XX 00000
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April 26, 1995
Xxxxxxx Xxxxxxxxxxxxx, Ph.X.
Xxxxx University School of Medicine
Department of Gyn-Ob
X.X. Xxx 00000
Xxxxxxx, XX 00000
Dear Xx. Xxxxxxxxxxxxx:
AtheroGenics, Inc., a Georgia corporation (the "Company"), desires to
obtain your services as a consultant in the field of atherogenesis and the
chemistry and biology of oxidation reactions and their inhibitors, to assist and
advise the Company in connection with its efforts of researching, developing,
marketing and worldwide promotion of prescription pharmaceuticals for the
treatment of atherosclerosis and other inflammatory diseases through regulation
of intracellular redox pathways (the "Business"). As part of your services as a
consultant, the Company desires that you become a member of its Scientific
Advisory Board. Subject to the Assignment of Patents by you to the Company
pursuant to that certain Patent Purchase Agreement, dated as of April 26, 1995,
between you and the Company (the "Patent Purchase Agreement"), you agree to
provide such consulting services and to serve on the Company's scientific
Advisory Board in accordance with the following terms and conditions:
1. SERVICES:
a. CONSULTING SERVICES. You agree to devote up to eight (8) hours
per month providing services as a consultant to the Company in
connection with the Business. Such services shall be performed
during regular business hours at times reasonably agreeable to
you and the Company and shall consist of such duties and
responsibilities as are assigned to you by the Board of
Directors of the Company.
b. SCIENTIFIC-ADVISORY BOARD. As part of your services as a
consultant, you agree to serve on the Company's Scientific
Advisory Board. There is currently no formal schedule
established for meetings of the Scientific Advisory Board but
it is anticipated that the Scientific Advisory Board will meet
a minimum of six (6) days per year.
2. COMPENSATION.
a. CASH COMPENSATION AND EXPENSE REIMBURSEMENT.
i. As sole and exclusive compensation for your services
hereunder, the Company shall pay you Twelve Thousand
Dollars ($12,000) per year for your consulting
services and for serving on the Scientific Advisory
Board.
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Xxxxxxx Xxxxxxxxxxxxx, Pd.D.
April 26, 1995
Page 2
For our respective conveniences, the compensation
shall be paid to you at the rate of $1000 per month.
ii. In addition, you shall be reimbursed for any air
travel (economy class) necessary and requested by the
Company, and all reasonable living expenses,
including, but not limited to, car rental, meals, and
lodging incurred by you when associated with the
rendering of your services at locations away from
your home or from Atlanta, Georgia. The Company shall
make all payments to you in accordance with this
paragraph within thirty (30) days of receipt of an
invoice from you itemizing your travel expenses,
including receipts for incidental expenses in excess
of $25.00. Your invoices shall be mailed to the
Company at 0000 Xxxxxxxxx Xxxx, X.X., Xxxxx 0000,
Xxxx Xxxxx, Xxxxxxx, Xxxxxxx 00000, Attention:
President.
iii. All payments, including reimbursements for actual
expenditures, shall be, included in your gross income
as compensation for services rendered and accordingly
reported on your IRS Form 1099. You shall be
responsible for payment of all taxes including Social
Security taxes on income earned under this Agreement
as none will be withheld by the Company. You shall
indemnify AtheroGenics for any claims made by
federal, state or local tax agencies as a result of
your failure to pay taxes, fees, withholding, or the
like.
b. COMMON STOCK OF THE COMPANY.
i. As additional compensation for your services
performed under this Agreement, and as an incentive
to help make the Company successful, you will be
issued 40,000 shares of Common Stock of the Company
upon your execution and delivery of this Agreement
and the simultaneous closing of the sale of United
States Patent No. 5,262,439 and corresponding foreign
applications and patents pursuant to the Patent
Purchase Agreement. Simultaneous with your acceptance
of this Agreement, you will enter into a Stock
Restriction Agreement between you and the Company
(the "Stock Restriction Agreement") in the form
attached hereto as Exhibit "I". If this Agreement is
terminated by the Company for cause (which shall be
the willful breach by you of this Agreement) or by
you (other than for death or disability) pursuant to
Paragraph 4 prior to the end of the term provided
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Xxxxxxx Xxxxxxxxxxxxx, Pd.D.
April 26, 1995
Page 3
herein, you shall be entitled only to the Vested
Shares as defined in the Stock Restriction Agreement.
ii. The Stock is being acquired by you solely for your
account, for investment, with no present intention of
making a public distribution thereof within the
meaning of the Securities Act. None of the Stock will
be sold or transferred by you in violation of the
Securities Act or any state securities law, and your
financial condition is such that this investment can
be made on a long-term basis and you can afford the
complete loss of the investment. You are aware that
none of the Stock has been registered under the
Securities Act or any state securities law, that the
Stock must be held indefinitely unless they are
subsequently registered or an exception from such
registration is available and that the Company is
under no obligation to register any of the Stock
under the Securities Act or any state securities law.
You are aware that an exception from registration
requirements of the Securities Act pursuant to Rule
144 thereunder is not presently available; that the
Company has not covenanted to make available an
exception from the registration requirements pursuant
to such Rule 144 or any successor rule for resale of
any of the Stock; and that even if any exemption
under Rule 144 were available, the Rule permits only
routine sales of securities in limited amounts in
accordance with the terms and conditions of such
Rule. You further acknowledge that there is presently
no market for the purchase and sale of any of the
Stock.
iii. You confirm that the Company has made available to
you, or to your representatives, the opportunity to
ask questions of its officers and directors and to
acquire such additional information about the
business and financial condition of the Company as
you request. You are not acquiring and will not
acquire the Stock based upon representations, oral or
written, by any person with respect to the future
value of, or income from, such Stock but rather upon
your independent examination and judgment as to the
prospects of the Company, You have all requisite
legal power to enter into this Agreement, to acquire
the Stock and carry out and perform your other
obligations under the terms of this Agreement.
3. INDEPENDENT CONTRACTOR.
It is agreed that you are to have complete freedom of action as to the
details, methods and means of performing these services. It is further
understood that you are retained and
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Xxxxxxx Xxxxxxxxxxxxx, Pd.D.
April 26, 1995
Page 4
have contracted with the Company only for the purposes and to the
extent set forth in this Agreement, and your relation to the Company
and any of its affiliates shall, during the period of your retainer and
service, be that of an independent contractor. Except as otherwise
provided herein, you shall not be considered under the provisions of
this agreement or otherwise as having status as an employee of the
Company, nor shall you be entitled hereafter to participate in any
plans, arrangements, or distributions by the Company relating to any
pension, deferred compensation, bonds, stock bonus, stock option,
hospitalization, insurance, or other benefits extended to its employees
since you are performing services as an independent contractor.
4. CONTRACT PERIOD.
This Agreement becomes effective on the date set forth above your
signature and will continue in effect for four (4) years.
Notwithstanding the foregoing, either you or the Company may terminate
this Agreement at any time and for any reason during its term by giving
at least one (1) month's written notice. This Agreement shall
automatically extend for consecutive twelve (12) month periods subject
to the rights of the parties to terminate this Agreement as provided
herein.
5. INVENTIONS.
You agree that inventions made during the course of this Agreement
shall be subject to the terms of that certain Patent, Copyright and
Nondisclosure Agreement dated as of April 26, 1995 (the "Patent,
Copyright and Nondisclosure Agreement").
6. NON-DISCLOSURE: CONFLICT OF INTEREST.
Simultaneous with your acceptance of this Agreement, you will enter
into the Patent, Copyright and Nondisclosure Agreement in the form
attached hereto as Exhibit "2".
7. GENERAL CONDITIONS.
a. If any provision of this Agreement shall be declared invalid,
illegal or unenforceable, such provision shall be severed and
all remaining provisions shall continue in full force and
effect.
b. The term, the Company, as used herein, shall include any
subsidiary or affiliate of the Company.
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Xxxxxxx Xxxxxxxxxxxxx, Pd.D.
April 26, 1995
Page 5
c. This Agreement shall be binding upon you, your heirs,
executors, assigns and administrators and shall inure to the
benefit of the Company, its successors and assigns.
d. This Agreement shall be governed by and construed in
accordance with the laws of the State of Georgia.
8. PRIOR AGREEMENTS.
This Agreement shall replace all prior agreements between you and the
Company relative to your services as a consultant, and this Agreement
along with the Patent Purchase Agreement, the Stock Restriction
Agreement and the Nondisclosure Agreement, contain the entire
understanding between you and the Company regarding your relationship
with the Company. This Agreement shall be amended only in writing
agreed to by both parties and shall not be assignable by you or by
operation of law.
Please indicate your acceptance of the foregoing by signing in the
space provided below and returning one original letter to my attention.
Sincerely,
R. Xxxxx Xxxxxxxxx
---------------------------
R. Xxxxx Xxxxxxxxx, A.D., Ph.D.
President
AtheroGenics, Inc.
Accepted and agreed to this
26th day of April, 1995.
/s/ Xxxxxxx Xxxxxxxxxxxxx, PH.D
-------------------------------
Xxxxxxx Xxxxxxxxxxxxx, Ph.D.
Social Security No.[*]
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ATHEROGENICS, INC.
STOCK RESTRICTION AGREEMENT
THIS STOCK RESTRICTION AGREEMENT (this "Agreement") is made
and entered into as of April 26, 1995 by and between ATHEROGENICS, INC. a
Georgia corporation (the "Company"), and Xxxxxxx Xxxxxxxxxxxxx, Ph.D., a
resident of Georgia ("Stockholder").
R E C I T A L S:
A. Stockholder is being issued as of the date hereof forty thousand
(40,000) shares of the Common Stock of the Company (the "Shares") in connection
with that certain Patent Purchase Agreement of even date herewith (the "Patent
Purchase Agreement") and that certain Consulting Agreement dated of even date
herewith (the "Consulting Agreement"). As used herein, the term "Shares" refers
to all such shares presently held by the Stockholder and to all securities
purchased or otherwise received in addition thereto or in replacement thereof,
pursuant to or in consequence of any stock dividend, stock split,
recapitalization, merger, reorganization, exchange of shares or other similar
event.
B. The Company is party to Series A Convertible Preferred Stock
Agreement (the "Purchase Agreement") dated as of May 6, 1994 with Alliance
Technology Ventures, L.P. ("Alliance") pursuant to which the Company issued to
Alliance the Company's Series A Convertible Preferred Stock. All capitalized
terms in this Agreement shall have the meanings ascribed to such terms in the
Purchase Agreement unless otherwise defined herein.
In order to provide assurance to Alliance and other persons
who may purchase or otherwise require shares of the Series A Convertible
Preferred Stock (the "Preferred Stock") of the Company in the future
(collectively, the "Investors") and thereby to assist in future equity
financings of the Company, Stockholder is willing to enter into this Agreement
for the benefit of the Company, the Investors and any other person or entity who
holds stock of the Company from time to time.
THE PARTIES AGREE AS FOLLOWS:
1. THE COMPANY'S RIGHT TO REPURCHASE UPON TERMINATION OF EMPLOYMENT.
1.1. REPURCHASE RIGHT. The unvested Shares, regardless of
ownership, shall be subject to a right (but not obligation) of repurchase in
favor of the Company (the "Right of Repurchase") at the price set forth below
("Purchase Price"), if the Stockholder's consultancy with the Company is
terminated by Stockholder other than for death or disability or by the Company
for cause which shall be the willful breach of the Consulting Agreement (the
"Consultancy Termination") before the Right of Repurchase expires with respect
to such Shares in accordance with Schedule 1.1. The Purchase Price shall be ten
cents (10(cent)) per Share for those
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40,000 Shares transferred in connection with the Patent Purchase Agreement and
the Consulting Agreement. The Stockholder may not dispose of or transfer or
pledge or grant a security interest in any Shares which are subject to the Right
of Repurchase and any such attempted transfer shall be null and void. The
Company's rights under this Section 1.1 shall be freely assignable, in whole or
in part.
1.2. REPURCHASE PROCEDURE. The Company's Right of Repurchase
shall terminate if not exercised by written notice from the Company to the
Stockholder within sixty (60) days from the date on which the Company learns of
the Consultancy Termination. If the Company exercises its Right of Repurchase,
the Stockholder shall promptly endorse and deliver to the Company the stock
certificates representing the Shares being repurchased free and clear of any
liens, claims or encumbrances, and the Company shall then pay promptly (but in
no event later than sixty (60) days after the date of Consultancy Termination,
or five (5) days after return of the stock certificate, whichever is later,
pursuant to the provisions of Section 1.3 of this Agreement, the total Purchase
Price to the Stockholder.
1.3. REPURCHASE PAYMENT. If, at the time of the repurchase,
any notes are outstanding which represent any portion of the total Purchase
Price for Shares being so repurchased, the Purchase Price shall be paid first by
cancellation of any obligation for accrued but unpaid interest under such notes,
next by cancellation of principal under such notes, and finally by payment of
cash or check.
1.4. BINDING EFFECT. The Company's Right of Repurchase shall
inure to the benefit of the successors and assigns of the Company and shall be
binding upon any representative, executor, administrator, heir, successor,
assignee or legatee of the Stockholder.
1.5. For purposes of this Article I and Article 2 below, if
Stockholder is also a member of the Board of Directors of the Company, the
Stockholder shall abstain from voting in regard to Company's Right of Repurchase
or Right of First Refusal (as that term is defined below).
2. COMPANY'S RIGHT OF FIRST REFUSAL RESPECTING SHARES.
2.1. RIGHT OF FIRST REFUSAL. Without derogation of any
provisions of Section 1, and except as provided by Section 2.5 of this
Agreement, and if and to the extent Stockholder is allowed to sell under
applicable Securities laws which may restrict Stockholder's ability to sell,
pledge or otherwise transfer, in the event that the Stockholder proposes to
sell, pledge, or otherwise transfer any Shares or any interest in such Shares to
any person or entity, the Company shall have a right of first refusal (the
"Right of First Refusal") with respect to such Shares. Stockholder shall give a
written notice (the "Transfer Notice") to the Company describing fully any
proposed transfer of Shares, including the number of Shares proposed to be
transferred, the proposed transfer price, and the name and address of the
proposed transferee. The Transfer Notice shall be signed both by the Stockholder
and by the proposed transferee. The Company shall have the right to purchase
all, but not less than all, of the Shares subject to the Transfer
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Notice at the same price and on the same terms as those indicated in the
Transfer Notice by delivery of a notice of exercise of the Company's Right of
First Refusal within thirty (30) days after the date the Transfer Notice is
delivered to the Company (the "Repurchase Period"). The Company's rights under
this Section 2.1 shall be freely assignable, in whole or in part. For purposes
of this Agreement, a transfer of Shares or any interest in Shares to an inter
vivos revocable trust which does not allow for the disposition of these Shares
except upon Stockholder's death and then only to Stockholder's immediate family
members, or transfer of Shares or any interest in Shares via a testimentary
instrument to Stockholder's immediate family members, shall not be considered a
transfer. However, subsequent sales, pledges or other transfers of any Shares or
interest in Shares shall be subject to this Right of First Refusal.
Notwithstanding anything to the contrary, any Shares so transferred shall be
subject to all limitations and restrictions of Section 1.1.
2.2. TRANSFER OF SHARES. If the Company fails to exercise the
Right of First Refusal within the Repurchase Period, the Stockholder, may, not
later than ninety (90) days following delivery to the Company of the Transfer
Notice, conclude a transfer of the Shares subject to the Transfer Notice on the
terms and conditions described in the Transfer Notice. Any proposed transfer on
terms and conditions different from those described in the Transfer Notice, as
well as any subsequent proposed transfer by the Stockholder, shall again be
subject to the Right of First Refusal and shall require compliance by the
Stockholder with the procedure described in Section 2.1 of this Agreement. If
the Company exercises the Right of First Refusal, the parties shall consummate
the sale of shares on the terms set forth in the Transfer Notice; provided,
however, in the event the Transfer Notice provides for payment for the Shares
other than in cash, the Company shall have the option of paying for the Shares
by the discounted cash equivalent of the consideration described in the Transfer
Notice.
2.3. BINDING EFFECT OF RIGHT OF FIRST REFUSAL. The Company's
Right of First Refusal shall inure to the benefit of the successors and assigns
of the Company and shall be binding upon any transferee of Shares other than a
transferee acquiring Shares in a bona fide arms-length transaction where the
Company failed to exercise the Right of First Refusal (a "Free Transferee"), or
a transferee of a Free Transferee.
2.4. TERMINATION OF THE COMPANY'S RIGHT OF FIRST REFUSAL.
Notwithstanding anything in this Section 2, the Company shall have no Right of
First Refusal, and Stockholder shall have no obligation to comply with the
procedures in Sections 2.1 through 2.3 after the earlier to occur of (i) the
Company's initial registered public offering of Common Stock to the public, or
(ii) the date ten (10) years after the date of this Agreement.
2.5. LIMITATIONS TO RIGHTS. Without regard and not subject to
the provisions of Sections 2.1 and 3.1, the Stockholder may sell or otherwise
assign for consideration Shares to any or all of his ancestors, descendants,
spouse, or members of his immediate family, or to a custodian, trustee
(including a trustee of a voting trust), executor, or other fiduciary for the
account of his ancestors, descendants, spouse, or members of his immediate
family, provided that each such transferee or assignee, prior to the completion
of the sale, transfer, or assignment, shall
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17
have executed documents assuming the obligations of the Stockholder under this
Agreement with respect to the transferred securities.
3. RIGHTS OF CO-SALE.
3.1. THE RIGHTS OF INVESTORS. Following the Repurchase Period,
if at any time Stockholder proposes to sell any Shares to parties other than the
Investors in a transaction (the "Transaction") not registered under the Act in
reliance upon a claimed exemption thereunder, then to the extent the Company has
not exercised its Right of First Refusal as to any Shares being sold, any
Investor which notifies the Company in writing, within thirty (30) days after
receipt of the notification from the Stockholder referred to in Section 3.2 (a
"Selling Holder") shall have the opportunity to sell a pro rata portion of
Shares which the Stockholder proposes to sell to such third party in the
Transaction; whereupon the Stockholder shall assign so much of his interest in
the agreement of sale as the Selling Holder shall be entitled to and shall
request hereunder, and the Selling Holder shall assume such part of the
obligations of the Stockholder under such agreement as shall relate to the sale
of the Shares by the Selling Holder. For the purposes of this Section 3, the
"pro rata portion" which the Selling Holder shall be entitled to sell shall be
an amount of shares equal to the total amount of Shares proposed to be sold
multiplied by a fraction, the numerator of which is the number of shares of
Common Stock issuable upon conversion of the Preferred Stock and shares of
Common Stock owned by a Selling Holder, and the denominator of which is the
total number of such shares owned by all participating Selling Holders and the
Stockholder. Each Selling Holder shall notify the Stockholder whether it elects
to sell an amount equal to or less than its pro rata portion of the Shares so
offered. Each Selling Holder shall be entitled to apportion Shares to be sold
among its partners and affiliates, provided that such Selling Holder notifies
the Company of such allocation.
3.2. NOTICE. Following the Repurchase Period, prior to any
sale by the Stockholder of any Shares, the Stockholder shall notify each
Investor and the Company, in writing, of his intention to sell and issue such
securities, setting forth the general terms under which he proposes to make such
sale. Such notice shall be signed by the third parties, or a representative of
such third parties, or shall be accompanied by a letter of intent signed by the
third parties or representatives of such third parties, to whom the sale,
assignment or transfer is proposed and shall indicate the third parties'
concurrence with the description of the terms.
3.3. FAILURE TO NOTIFY. If, within thirty (30) days after the
Stockholder gives his notice to the Investors, the Investors do not notify the
Company that they desire to sell all of their pro rata portion of the Shares
described in such notice at the price and on the terms and conditions set forth
therein, then the Stockholder may, not later than ninety (90) days following
delivery of the notice under Section 3.2 as to the Shares to which the Investors
do not indicate a desire to sell, conclude a transfer on the terms and
conditions described in the notice. In the event the Stockholder has not
concluded such sale of shares within such ninety (90) days, the Stockholder
shall not thereafter sell any Shares without first notifying the Investors and
the Company in the manner provided above. The exercise or non-exercise of the
right to participate in one or more sales of Shares made by the Stockholder
shall not adversely affect an Eligible
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Holder's right to participate in subsequent sales of Shares by the Stockholder
pursuant to Section 3.1 hereof.
3.4. TERMINATION. The obligations of the Stockholder under
this Section 3 shall terminate and be of no further force and effect upon the
occurrence of either event described in subsection 2.4 of this Agreement.
4. MARKET STANDOFF. The Stockholder hereby agrees that if so requested
by the Company or any representative of the underwriters in connection with any
registration of the offering of any securities of the Company under the Act, the
Stockholder shall not sell or otherwise transfer any Shares for a period of one
hundred eighty (180) days following the effective date of a Registration
Statement filed under the Act; provided, however, that such restriction shall
apply to the first two (2) Registration Statements of the Company to become
effective under the Act which include securities to be sold on behalf of the
Company to the public in an underwritten public offering under the Act. The
Company may impose stop-transfer instructions in order to enforce the foregoing
restrictions.
5. TAXES. The Stockholder shall execute and deliver to the Company with
this executed Agreement a copy of the Acknowledgement and Statement of Decision
Regarding Election Pursuant to Section 83(b) of the Internal Revenue Code (the
"Acknowledgement") attached hereto as Schedule 5A. The Stockholder shall execute
and submit with the Acknowledgement a copy of the Election Pursuant to Section
83(b) of the Code, attached hereto as Schedule 5B, if the Stockholder has
indicated in the Acknowledgement his decision to make such an election. The
Stockholder should consult his tax advisor to determine if there is a comparable
election to file in the state of his residence and whether such filing is
desirable under the circumstances. The Company may withhold from the
Stockholder's wage, or require the Stockholder to pay to the Company, any
applicable withholding or employment taxes resulting from the lapse of any
restrictions imposed on the Shares.
6. STOCK RESTRICTIVE LEGENDS. Stock certificates evidencing Shares may
bear such restrictive legends as the Company and the Company's counsel deem
necessary or advisable under applicable law or pursuant to this Agreement,
including, without limitation, the following legends:
"The securities represented hereby are subject to a right of
first refusal by the Company and a right of co-sale on the part of
certain stockholders pursuant to provisions of the Stock Restriction
Agreement between the Company and Xxxxxxx Xxxxxxxxxxxxx dated as of
April 26, 1995, and may not be sold or otherwise transferred except in
compliance with the terms of such agreement."
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19
"The securities represented hereby may be subject to a right
of repurchase by the Company, pursuant to the provisions of the Stock
Restriction Agreement between the Company and Xxxxxxx Xxxxxxxxxxxxx
dated as of April 26, 1995, and such securities may not be sold or
otherwise transferred if such securities are subject to such right of
repurchase."
"The securities represented hereby are subject to restrictions
on transfer for a period of 180 days following the effective date of a
registration statement under the Securities Act of 1993, as amended,
for an offering of the Company's securities as more fully provided in a
Stock Restriction Agreement among the Company, Alliance Technology
Ventures, L.P., and the original purchaser of such securities."
7. BINDING EFFECT. Subject to the limitations set forth in this
Agreement, this Agreement shall be binding upon, and inure to the benefit of,
the executors, administrators, heirs, legal representatives, successors, and
assigns of the parties hereto.
8. DAMAGES. Stockholder shall be liable to the Company and Alliance for
all costs and damages, including incidental and consequential damages, resulting
from a disposition of Shares which is not in conformity with the provisions of
this Agreement.
9. GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of Georgia applicable to contracts entered
into and wholly to be performed within the State of Georgia residents. The
parties agree that the exclusive jurisdiction and venue of any action with
respect to this Agreement shall be in the Superior Court of Georgia for the
County of Xxxxxx or the United States District Court for the Northern District
of Georgia, and each of the parties hereby submits itself to the exclusive
jurisdiction and venue of such courts for the purpose of such action. The
parties agree that service of process in any such action may be effected by
delivery of the summons to the parties in the manner provided for delivery of
notices set forth in Section 10.
10. NOTICES. All notices and other communications under this Agreement
shall be in writing. Unless and until Stockholder is notified in writing to the
contrary, all notices, communications and documents directed to the Company and
related to the Agreement, if not delivered by hand, shall be mailed, addressed
as follows:
ATHEROGENICS, INC.
0000 Xxxxxxxxx Xxxx, X.X.
Suite 0000
Xxxx Xxxxx
Xxxxxxx, Xxxxxxx 00000
Attention: President
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20
with a copy to:
Lyon & Lyon
000 Xxxx Xxxxx Xxxxxx
Xxxxx 0000
Xxx Xxxxxxx, XX 00000-0000
Attention: Xxxxx X. Xxxxxxxxx, Ph.D.
Unless and until the Company is notified in writing to the contrary, all
notices, communications and documents intended for Stockholder and related to
this Agreement, if not delivered by hand, shall be mailed to Stockholder's last
known address as shown on the Company's books, with a copy to:
Xxxxxxxxx, Wise & Xxxxxxx
0000 Xxxxxx Xxx
Xxxxx 000
Xxxx Xxxx, XX 00000-0000
Attention: Xxxxxx X. Xxxxxx
Notices and communications shall be mailed by registered or certified mail,
return receipt requested, postage prepaid. All notices related to this Agreement
shall be deemed received upon delivery or, if mailed, within five (5) days after
mailing in accordance with this Section 10.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the day and year first above written.
ATHEROGENICS, INC.
R. Xxxxx Xxxxxxxxx
----------------------------------
By: R. Xxxxx Xxxxxxxxx, M.D., Ph.D.
Title: President
Stockholder hereby accepts and agrees to be bound by all of the terms
and conditions of this Agreement.
Stockholder Xxxxxxx Xxxxxxxxxxxxx
--------------------------------------
Stockholder's spouse indicates by the execution of this Agreement his
or her consent to be bound by the terms herein as to his or her interests,
whether a community property or otherwise, if any, in the Shares.
Stockholder's Spouse Mrs. Dalyaui Xxxxxxxxxxxxx
-----------------------------
7
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SCHEDULE 1.01 OF THE STOCK RESTRICTION AGREEMENT
The Right of Repurchase shall expire as follows:
Forty percent (40%) of the Shares issued to Stockholder shall vest upon
signing of the Stock Restriction Agreement, twenty percent (20%) shall vest each
year after the date of signing (collectively the "Vested Shares"), and the Right
of Repurchase shall no longer apply to any Vested Shares.
ATHEROGENICS, INC.
R. Xxxxx Xxxxxxxxx
----------------------------------
By: R. Xxxxx Xxxxxxxxx, M.D., Ph.D.
Title: President
Stockholder: Xxxxxxx Xxxxxxxxxxxxx
-----------------------
22
SCHEDULE 5A
ACKNOWLEDGEMENT AND STATEMENT
OF DECISION REGARDING ELECTION
PURSUANT TO SECTION 83(b) OF
THE INTERNAL REVENUE CODE
The undersigned (which term includes the undersigned's spouse), a holder
of 40,000 shares of common stock of ATHEROGENICS, INC., a Georgia corporation
(the "Company") hereby states as follows:
1. The undersigned acknowledges receipt of a copy of the Company's Stock
Restriction Agreement (the "Agreement"). The undersigned has carefully reviewed
the Agreement.
2. The undersigned either [check as applicable]:
____ (a) has consulted, and has been fully advised by, the undersigned's
own tax advisor, ______________________, whose business address is
______________________________, regarding the federal, state and local tax
consequences of entering into the Agreement, and particularly regarding the
advisability of making elections pursuant to Section 83(b) of the Internal
Revenue Code of 1986, as amended (the "Code"), and pursuant to the
corresponding provisions, if any, of applicable state laws; or
X (b) has knowingly chosen not to consult such a tax advisor.
3. The undersigned hereby states that the undersigned has decided
[check as applicable]:
____ (a) to make an election pursuant to Section 83(b) of the Code, and is
submitting to the Company, together with the undersigned's executed Agreement,
an executed form which is attached as Schedule 5B to the Agreement; or
X (b) not to make an election pursuant to Section 83(b) of the Code.
4. Neither the Company nor any subsidiary or representative of the
Company has made any warranty or representation to the undersigned with respect
to the tax consequences of the Agreement or of the making or failure to make an
election pursuant to Section 83(b) of the Code or the corresponding provisions,
if any, of applicable state law.
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5. The undersigned is also submitting to the Company, together with the
Agreement, an executed original of an election, if any is made, of the
undersigned pursuant to provisions of state law corresponding to Section 83(b)
of the Code, if any, which are applicable to the undersigned's purchase of
shares under the Agreement.
Date: 5/25/95 /s/ Xxxxxxx Xxxxxxxxxxxxx
----------------------------------------
Xxxxxxx Xxxxxxxxxxxxx, Ph.D.
Date:
----------------------------------------
2
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SCHEDULE 5B
ELECTION PURSUANT TO SECTION 83(b) OF THE
INTERNAL REVENUE CODE
---------------------
The undersigned hereby elects pursuant to Section 83(b) of the Internal
Revenue Code of 1986, as amended (the "Code"), to include in the undersigned's
gross income the excess (if any) of (x) the fair market value of the property
described below, over the amount the undersigned paid for such property plus, if
the shares to which this election relates were acquired by exercise of an
"incentive stock option" within the meaning of Section 422 of the Code, the
amount excluded from the undersigned's income pursuant to Sections 421 and 422
of the Code. This election is made to the same effect, and with the same
limitations, with respect to the analogous provisions of Sections 83(b) (and, if
applicable, Sections 412 and 422) of the Code under any applicable state
statute. Pursuant to applicable Treasury Regulations the following information
is provided:
1. The undersigned's name, address and taxpayer identification (social
security) number are
Name: Xxxxxxx Xxxxxxxxxxxxx
----------------------------------------------------------------
Address 0000 Xxxxxxxxxx Xxxxx, Xxxxxxx XX 00000
--------------------------------------------------------------
Social Security #: [ * ]
---------------------------------------------------
2. The property with respect to which the election is made consists of
24,000 shares of Common Stock of ATHEROGENICS, INC., a Georgia corporation (the
"Company").
3. The date on which the above property was transferred to the undersigned
was ____________________, 19__, and the taxable year to which this election
relates is 19__.
4. The above property is subject to the following restrictions: (a) a
right of repurchase by the Company of the initial purchase price, if the
undersigned ceases to be an employee of, or a consultant to, the Company or an
affiliate of the Company; and (b) a right of first refusal by the Company should
the undersigned wish to transfer the shares to a person or entity other than the
Company.
5. The fair market value of the above property at the time of transfer
(determined without regard to any restrictions other than those which by their
terms will never lapse) is $___________ per share.
6. The amount paid for the above property by the undersigned was $_______
per share.
7. A copy of this election has been furnished to the Company, and a copy
will be filed with the income tax return of the undersigned to which this
election relates.
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8. If the shares to which this election relates were acquired by
exercise of an "incentive stock option" within the meaning of Section 422 of
the Code, this election is protective only, is made solely to bar application
of Section 83(a) of the Code, and is not an election of the undersigned actually
to recognize income which apart from this election is protected from
recognition by Sections 421 and 422 of the Code.
If the shares to which this election relates were acquired by exercise of
an incentive stock option, the amount expressly excluded from income pursuant
to Sections 421 and 422 of the Code is $________ per share.
Dated: May 25, 1995.
/s/ Xxxxxxx Xxxxxxxxxxxxx
------------------------------------
Xxxxxxx Xxxxxxxxxxxxx, Ph.D.
2
26
ATHEROGENICS, INC.
PATENT, COPYRIGHT AND
NONDISCLOSURE AGREEMENT
In partial consideration and as a condition of my engagement as a
consultant by AtheroGenics, Inc., a Georgia corporation (the "Company"), and
effective as of the date that the consultancy by the Company first commenced,
the undersigned agrees as follows:
1. NONCOMPETITION
(a) The Company acknowledges and agrees that during the term of my
consultancy by, or any subsequent consultancy with the Company (the
"Consultancy Period"), I may continue to be employed by the Emory University
School of Medicine ("Emory") or may be employed by or consult with other
academic or non-profit research institutions. In the course of my employment or
consultancy with Emory or another medical school, I will perform services
traditionally performed by members of the faculty of such school, including,
without limitation, (i) teaching, (ii) providing medical services to patients
or related or affiliated hospitals or clinics, (iii) conducting research on
behalf of Emory with respect to medical devices, procedures and pharmaceuticals
or other compounds which may relate to or be used as prescription
pharmaceuticals (including pharmaceuticals which are or may be competitive with
those marketed, promoted or researched by the Company), (iv) researching and
testing pharmaceuticals or compounds manufactured or developed by third parties
under circumstances that result in compensation to Emory (and possible indirect
compensation to me) or such other school for such services, and (v) receiving
honoraria for presentations at medical conferences or seminars, except that I
will not investigate or develop for any other commercial entity (a) the
relationship of oxidation reactions to transcriptional factors, including NFxB,
in cardiovascular disease and other inflammatory diseases, (b) antioxidants and
their anti-inflammatory role in the activation of transcriptional factors in
cardiovascular disease and other inflammatory diseases, or (c) the commercial
development of antioxidants as potential therapeutic mediators in cardiovascular
diseases and other inflammatory diseases. Subject to the foregoing duties which
I perform or may perform for Emory or other academic or research institutions
during the Consultancy Period, I will not, without the prior written approval of
an executive officer of the Company (i) engage in any other professional
employment or consulting or (ii) directly or indirectly participate in or assist
in any business which is a current or potential competitor of the Company.
(b) I understand and acknowledge that the Company is in the business of
researching, developing, marketing and worldwide promotion of prescription
pharmaceuticals, and that to assist in this business endeavor the Company will
be recruiting investors on a worldwide basis to furnish financial backing.
During the course of my consulting, I will be consulting in the foregoing areas,
i.e. researching, developing, investigating, producing, promoting, marketing
and sales of prescription pharmaceuticals, as well as recruiting investors. I
will acquire in-depth knowledge of certain of the Company's business practices
and confidential information.
27
(c) In light of the foregoing, during the Consultancy Period, I agree that
I will not directly or indirectly, expressly or tacitly, for myself or on
behalf of any entity anywhere in the world, (i) act as an officer, manager,
advisor, executive, controlling shareholder, or consultant to any business in
which my duties at or for such business include oversight of or actual
involvement in the research, development, investigation, production, promotion,
marketing or sales or prescription pharmaceuticals which are competitive with
those being produced or developed by the Company, or are under investigation by
the Company at the expiration of the Consultancy Period, (ii) recruit investors
on behalf of an entity which engages in researching, developing, investigating,
producing, promoting, marketing and sales of prescription pharmaceuticals which
are competitive with those being produced or developed by the Company, or are
under investigation by the Company at the expiration of the Consultancy Period,
or (iii) become employed by such an entity in any capacity which would require
me to carry out, in whole or in part, the duties I have performed for the
Company with respect to prescription pharmaceuticals which are competitive with
those being produced or developed by the Company, or are under active
investigation by the Company at the expiration of the Consultancy Period). I
acknowledge that because of the worldwide nature of the Company's business,
this restriction will prevent me from acting in any of the foregoing capacities
for any competing entity wherever located and that this worldwide scope is
reasonable in light of the business of the Company.
(d) I further agree that during the Consultancy Period, and for a period
of two (2) years following the termination of the Consultancy Period, I will
not directly or indirectly, on my own behalf or in the service or on behalf of
others, solicit, suggest or direct others to solicit for hire any person
employed by the Company at the time of termination of the Consultancy Period.
(e) I agree that during the Consultancy Period, and for a period of two (2)
years following the termination of the Consultancy Period, I will not, without
the prior written approval of an executive officer of the Company, on my own
behalf or in the service of or on behalf of others, knowingly solicit, divert,
or attempt to appropriate, to any business which competes with the Company in
the fields of research, development, investigation, production, promotion,
marketing, and sales of prescription pharmaceuticals, any person or entity who
is a customer of the Company or an actively sought prospective customer of the
Company (who is known as such by me) during my Consultancy Period.
(f) I agree that the covenants contained in this Section 1 are reasonable
and necessary to protect the confidentiality of the trade secrets, and other
confidential information concerning the Company acquired by me. The provisions
of this Section 1 shall be interpreted so as to protect those trade secrets and
confidential information, and to secure for the Company the exclusive benefits
of the work performed on behalf of the Company by me under this Agreement, and
not to unreasonably limit my ability to engage in employment and consulting
activities in non-competitive areas which do not endanger the Company's
legitimate interests expressed in this Agreement.
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(g) In the event that any of the covenants contained herein in
subparagraphs (a) through (e) are deemed unenforceable by a court of competent
jurisdiction, I agree that each of the covenants herein is severable from each
of the others, and that a declaration of invalidity as to any one of the
covenants shall not effect the enforceability of the others. Further, in the
event one or more of the covenants herein is deemed unenforceable by a court of
competent jurisdiction, the parties hereby agree and request that the court
enforce the covenant(s) to the extent found reasonable by the court. I
acknowledge that I have had the assistance of counsel of my choice in
negotiation of this Agreement and of these covenants.
2. INVENTIONS
2.1 DISCLOSURE
The Company acknowledges and agrees that pursuant to my employment
relationship with Emory or such other academic or non-profit research
institution or commercial enterprise as I may be engaged by in the future
("Employer"), Emory has, and an Employer may have, all right, title and
interest in and to any patentable or unpatentable, copyrightable or
uncopyrightable, idea, invention, work of authorship (including, but not limited
to, computer programs, software and documentation), formula, device,
improvement, method, process or discovery (any of the foregoing items
hereinafter referred to as an "Invention") arising out of, related to or based
upon my work for or on behalf of my Employer. Except for Inventions which arise
out of my employment and belong to my Employer, I will disclose promptly to the
proper officers of the Company in writing any Invention which relates to the
Company's business that I conceive, make, develop, or work on, in whole or in
part, solely or jointly with others during the term of my consultancy with the
Company and for a period of six months thereafter regardless of whether (a)
such invention was conceived, made, developed or worked on during my regular
hours of employment of my time away from work; (b) the Invention was made at
the suggestion of the Company; or (c) the Invention was reduced to drawing,
written description, documentation, models or other tangible form.
2.2 ASSIGNMENT OF INVENTIONS TO COMPANY
I hereby assign to the Company without royalty or any other further
consideration my entire right, title and interest in and to any Invention I am
required to disclose under Section 2.1.
2.3 RECORDS
I will make and maintain adequate and current written records of
all Inventions covered by Section 2.1. These records shall be and remain the
property of the Company.
3
29
2.4 PATENTS
Subject to Section 2.1, I will assist the Company in obtaining,
maintaining, and enforcing patents and other proprietary rights in connection
with any Invention covered by Section 2.2 for which the Company has or obtains
any right, title or interest. I farther agree that my obligations under this
Section 2.4 shall continue beyond the termination of the Consultancy Period, but
if I am called upon to render such assistance after the termination of the
Consultancy Period, I shall be entitled to a fair and reasonable rate of
compensation for such assistance. I shall, in addition, be entitled to
reimbursement of any out-of-pocket expenses incurred at the request of the
Company relating to such assistance.
2.5 PRIOR CONTRACTS AND INVENTIONS: INFORMATION BELONGING TO THIRD
PARTIES
I represent that, except as set forth on Schedule 2.5A hereto an
initiated by the Company and me, there are no other contracts to assign
inventions that are now in existence between any other person or entity and me.
I further represent that other than my employment obligations for Emory and the
NIH I have no other employments or undertakings which might restrict or impair
my performance of this Agreement I will not, in connection with my engagement
as a consultant by the Company, use or disclose to the Company any confidential
trade secret or other proprietary information or any previous employer or other
person to which I am not lawfully entitled. As a matter of record, I attach to
Schedule 2.5B of this Agreement a brief description of all Inventions made or
conceived by me prior to my engagement as a consultant with the Company which I
desire to be excluded from this Agreement.
3. NONDISCLOSURE OF CONFIDENTIAL INFORMATION
(a) I agree that all confidential information which is forwarded to me by
the Company and which is marked Confidential if forwarded in written form or
which is reduced to writing and marked Confidential within thirty days of
forwarding if forwarded in oral form shall be received in strict confidence,
used only for the purposes of this Agreement, and not disclosed by me (except as
required by law or court order) without the prior written consent of the other
Company, unless such information (a) was in the public domain at the time of
disclosure, (b) later became part of the public domain through no act or
omission of the by me, (c) was lawfully disclosed to me by a third party
having the right to disclose it, or (d) was already known by me at the time of
disclosure, as evidenced by written documents in my possession at the time of
the disclosure.
(b) In order to fulfill my obligation of confidence hereunder, I shall use
at least the same degree of care with the Company's confidential information as
I use to protect my own confidential information. This obligation shall exist
while this Agreement is in force and for a period of four (4) years thereafter.
4
30
4. PROPERTY OF THE COMPANY
All notes, memoranda, reports, drawings, blueprints, manuals, materials,
data and other papers and records of every kind which shall come into my
possession at any time after the commencement of my consultancy with the
Company, relating to any Inventions which I make while performing my duties as a
consultant or member of the Scientific Advisory Board for the Company or
relating to Confidential Information shall be the sole and exclusive property of
the Company. This property shall be surrendered to the Company upon termination
of the Consultancy Period, or upon request by the Company, at any other time
either during or after the termination of the Consultancy Period.
5. MISCELLANEOUS
5.1 GOVERNING LAW
This Agreement shall be construed and governed by the laws of the
State of Georgia applicable to contracts entered into and wholly to be
performed in Georgia by Georgia residents.
5.2 ENFORCEMENT
If any portion of this Agreement shall be determined to be invalid
or unenforceable, the remainder shall be valid and enforceable to the maximum
extent possible.
5.3 INJUNCTIVE RELIEF, CONSENT TO JURISDICTION
I acknowledge that the Company will suffer substantial damages not
readily ascertainable or fully compensable in terms of money in the event of
the breach of any of my obligations under this Agreement. I therefore agree
that the Company shall be entitled (without limitation of any other rights or
remedies otherwise available to the Company) to obtain an injunction from any
court of competent jurisdiction prohibiting the continuance or recurrence of
any breach of this Agreement. I hereby submit myself to the jurisdiction and
venue of the courts of the State of Georgia for purposes of any such action. I
further agree that service upon me in any such action or proceeding may be made
by first class mail, certified or registered, to my address as last appearing
on the records of the Company.
5.4 WAIVER
The waiver by the Company of a breach of any provision of this
Agreement shall not operate or be construed as a waiver of any subsequent
breach of the same or any other provision hereof
5
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5.5 BINDING EFFECT
This Agreement shall be binding upon and shall inure to the benefit
of the successors, executors, administrators, heirs, representatives and
assigns of the parties.
5.6 HEADINGS
The Section headings herein are intended for reference and shall
not by themselves determine thee construction or interpretation of this
Agreement.
5.7 MODIFICATIONS
All modifications or amendments to this Agreement must be in
writing and signed by the party against whom enforcement of such modification
or amendment is sought.
IN WITNESS WHEREOF, I have executed this document as of the 26th day
of April, 1995.
/s/ Xxxxxxx Xxxxxxxxxxxxx
---------------------------------
Xxxxxxx Xxxxxxxxxxxxx, Ph.D.
RECEIPT ACKNOWLEDGED:
ATHEROGENICS, INC.
/s/ R. Xxxxx Xxxxxxxxx
------------------------------------
By: R. Xxxxx Xxxxxxxxx, M.D., Ph.D.
Title: President
6
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SCHEDULE 2.5A
(List here prior contracts to assign inventions that are now in existence
between any other person or entity and you.)
33
SCHEDULE 2.5B
(List here previous Inventions which you desire to have specifically excluded
from the operation of this Agreement.)
