EXHIBIT 10(q)
March 3, 1997
Xxxxx X. Xxxxxx
000 Xxxxx Xxxxxx
Xxxxx Xxxxxx, XX 00000
Re: Consultancy with Microfluidics International Corporation
Dear Xxx,
Enclosed are two originals of your Consultancy and Developments Agreement with
Microfluidics. Each Agreement has a Confidentiality and Non-Disclosure
Agreement and a Non-Competition Agreement attached as exhibits. Xxxx Xxxxx has
signed where necessary so I ask that you sign where indicated on all documents
and then return one fully executed set to me for MFIC's records.
Also, I am preparing the Board of Directors Minutes from the February 11th
meeting pursuant to a vote taken there you will be paid a $2,500 consulting fee
for your services rendered in 1996. Xxxx Xxxxx asked me to inform you that the
payment for same will go out when we next do our check run - next Thursday at
latest.
Finally, your Director's options for 1997 under the 1989 Non-Employee Directors
Stock Option Plan should be going out to you shortly.
Yours truly,
Xxxx X. Xxxx, Esq.
cc: Xxxxxxx X. Xxxxx, President
Xxxxxx Xxxxxxx, Controller
CONSULTANCY AND DEVELOPMENTS AGREEMENT
This Agreement is made and entered into this 1st day January, 1997, by and among
Microfluidics International Corporation together with its wholly owned
subsidiary, Microfluidics Corporation, both being Delaware, U.S. corporations
(hereinafter jointly referred to as "MICROFLUIDICS") and Xxxxx X. Xxxxxx Ph.D.
("referred to hereafter as the "CONSULTANT").
WHEREAS, MICROFLUIDICS desires to avail itself of the services of CONSULTANT in
connection with the planning and furtherance of its sales and marketing program
("Sales/Marketing Program") to perform certain to be assigned engineering and
technical tasks, and
WHEREAS, CONSULTANT desires to furnish his services to MICROFLUIDICS.
NOW THEREFORE, for and in consideration of the mutual promises and premises
contained herein, MICROFLUIDICS and the CONSULTANT agree as follows:
ARTICLE 1
TERM
----
This Agreement shall be for an initial period of twelve (12) months from the
date of its execution but will automatically renew and extend for a period of
twelve (12) months unless earlier terminated by any either party at any time by
the provision in writing of notice of such party's election to do so provided at
least Ten (10) business days prior to the effective date of such termination.
ARTICLE 2
DUTIES
------
The CONSULTANT shall during the term of this Agreement generally render
consultative services to MICROFLUIDICS generally relating to the sales and
marketing strategy of MICROFLUIDICS for the sale of its Microfluidizer(R)
materials processing equipment and such further tasks or duties as MICROFLUIDICS
and CONSULTANT shall agree upon from time to time (the "Services").
ARTICLE 3
CONTROL AND STATUS
------------------
(A) The CONSULTANT shall have the exclusive right to establish its own working
hours, days of work and site(s) where work is performed. The CONSULTANT is
deemed to be an independent contractor for all purposes, including but not
limited to payroll withholdings, Xxxxxxx'x Compensation Insurance, health,
accident and disability insurance, and agency and authority to act on behalf of
MICROFLUIDICS.
(B) CONSULTANT shall only be required to devote such time and energies to
MICROFLUIDICS' consulting matters as he shall, after consultation with
MICROFLUIDICS, deem reasonably necessary to accomplish the tasks undertaken.
2
ARTICLE 4
REIMBURSEMENT FOR EXPENSES
--------------------------
CONSULTANT will be reimbursed for certain of his expenses incurred in rendering
of the Services hereunder as follows:
A. During the term of this Agreement, the CONSULTANT shall, only with
prior approval, be allowed reimbursement of actual out-of-pocket expenses
incurred in connection with its activities hereunder, and shall be reimbursed on
a current basis (net 30 days from the presentation of original vouchers,
receipts or billing for same).
B. Notwithstanding the foregoing and the provisions of Article 5
hereinafter, CONSULTANT shall not be entitled to bill for or seek reimbursement
for travel time and expense from CONSULTANT's home or place of business to and
from MICROFLUIDICS.
ARTICLE 5
COMPENSATION
------------
As sole compensation for the Services rendered hereunder during the initial Term
Consultant shall be paid the sum of Seven Thousand Five Hundred Dollars ($7,500)
payable in arrears in three equal installments on April 30th, August 31st, and
December 31st.
ARTICLE 6
CONFIDENTIAL MATTERS
--------------------
The CONSULTANT may receive disclosure of certain of MICROFLUIDICS' proprietary,
confidential and trade secret information from time to time during the term of
its consultancy. Additionally, CONSULTANT may make disclosure to MICROFLUIDICS
of certain of CONSULTANTS' confidential and proprietary information. All such
confidential information is hereinafter referred to as the "Information".
A. CONFIDENTIALITY AGREEMENT
-------------------------
As a condition precedent to the execution of this Agreement by MICROFLUIDICS the
CONSULTANT and MICROFLUIDICS have entered into a Confidentiality and Non-
Disclosure Agreement attached hereto as EXHIBIT A which agreement is hereby
incorporated by reference (the "Confidentiality Agreement") which makes
definitive provision for the parties' use, protection and handling of such
Information.
B. USE OF CONFIDENTIAL INFORMATION The Information disclosed to CONSULTANT by
-------------------------------
MICROFLUIDICS shall be used by CONSULTANT solely in furtherance of the business
objectives of the Sales/Marketing Program and his rendering of the Services
hereunder and no other use of the Information is contemplated or permitted
hereunder.
3
ARTICLE 7
INVENTIONS: OWNERSHIPS AND ASSIGNMENTS : NO LICENSE : DISCLOSURE : COOPERATION
------------------------------------------------------------------------------
IN PROSECUTION OF RIGHTS AND PATENTS
------------------------------------
(A) All equipment and/or process discoveries or inventions, whether or not
protected by patent, conceived of by MICROFLUIDICS shall belong solely to
MICROFLUIDICS. Any equipment discoveries or inventions made by CONSULTANT
either relating to MICROFLUIDICS' proprietary Microfluidizer(R) equipment, or
as a result of MICROFLUIDICS's disclosure of the Information shall be the
property MICROFLUIDICS and shall be assigned to MICROFLUIDICS by CONSULTANT at
MICROFLUIDICS' request and expense. Nothing contained herein shall be construed
as granting to CONSULTANT any license, or other rights of any kind or nature
with respect to any equipment, invention, discovery or intellectual property of
the disclosing party relating to disclosed Information whether or not covered by
any patent heretofore or hereafter issued to MICROFLUIDICS. HOWEVER, IN NO EVENT
SHALL CONSULTANT HAVE ANY CLAIM TO ANY EQUIPMENT MODIFICATION, IMPROVEMENT, OR
PROCESS RELATING IN ANY WAY TO THE MICROFLUIDIZER(R) MATERIALS PROCESSING
EQUIPMENT OR ANY COMPONENT THEREOF.
All process discoveries or inventions that are outside the scope of the
CONSULTANT's Services and related to MICROFLUIDICS''s proprietary equipment
whether or not protected by patent, conceived of by CONSULTANT shall belong
solely to MICROFLUIDICS. CONSULTANT agrees to transfer and assign all right,
title and interest in and to such inventions to MICROFLUIDICS. CONSULTANT will,
both during and after the term of this Agreement, execute such patent
applications and other documents, assist in patent prosecution, and take such
other action as are reasonably necessary to establish and protect MICROFLUIDICS'
intellectual property rights, all such activity to be at MICROFLUIDICS's sole
expense.
(B) The CONSULTANT agrees to promptly disclose to MICROFLUIDICS complete
information concerning each and every invention, device, technology, patentable
or copyrightable material whether considered by the CONSULTANT as patentable or
copyrightable or not, made, developed, perfected devised, conceived or reduced
to practice by the CONSULTANT relating to the Sales/Marketing Program as a
result of his rendering of its Services, whether made separately or jointly with
MICROFLUIDICS during the term of this Agreement without additional compensation,
and to any and all applications for Letters of Patent, and copyrights covering
same in the United States as well as any other foreign country.
(C) The CONSULTANT agrees that at all times during the term of this
Agreement or thereafter, upon request, to do all lawful acts, including the
execution of papers, documents, oaths and the giving of testimony, that in
opinion of MICROFLUIDICS may be necessary or desirable for obtaining,
sustaining, reissuing or renewing, and for enforcing, perfecting, recording and
maintaining MICROFLUIDICS' patent applications, patent and/or copyright
registrations both in the United States and for foreign patents and copyright
registrations on such copyrightable material. CONSULTANT shall be compensated
for time expended on such matters at reasonable rates to be determined among the
parties.
4
(D) As to any invention or copyrightable material which relates to the
business, products, devices, practices, inventions or techniques of
MICROFLUIDICS concerning technologies which were made, developed, conceived,
reduced to practice or written by the CONSULTANT while rendering its Services,
whether separately or together with others during the term of this Agreement and
which the CONSULTANT claims for any reason to belong to an entity or person
other than MICROFLUIDICS, the CONSULTANT shall promptly disclose the same to
MICROFLUIDICS and shall not disclose the same to others.
ARTICLE 8
BUSINESS OPPORTUNITIES
----------------------
The CONSULTANT shall not, during the term of this Agreement directly or
indirectly, appropriate or exploit for its personal benefit or that of any other
person or entity any business opportunity in any way related to the business of
MICROFLUIDICS without the express written permission of MICROFLUIDICS and shall
inform MICROFLUIDICS of each such opportunity as promptly as is practicable
after he or it is informed or otherwise becomes aware or apprised thereof.
Further, the CONSULTANT will be restricted as to its ability to compete with
MICROFLUIDICS during and after the Term hereof by a Non-Competition Agreement
attached hereto as EXHIBIT B, which is hereby incorporated by reference.
ARTICLE 10
REPRESENTATIONS, WARRANTIES AND COVENANTS
-----------------------------------------
The CONSULTANT warrants, represents and covenants as follows:
(a) he has the full right and capacity to enter into this Agreement and to
perform all of its obligations hereunder, and neither this Agreement nor the
performance of any of its obligations hereunder are in violation of any other
agreement or instrument to which it is a party or by which it may be bound.
(b) he shall not willfully or recklessly make any proprietary claims or use
any technology or invention that would infringe on the patent, copyright or
other proprietary intellectually property rights of any third party, without
first obtaining written permission or license from such party.
ARTICLE 11
NON-REVELATION
--------------
CONSULTANT shall not, without MICROFLUIDICS' prior written consent, disclose to
any party the fact or existence of this Agreement or the related agreements and
the relationship contemplated hereby, any terms, conditions, facts, details, or
status with respect to this Agreement or the business or technical affairs and
matters of MICROFLUIDICS, specifically including the Sales/Marketing program.
5
ARTICLE 12
TERMINATION: BREACH
--------------------
12.1 Notwithstanding the above, either party may terminate this Agreement
upon the occurrence of any of the following:
(a) CONSULTANT's breach of any of the provisions of the Confidentiality
Agreement;
(b) breach of any warranty, representation or covenant by the CONSULTANT;
(c) the bankruptcy or death of CONSULTANT.
(d) failure by either party to perform any material obligation hereunder.
ARTICLE 13
ASSIGNMENT
----------
The CONSULTANT may not assign either this Agreement or its rights and/or
obligations hereunder (except for an assignment to MICROFLUIDICS) without the
prior written consent of MICROFLUIDICS.
ARTICLE 14
NOTICE
------
Any notice which by any provision of this Agreement is required or provided to
be given shall be deemed to have been sufficiently given or served for all
purposes if sent by the United Stated Postal Service, postage prepaid, certified
mail with return receipt or by Federal Express or other private expedited
carrier or delivery service with signature required with all charges prepaid to
the parties at their respective addresses below:
If to MICROFLUIDICS TO: Xxxxxxx X. Xxxxx, President
Microfluidics International Corporation
00 Xxxxxxx Xxxx
Xxxxxx, XX 00000-0000
If to CONSULTANT to:
Xxxxx X. Xxxxxx
000 Xxxxx Xxxxxx
Xxxxx Xxxxxx, XX 00000
ARTICLE 15
DEFINITIVE AGREEMENT: AMENDMENT
--------------------------------
This Agreement and any schedule hereto, together with the Confidentiality
Agreement and the Non- Competition Agreement, constitutes the entire agreement
between the parties relating to the subject matter hereof, supersedes any
previous written or oral understandings or agreements and may only be amended in
writing by the parties.
6
ARTICLE 16
RIGHTS AND REMEDIES
-------------------
The parties agree that in the event a breach or threatened breach of this
Agreement, MICROFLUIDICS' available damages and remedies at law would be
inadequate in that irreparable injury might be sustained by MICROFLUIDICS and,
accordingly, MICROFLUIDICS shall have the right to obtain temporary and/or
permanent injunctive relief or its equivalent under domestic or foreign law
against CONSULTANT and his agents to prevent the violation of an affirmative or
negative covenant as well as all other remedies that may be available to
MICROFLUIDICS. All legal and equitable rights, remedies and damages available
to MICROFLUIDICS shall be considered cumulative and the use or choice of a
particular remedy, damage or relief shall not preclude MICROFLUIDICS' further
exercise of other rights, remedies and damages. Damages and relief shall
specifically include an equitable accounting of all earnings, profits and other
benefits arising from a breach or violation including lost income potential and
lost business opportunity. No delay or omission in exercising any rights under
this Agreement shall operate as a waiver of that or any other right; a waiver or
consent given by MICROFLUIDICS on a certain occasion is effective only in that
instance and shall not constitute or be construed as a bar to, or a waiver of
any right on any other occasion, unless otherwise agreed to by MICROFLUIDICS.
ARTICLE 17
GOVERNING LAW: CONSTRUCTION: JURISDICTION
-----------------------------------------
This Agreement shall be governed by and construed under the laws of the
Commonwealth of Massachusetts, U.S.A. as an instrument under seal without regard
to its internal conflict of laws provision. The parties hereby consent to the
jurisdiction of the courts of the Commonwealth of Massachusetts or such other
jurisdiction as MICROFLUIDICS may find more convenient or effective for the
prosecution of any action hereunder.
ARTICLE 18
SEVERABILITY
------------
The parties agree that the provisions of this Agreement are severable. If any
provision hereof shall be declared to be invalid or unenforceable for any
reason, such unenforceability shall not affect the enforceability of the
remaining provisions of the Agreement, and such provision shall be reformed and
construed to the extent permitted by law so that the remainder is valid and
enforceable.
ARTICLE 19
SURVIVAL
--------
A termination hereunder shall only serve to stop the transfer of Information
and such termination shall not alter or affect CONSULTANT's obligations under
Articles 6 or 7 of this Agreement or the provisions of the Confidentiality
Agreement or the Non-Competition Agreement whether arising prior to or after
termination, which obligations shall specifically survive termination and
continue in full force and effect.
ARTICLE 20
BINDING NATURE OF OBLIGATIONS
-----------------------------
The obligations of CONSULTANT under this Agreement shall be binding respectively
upon any executors or administrators.
7
ARTICLE 21
COUNTERPARTS
------------
This Agreement may be executed in two or more counterparts, each of which shall
be deemed an original, but all of which together shall constitute one and the
same instrument.
IN WITNESS WHEREOF, the CONSULTANT and MICROFLUIDICS have each caused this
Agreement to be executed as a sealed instrument, and to be delivered one to
another as of the day, month and year first written above.
______________________________
Xxxxx X. Xxxxxx
MICROFLUIDICS INTERNATIONAL CORPORATION
By:_________________________________________
Xxxxxxx X. Xxxxx, President
8
