EXHIBIT 10.41
CONSULTING SERVICES AGREEMENT
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THIS AGREEMENT is entered into this 17th day of February, 1997, by and
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between Sequenom, Inc. (the "Company") and Prof. Dr.med.Dr.rer.nat Ulf.X.
Xxxxx ("Consultant").
NOW, THEREFORE, it is agreed as follows:
1. Definitions.
2. As used herein:
(a) The term "Products" shall mean the devices, reagents, kits and
diagnostic assays and services proposed to be developed by, or with the
assistance of, Consultant hereunder as defined, and with the specifications set
forth in Exhibit A hereto.
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(b) The term "Technology" shall mean the results and product (interim
and/or final) of the consulting services performed by Consultant hereunder,
whether tangible or intangible, including, without limitations each and every
invention, formula, trade secret, software program (including without
limitation, object code, source code, flow charts, algorithms and related
documentation), listing, routine, manual, specification, technique, product,
concept, know-how, or similar property, whether or not patentable or
copyrightable, and whether or not embodied in any Products that are made,
developed, perfected, designed conceived or first reduced to practice by
Consultant, either solely or jointly with others, in the course and scope of the
consulting services performed hereunder.
2. Engagement or Performance of Services.
(a) Engagement.
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The Company hereby engages Consultant to perform consulting
services in accordance with the terms and conditions of this Agreement. The
specific tasks and services to be performed by Consultant are set forth in
Exhibit A attached hereto. If such services include the development of specific
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Products, the specifications of such Products are set forth in Exhibit A
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attached hereto.
(b) Facilities, Equipment and Supplies.
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The Company will provide to the Consultant the facilities,
equipment and supplies specified in Exhibit A attached hereto. Consultant shall
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to some extent, at his own cost and expense, provide all other facilities,
equipment and supplies necessary to perform the consulting services hereunder.
It is understood that major expenses and costs will be covered by joint projects
sponsored by e.g. DFG, BMBF or EU.
(c) Other Services.
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The Company acknowledges and agrees that, subject to its
obligations hereunder, Consultant shall have the right to engage in researches
and development and consulting activities for himself and others during the term
of this Agreement; provided, however, that Consultant shall not perform any
consulting services for an actual or potential competitor of the Company during
the term of this Agreement and for a period of one (1) year after termination of
this Agreement.
Consulting Services Agreement
Prof. Dr. U.B. Xxxxx, Berlin -2-
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(d) Primary Duty.
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The Company and the Consultant recognize that Consultant's
primary duty as a member of the Charite University Clinic of Berlin (the
"University") is to the University. The Company and the Consultant agree that
the University's policies and Consultant's obligations to the University shall
be observed in the event a conflict arises with this Agreement.
(e) Compensation.
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As compensation for the consulting services provided by
Consultant hereunder, the Company shall pay to Consultant the amounts specified,
at the time(s) specified on Exhibit B attached hereto.
(f) Expenses.
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In addition to the compensation specified in subsection 2(e), the
Company will pay reasonable out-of-pocket expenses incurred by Consultant and
approved in advance by the Company in the furtherance of or in connection with
the performance of consulting services hereunder.
(g) No Violation of Others' Rights.
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Consultant represents and warrants that in the course of
performing services hereunder Consultant will not infringe or wrongfully
appropriate any patents, copyrights, trade secret rights, or other intellectual
property rights of any person or entity anywhere in the world.
3. Protection of Confidential Information.
On or before the date hereof, the Company and the Consultant shall
have entered into a separate agreement regarding Consultant's use of
confidential information (attached as Exhibit C).
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4. Property Rights.
All rights, title and interest in and to the Products (if any) and the
Technology shall at all times be and remain the sole and exclusive property of
the Company, and the Products and the Technology shall be deemed to works make
for hire. The parties agree that any patents, trademarks or copyrights that may
issue relating to any of the Products or the Technology shall be in the name of
and assigned to the Company. In the event of successful commercialization of
patented technology generated through the participation of Consultant, a license
agreement will be negotiated in good faith, reflecting the extent of
Consultant's participation and the Company's financial contributions as well as
related innovations created by Company personnel in the course of the
development.
Publication or presentation of results generated during the
performance of Consultant's services is desired. However, such publication or
presentation is subject to Company's prior approval which shall not be
unreasonably withheld. However, a period of 60 days is anticipated for
clearance of Consultant's request for publication and/or presentation of results
in order to determine whether parts of such scientific results are patentable or
would disclose trade secrets in which case those parts of the results should be
omitted from the publication and/or presentation.
Consulting Services Agreement
Prof. Dr. U.B. Xxxxx, Berlin -3-
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5. Term and Termination.
The term of this Agreement shall be as set forth in Exhibit A attached
hereto. Unless otherwise specified in Exhibit A, either party may terminate
this Agreement at any time upon thirty ( 30) days written notice delivered to
the other. The provision of Sections 3 and 4 hereof shall survive the
termination of this Agreement.
6. Miscellaneous.
(a) Use of University's Name.
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With the limited exception of citing Consultant's faculty title,
the Company and its affiliates will not use the names, likeness, or logos of the
University, any of its schools or divisions in any of their fund raising or in
investment documents, general publications, advertisements, or marketing and
promotional materials without the prior written permission of the University.
(b) Relationship of Parties.
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Consultant shall at all times during the performance of his
services hereunder be an independent contractor, maintaining sole and exclusive
control over its business and operations. At no time will either party hold
itself out to be the agent, employee, lessee, sublessee, partner or joint
venturer of the other party. Neither party hereto shall have the express or
implied right or authority to assume or create any obligation on behalf of or in
the name of the other party, or to bind the other party in regard to any
contract, agreement or undertaking with any third party.
(c) Entire Agreement.
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This Agreement, together with the exhibits attached hereto,
constitutes the entire agreement between the parties relating to the subject
matter hereof and supersedes all prior written or oral negotiations,
representations or agreements. No modification of this Agreement shall be
binding on either party unless it is in writing and signed by both parties.
(d) Severability.
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The provisions of this Agreement are severable, and if one or
more provisions are judicially determined to be illegal or otherwise
unenforceable, in whole or in part, the remaining provisions or portions of this
Agreement shall nevertheless be binding on and enforceable by and between the
parties hereto.
(e) Assignment.
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This Agreement shall insure to the benefit or and be binding upon
the successors and assigns of the parties hereto; provided, however, that
Consultant shall not transfer or assign this Agreement without the prior written
consent of the Company.
(f) Government Law.
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The rights and obligations of the parties to this Agreement shall
be governed by and construed in accordance with the laws of the State of
California.
(g) Headings.
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Section headings are for convenience of reference only and shall
not be considered in the interpretation of this Agreement.
Consulting Services Agreement
Prof. Dr. U.B. Xxxxx, Berlin -4-
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(h) Unavoidable Delays
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Either party shall be excused for any delays or defaults in the
performance of this Agreement (except the payment of amounts due and payable
hereunder) unavoidably caused of God, the elements, war, litigation, strikes,
walkouts, or any other cause beyond its reasonable control. Each party shall
use all reasonable diligence to avoid any such delay or default and to resume
performance under this Agreement as soon as practicable after such delay or
default.
(i) Notices.
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All notices, requests, demands and other communications to be given
pursuant to this Agreement shall be in writing and shall be deemed to have been
duly given if delivered by hand or mailed by registered or certified mail,
return receipt requested, postage prepaid, or by facsimile transmission if a
true and correct copy is sent the same day by first class mail, postage prepaid,
or by dispatch by in internationally recognized express courier service, and in
each case addressed as follows:
If to Consultant: Prof Dr. Xx. Xxx X. Xxxxx
Universit@tsklinikum CHARIT
Xxxxxxxxxxxx. 00/Xxxxxxxxxx. 00
X-00000 Xxxxxx
If to the Company: Sequenom, Inc.
c/o Sequenom Instruments GmbH
Xxxxxxxxxxxxxxxxxx 00 X
X-00000 Xxxxxxx / Xxxxxxx
Attn.: Prof. Xx. Xxxxxx Xxxxx
with copy to: Xxxxx, Xxxx & Xxxxx
Xxx Xxxx Xxxxxx Xxxxxx
Xxxxxx, XX 00000 / USA
Attn.: Xxxxx Xxxxxxx, Esq.
or such other address as either party hereto shall have designated by notice in
writing to the other party.
(j) Attorney's Fees and Costs
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Should litigation arise concerning the enforcement or interpretation
of this Agreement, the prevailing party shall be entitled to recover its
reasonable attorney's fees and costs as determined by the Court.
Consulting Services Agreement
Prof. Dr. U.B. Xxxxx, Berlin -5-
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IN WITNESS WHEREOF, the Parties hereto have executed this Agreement on the
date first above written.
SEQUENOM, Inc. CONSULTANT:
By: /s/ X. Xxxxxx /s/ Xxx X. Xxxxx
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Name: Xx. X. Xxxxxx Dr. Xx. Xxx X Xxxxx
Title: CEO
Consulting Services Agreement
Prof. Dr. U.B. Xxxxx, Berlin -6-
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EXHIBIT A
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TERM
The term of the Agreement shall be the period from June 1, 1996 to May 31, 1999,
subject to termination in accordance with Section 5.
DESCRIPTION OF SERVICES AND TASKS
The Consultant will:
(1) provide advice and technical assistance to Sequenom on all aspects of
clinical microbiology, including but not limited to the detection and
diagnosis of microorganisms, viruses of clinical relevance;
(2) provide technical advice that will assist Sequenom in its applications for
patents for technology currently developed by Sequenom, or developed by and
for Sequenom during the period of his consultantship, in particular
defining aspects of these technologies that distinguish them from prior
art;
(3) assist Sequenom in locating and recruiting for employment personnel skilled
in clinical microbiology and the detection and diagnosis of microorganisms,
etc. of clinical relevance with expertise in molecular clinical
microbiology and related state-of-the-art technologies;
(4) attend meetings of the Scientific Advisory Board and participate in all
discussions and decisions related to strategies, technical approaches and
technical progress for the overall project;
(5) and, all addition to regular communication with Sequenom personnel via
telephone, fax, courier or normal mail, spend up to two days per month at
Sequenom Instruments GmbH, Hamburg/Germany, or the location of Sequenom,
Inc. in the USA.
Consulting Services Agreement
Prof. Dr. U.B. Xxxxx, Berlin -7-
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EXHIBIT B
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COMPENSATION AND PAYMENT SCHEDULE
In return, Sequenom will provide to the Consultant:
(1) ***
(2) ***
(3) ***
(4) ***
(5) options to purchase 5,000 shares of the common stock of Sequenom, with 50%
of such options to vest in full on December 31, 1997, and the remaining 50%
to vest on December 31, 1998; such options shall have an exercise price per
share equal to the fair market value of the common stock on the date of
grant as determined by the Board of Directors;
(6) options to purchase 15,000 shares of the common stock of Sequenon, with
such options to vest in full on December 31, 2004, provided, however, that
the vesting of 5,000 of such shares shall be accelerated upon completion of
each of the following milestones;
(a)
(b) TO BE DEFINED
(c)
(7) the options shall have an exercise price per share equal to the fair market
value of the common stock on the date of grant as determined by the Board
of Directors.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
Consulting Services Agreement
Prof. Dr. U.B. Xxxxx, Berlin -8-
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EXHIBIT C
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CONFIDENTIALITY AGREEMENT
Under the terms of the Consulting Agreement, the Consultant is under obligation
not to disclose any business information or company secrets to unauthorized
parties and/or to persons outside the Company.
Maintaining confidentiality is a constituent part of the Consultant's loyalty to
the Company and protects business and company secrets. Company secrets are data
and materials identified as confidential or those which, upon careful
consideration, a Consultant can recognize as being confidential (e.g. technical
expertise, even if not patentable, supply sources for goods, customer lists,
price schedules, calculations, investment plans, etc., including also the
Consultant's own inventions made in the performance of the Consulting Agreement.
Details of any production or analytical methods of which the Consultant may gain
knowledge and regarding which the Company as license holder is committed to
maintain strictest confidentiality are also classified as secret. This applies
to details of production processes to which the Company has gained access in the
course of an exchange of know-how with another company or which are classified
secret b the Company under its commitment to confidentiality with another
company.
The Consultant further undertakes to maintain strictest confidentiality
regarding all matters of the Company's business also after termination of the
Consulting Agreement. In this context the Consultant is obliged, if so
required, to sign a respective personal commitment to confidentiality vis--vis
third parties.
In the event of any violation of this agreement to confidentiality, the Company
is entitled to impose a penalty for each violation, without prejudice to the
Company's right to claim for higher damages, or the Company's right to
termination of the Consulting Agreement.
Consultant: SEQUENOM:
/s/ Xx. Xxx X.Xxxxx /s/ illegible
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Dr. Xx. Xxx X Xxxxx Name/Title
Date: 12/22/1996 Date: 2/18/97
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