Exhibit 10.19
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CONSULTING AGREEMENT
Agreement made this 30th day of January, 1998, by and between SCRIPTGEN
Pharmaceuticals, Inc., a corporation having a place of business at 000 Xxxxxx
Xxxxxx, Xxxxxxx, XX 00000 (hereinafter "SCRIPTGEN") and Xxxxxxx X. Xxxxx, an
individual residing at 000 Xxxxx Xxxxxx, Xxxxxxxx, XX 00000, an Investigator of
the Xxxxxx Xxxxxx Medical Institute ("HHMI") and a member of the faculty of the
University of Massachusetts (the "University") (hereinafter "INDIVIDUAL").
WHEREAS, SCRIPTGEN has and will have certain materials, compounds, animals,
compositions, chemicals and/or biologics which are received from third parties
(individually and collectively "SCRIPTGEN MATERIALS") and certain technical
and/or business information which is received from third parties (hereinafter
referred to individually and collectively as "SCRIPTGEN INFORMATION"); and
WHEREAS, INDIVIDUAL is desirous of providing consulting services to
SCRIPTGEN; and
WHEREAS, SCRIPTGEN is desirous of retaining INDIVIDUAL as a consultant; and
WHEREAS, in performing consulting services hereunder, INDIVIDUAL will have
access to SCRIPTGEN MATERIAL and SCRIPTGEN INFORMATION.
NOW, THEREFORE, in consideration of the mutual promises and other good and
valuable consideration, the parties hereto agree as follows:
1. INDIVIDUAL shall provide consulting services as requested by
SCRIPTGEN, such services including but not limited to:
(a) acting as Chairman of the Scientific Advisory Board for
SCRIPTGEN;
(b) advising SCRIPTGEN in the area of transcription therapeutics,
protein interaction with protein and/or DNA and/or RNA as it relates to
transcription, and such other areas as the parties hereto shall agree in writing
from time to time (hereinafter the "Field");
(c) advising on the qualifications of scientific personnel; and
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(d) reviewing protocols and advising SCRIPTGEN on the development of
its protocols.
INDIVIDUAL shall be engaged by SCRIPTGEN as a consultant for the exchange
of ideas only. Notwithstanding anything herein to the contrary, INDIVIDUAL
shall not direct or conduct research for or on behalf of SCRIPTGEN.
Such services shall be rendered by the INDIVIDUAL at such times as the
INDIVIDUAL and SCRIPTGEN agree but shall not exceed twenty (20) days per year
(pro rated for partial years) for a period of five (5) years from the date of
this Agreement (unless terminated earlier pursuant to Section 16 herein). No
employer-employee relationship is created by this Agreement, and INDIVIDUAL will
render his services hereunder as an independent contractor.
2.(a) As full consideration for the consulting services provided
hereunder, INDIVIDUAL will be compensated by SCRIPTGEN for said services in an
amount equal to sixty thousand dollars ($60,000) per year. Such amount shall be
paid in equal quarterly installments at the end of each calendar quarter and on
a pro rata basis for any services which are performed for less than a calendar
quarter.
(b) SCRIPTGEN agrees to reimburse INDIVIDUAL for all authorized
reasonable travel expenses and other authorized expenses incurred by him in
accordance with the policy and practice of SCRIPTGEN, upon presentation to
SCRIPTGEN of appropriate expense vouchers.
(c) SCRIPTGEN shall reimburse INDIVIDUAL for up to $2,500.00 on
account of reasonable legal fees and expenses incurred with respect to the
negotiation, preparation and signing of this Agreement and the resolution of any
conflict-of-interest and related matters which arise in connection with any this
Agreement.
3. Subject to the terms of Paragraph 15(b), INDIVIDUAL hereby agrees to
disclose to SCRIPTGEN promptly in writing any invention, development,
information or idea whether patentable or not which (i) INDIVIDUAL, alone or
with others, makes and/or conceives solely as a direct result of performing
consulting services for SCRIPTGEN under this Agreement and (ii) is not generated
in the course of INDIVIDUAL's activities as an HHMI employee or University
faculty member and is not owned by HHMI or assignable to the University
(hereinafter "DEVELOPED TECHNOLOGY"). Subject to the terms of Paragraph 15(b),
INDIVIDUAL hereby waives whatever rights he may now or hereafter have in and to
any DEVELOPED TECHNOLOGY, and agrees to execute whatever additional documents
may be necessary to perfect such waiver.
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4. Subject to the terms of Paragraph 15(b), INDIVIDUAL agrees to assign
and hereby does assign to SCRIPTGEN or its nominee or successor all right, title
and interest in and to DEVELOPED TECHNOLOGY, and further agrees to execute such
further papers, and perform all such acts, as may be necessary to perfect such
assignment.
5. In the event that SCRIPTGEN makes or proposes to make any United
States or foreign patent applications relating to DEVELOPED TECHNOLOGY owned by
SCRIPTGEN pursuant to Paragraph 4, subject to the maximum time commitment set
forth in Paragraph 1, INDIVIDUAL shall cooperate fully with SCRIPTGEN and its
patent counsel in preparing and prosecuting any such application. SCRIPTGEN
agrees to promptly reimburse INDIVIDUAL for all reasonable out-of-pocket
expenses incurred by him in providing the assistance required by this Paragraph
and Paragraph 6, upon the submission to SCRIPTGEN of an itemized statement of
such expenses. If services under this Paragraph and/or Paragraph 6 are
performed after termination of this Agreement, which services shall be performed
only after HHMI's prior written approval, SCRIPTGEN shall promptly reimburse
INDIVIDUAL for his time in performing such obligations.
6. INDIVIDUAL further agrees to execute, acknowledge and deliver all such
further papers, including applications for patents, as may be necessary to
enable SCRIPTGEN to publish or protect patents, inventions, improvements, ideas
and applications utilizing DEVELOPED TECHNOLOGY owned by SCRIPTGEN or its
nominees, successors or assigns pursuant to Paragraph 4, and, subject to the
maximum time commitment set forth in Paragraph 1, to render all such assistance
as SCRIPTGEN may require in any United States Patent and Trademark Office
proceeding or litigation involving the DEVELOPED TECHNOLOGY owned by SCRIPTGEN
pursuant to Paragraph 4.
7. (a) INDIVIDUAL may disclose to SCRIPTGEN any information that
INDIVIDUAL would normally freely disclose to other members of the scientific
community at large, whether by publication, by presentation at seminars, or in
informal scientific discussions. However, INDIVIDUAL shall not disclose to
SCRIPTGEN information that is proprietary to HHMI and is not generally available
to the public other than through formal technology transfer procedures.
(b) Unless excluded pursuant to Paragraph 8 below, DEVELOPED
TECHNOLOGY owned by SCRIPTGEN, SCRIPTGEN INFORMATION and SCRIPTGEN MATERIALS
will be considered to be confidential and will not be disclosed to any person or
entity or used by INDIVIDUAL for any purpose other than for the benefit of
SCRIPTGEN.
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8. SCRIPTGEN INFORMATION, SCRIPTGEN MATERIALS and DEVELOPED TECHNOLOGY
specifically excluded from the obligations of
confidentiality of this Agreement include:
(a) SCRIPTGEN INFORMATION, SCRIPTGEN MATERIALS and DEVELOPED
TECHNOLOGY which at the time of disclosure already are in the public domain;
(b) SCRIPTGEN INFORMATION, SCRIPTGEN MATERIALS and DEVELOPED
TECHNOLOGY which INDIVIDUAL can demonstrate by written evidence were in the
possession of INDIVIDUAL prior to disclosure by SCRIPTGEN;
(c) SCRIPTGEN INFORMATION, SCRIPTGEN MATERIALS and DEVELOPED
TECHNOLOGY which subsequently become part of the public domain through no fault
of INDIVIDUAL;
(d) SCRIPTGEN INFORMATION, SCRIPTGEN MATERIALS and DEVELOPED
TECHNOLOGY which become known to INDIVIDUAL subsequent to the disclosure by
SCRIPTGEN through a third party who is not under any obligation of
confidentiality to SCRIPTGEN; and
(e) SCRIPTGEN INFORMATION, SCRIPTGEN MATERIALS and DEVELOPED
TECHNOLOGY which is required to be disclosed by law, governmental regulation, or
court order.
In addition, DEVELOPED TECHNOLOGY, SCRIPTGEN INFORMATION and SCRIPTGEN
MATERIALS subject to Paragraph 7(b) does not include information generated by
INDIVIDUAL unless the information (i) is generated as a direct result of the
performance of consulting services under this Agreement and (ii) is not
generated in the course of the INDIVIDUAL's activities as an HHMI employee or
University faculty member.
9. The fact that general information may be in or become part of the
public domain, in and of itself, does not exclude any specific information or
specific material not yet in the public domain from the obligations imposed by
this Agreement.
10. No rights or licenses in or to SCRIPTGEN INFORMATION, SCRIPTGEN
MATERIALS and DEVELOPED TECHNOLOGY are granted to INDIVIDUAL by virtue of this
Agreement.
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11. At the request of SCRIPTGEN, INDIVIDUAL shall return to SCRIPTGEN any
and all materials and physical documents, whether prepared by SCRIPTGEN or by
INDIVIDUAL, when such materials or documents include or incorporate SCRIPTGEN
INFORMATION, SCRIPTGEN MATERIALS and DEVELOPED TECHNOLOGY. The term "document"
is used in its broadest sense and includes electronic information in the form
of discs, tapes, etc.
12. INDIVIDUAL represents and warrants that to the best of his knowledge
he is permitted to enter into this Agreement and perform the obligations
contemplated thereby, and that this Agreement and the terms and obligations
thereof are not inconsistent with any obligation he may have.
13. This Agreement constitutes the entire and exclusive Agreement between
INDIVIDUAL and SCRIPTGEN with respect to the subject matter hereof and
supersedes any prior or contemporaneous agreements, representations and
understandings of the parties with respect thereto. No supplement, modification
or amendment of this Agreement shall be binding upon SCRIPTGEN or INDIVIDUAL
unless set forth in a written agreement executed by SCRIPTGEN and INDIVIDUAL.
SCRIPTGEN and INDIVIDUAL acknowledge that any amendment of this Agreement
(including, without limitation, any extension of this Agreement or any change
from the terms of Paragraph 2 in the consideration to be provided to INDIVIDUAL
with respect to services to be provided hereunder) or any departure from the
terms or conditions hereof with respect to INDIVIDUAL's consulting services for
SCRIPTGEN is subject to HHMI's prior written approval.
14. (a) Except as hereinafter provided, INDIVIDUAL agrees that while
retained as a consultant for SCRIPTGEN he shall consult exclusively for
SCRIPTGEN in the Field and such other areas as SCRIPTGEN and INDIVIDUAL may
agree in writing, and during the consulting period and for one year thereafter
INDIVIDUAL shall not be engaged in or be or assist any business, activity or
person competing or, to the knowledge of INDIVIDUAL, intending to compete, with
the business of and/or products being developed by SCRIPTGEN as of the time of
termination of this Agreement, whether his involvement shall be as an officer,
director, owner (other than the passive ownership of up to 5% of the outstanding
securities of any public company), employee, partner, affiliate or consultant.
(b) Notwithstanding anything in this Paragraph 14 to the contrary,
none of the following shall constitute a breach of the obligations imposed by
this Paragraph 14:
(i) INDIVIDUAL's performance of his duties as an employee of HHMI, a
member of the faculty of the University, or an member of any
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hospital, academic institution, government body, or other not-for-profit,
scientific, or professional organization;
(ii) the transfer by HHMI or the University, by license or other
agreement or arrangement, of any invention, discovery or development, and
any intellectual property rights therein, developed in whole or in part by
INDIVIDUAL, or in connection with research collaborations; and
(iii) the assistance of and participation by INDIVIDUAL in a transfer
described in the preceding clause (ii) in a manner deemed necessary,
appropriate, or advisable by HHMI or the University, each in its sole
judgment.
(c) Nothing in this Paragraph 14 shall be construed to impair or
prevent the performance of INDIVIDUAL'S duties and obligations to the commercial
organizations listed on Appendix A.
(d) Nothing in this Paragraph 14 shall be construed to impair or
prevent INDIVIDUAL from engaging in unrestricted, free scientific discussions
with other scientists.
(e) SCRIPTGEN acknowledges and agrees that nothing in this Agreement
shall affect INDIVIDUAL's obligations to, or research on behalf of, HHMI or the
University, including, without limitation, obligations or research of INDIVIDUAL
in connection with a transfer by HHMI or the University of materials or
intellectual property developed in whole or in part by INDIVIDUAL, or in
connection with research collaborations.
15. (a) INDIVIDUAL represents, warrants and agrees that he can and will
perform the services required by this Agreement without disclosing or using any
confidential information and/or proprietary information of HHMI, University or
any other third party.
(b) Notwithstanding anything to the contrary herein, SCRIPTGEN shall
have no rights by reason of this Agreement in any publication, invention,
discovery, improvement, or other intellectual property whatsoever, whether or
not publishable, patentable, or copyrightable, which is developed as a result of
a program of research financed, in whole or in part, by funds provided by or
under the control of HHMI or the University. SCRIPTGEN also acknowledges and
agrees that it will enjoy no priority or advantage as a result of the
consultancy created by this Agreement in gaining access, whether by license or
otherwise, to any proprietary information or intellectual property that arises
from any research undertaken by
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INDIVIDUAL in his capacity as an employee of HHMI or a member of the faculty of
the University.
(c) All stock, stock options, rights or other equity or equity-based
securities (collectively, "Securities") issued or issuable by SCRIPTGEN to
INDIVIDUAL (either directly or indirectly) constitute (i) approximately 2.9% of
SCRIPTGEN's presently issued and outstanding common stock, as diluted by
assuming full exercise of any options and other rights held by INDIVIDUAL, and
(ii) approximately 2.5% of SCRIPTGEN's common stock on a fully diluted basis.
Indirect holdings for this purpose include without limitation (i) any Securities
issued or issuable by SCRIPTGEN to members of INDIVIDUAL's immediate family, and
(ii) any Securities issued or issuable by SCRIPTGEN to INDIVIDUAL, or Securities
allocated or allocable to INDIVIDUAL under the University's inventorship
policies, as royalties under a license by SCRIPTGEN of technology of which
INDIVIDUAL is an inventor.
16. (a) If either party materially breaches any of its obligations
hereunder, in addition to any other remedies it may have, the other party shall
have the right to terminate, this Agreement by written notice specifying the
breach and if such breach is not cured within sixty (60) days after such written
notice, this Agreement shall be terminated.
(b) Either party shall have the absolute right to terminate this
Agreement on any day on or after one year from the date of this Agreement by
thirty (30) days prior written notice.
(c) The termination of this Agreement shall terminate the consulting
services of INDIVIDUAL and INDIVIDUAL's right to compensation for the period
subsequent to the termination.
(d) Termination of this Agreement under Paragraph 16(a) or 16(b)
above shall not affect (i) SCRIPTGEN's obligation to pay for services previously
performed by INDIVIDUAL or expenses reasonably incurred by INDIVIDUAL for which
INDIVIDUAL is entitled to reimbursement under Xxxxxxxxx 0, xxxxx, (xx)
SCRIPTGEN's obligations to recognize the priority of HHMI intellectual property
rights under Paragraph 15(b) above, (iii) SCRIPTGEN's obligations to defend and
indemnify INDIVIDUAL and HHMI under Paragraph 19 below, or (iv) INDIVIDUAL's
continuing obligations to SCRIPTGEN under Paragraphs 4 and 7 above.
(e) In the event that INDIVIDUAL'S consulting services are terminated
by SCRIPTGEN pursuant to Paragraph 16(b), then SCRIPTGEN shall pay INDIVIDUAL an
amount equal to sixty thousand dollars ($60,000.00) in four
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equal quarterly installments over the one year period which begins on the date
of termination and ends on the first anniversary of such date of termination,
with such payments being expressly conditioned upon INDIVIDUAL meeting all of
the obligations which survive termination of this Agreement, including but not
limited to the non-compete obligation of Paragraph 14.
17. Except as otherwise herein provided, the obligations of Paragraphs 3
through 14, Paragraphs 16(d) and (e) and Paragraph 19 of this Agreement shall
survive any termination of this Agreement or the consulting services of
INDIVIDUAL; provided, however, that the obligation of Paragraph 14(a) shall not
survive if this Agreement is terminated by INDIVIDUAL under Paragraph 16(a).
18. INDIVIDUAL represents and warrants that he is not at this time a
consultant for any entity other than those set forth in Appendix A.
19. SCRIPTGEN hereby agrees to defend INDIVIDUAL and HHMI at its sole
expense, and to indemnify and hold INDIVIDUAL and HHMI harmless from, all third
party claims or suits against INDIVIDUAL or HHMI or any liabilities or judgments
based thereon, including legal expenses arising therefrom ("CLAIMS"), which
CLAIMS arise from or as the result of or are alleged to arise from or as the
result of, this Agreement, services performed by INDIVIDUAL for SCRIPTGEN under
this Agreement or any SCRIPTGEN products which result from INDIVIDUAL's
performance of services under this Agreement; provided, however, that SCRIPTGEN
shall have no liability to INDIVIDUAL under this Paragraph 19 for any CLAIMS
which are finally determined to have arisen from the negligence or malfeasance
of INDIVIDUAL. INDIVIDUAL shall promptly notify SCRIPTGEN of any such CLAIMS
against INDIVIDUAL which are subject to indemnification, and SCRIPTGEN shall
have the sole right to defend, settle or compromise any such CLAIMS.
20. SCRIPTGEN recognizes and acknowledges that INDIVIDUAL is an employee
of HHMI, and acknowledges and agrees that:
(a) INDIVIDUAL will not use the facilities, funds or equipment of
HHMI for the benefit of SCRIPTGEN.
(b) INDIVIDUAL is subject to HHMI's policies, including, among
others, policies concerning consulting, conflicts of interest and intellectual
property.
(c) SCRIPTGEN and INDIVIDUAL shall establish procedures and use best
efforts to ensure (i) that any fees received by INDIVIDUAL under this Agreement
shall not become commingled with any funds of HHMI or any funds under the
control of HHMI and (ii) that any of INDIVIDUAL'S consulting activities
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under this Agreement shall be kept separate and apart from any research
financed, in whole or in part, by the funds of or under the control of HHMI.
21. SCRIPTGEN acknowledges and agrees that INDIVIDUAL shall not be
required to perform any consulting services under this Agreement which would
violate the conflict-of-interest laws of the Commonwealth of Massachusetts or
policies of the University.
22. SCRIPTGEN will not use INDIVIDUAL's name in any commercial
advertisement or similar material that is used to promote or sell products,
unless SCRIPTGEN obtains in advance the written consent of the named party to
such use, and in the case of the use of INDIVIDUAL's name, HHMI's consent as
well.
23. If any provision of this Agreement affecting the rights or property of
HHMI is adjudicated to be invalid, unenforceable, contrary to, or prohibited
under applicable laws or regulations of any jurisdiction, this Agreement shall
terminate as of the date such adjudication is effective. If any other provision
of this Agreement is adjudicated to be invalid, unenforceable, contrary to, or
prohibited under applicable laws or regulations of any jurisdiction, such
provision shall be severed and the remaining provisions shall continue in full
force and effect.
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IN WITNESS WHEREOF, the parties have signed this Agreement as of the date
hereof.
SCRIPTGEN PHARMACEUTICALS, INC.
By: /s/
-------------------------------
Title:
----------------------------
INDIVIDUAL
/s/ Xxxxxxx X. Xxxxx
-----------------------------------
Xxxxxxx X. Xxxxx
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APPENDIX A
The following are organizations or institutions to which INDIVIDUAL is
currently rendering consulting services:
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