Exhibit 10.10
CONSULTING SERVICES AGREEMENT
November 16, 1995
TRIANGLE PHARMACEUTICALS, INC.
0000 X. Xxxxxxxx Xxxxxx
Xxxxxxxx 0000, Xxxxx 0000
Xxxxxx Xxxx, XX 00000
The following confirms the agreement between Xxxxxx Xxxxxx, M.D. (the
"Consultant") and Triangle Pharmaceuticals, Inc., a Delaware corporation (the
"Company"), with respect to consulting services to the Company:
1. PROPRIETARY INFORMATION. Consultant understands that the Company
possesses and will possess Proprietary Information which is important to its
business. For purposes of this Agreement, "Proprietary Information" is
information that was or will be developed, created, or discovered by or on
behalf of the Company, or which became or will become known by, or was or is
conveyed to the Company (including, without limitation, "Results" as defined
below), which has commercial value in the Company's business. "Proprietary
Information" includes, but is not limited to, information about trade secrets,
computer programs, design, technology, ideas, know-how, processes, formulas,
compositions, data, techniques, improvements, inventions (whether patentable or
not), works of authorship, business and product development plans, customers and
other information concerning the Company's actual or anticipated business,
research or development, or which is received in confidence by or for the
Company from any other person; PROVIDED, that "Proprietary Information" does not
include any information that Consultant demonstrates (i) is or becomes generally
known to the public through no action or inaction by Consultant, or (ii) was
disclosed to Consultant without restriction by a third party not in violation of
any other party's proprietary rights, or (iii) was in the Consultant's
possession without restriction prior to disclosure, or (iv) was independently
developed by Consultant and has not been licensed to the Company. Consultant
understands that the consulting arrangement creates a relationship of confidence
and trust between Consultant and the Company with regard to Proprietary
Information.
2. COMPANY MATERIALS. Consultant understands that the Company
possesses or will possess "Company Materials" which are important to its
business. For purposes of this Agreement, "Company Materials" are documents or
other media or tangible items that contain or embody Proprietary Information or
any other information concerning the business, operations or plans of the
Company, whether such documents have been prepared by Consultant or by others.
"Company Materials" include, but are not limited to, blueprints, drawings,
photographs, charts, graphs, notebooks, customer
* Certain confidential portions of this Exhibit were omitted by means of
marking such portions with an asterick (the "Xxxx"). This Exhibit has been
filed separately with the Secretary of the Commission without the Xxxx
pursuant to the Company's Application Requesting Confidential Treatment under
Rule 406 under the Securities Act.
lists, computer disks, tapes or printouts, sound recordings and other printed,
typewritten or handwritten documents, as well as samples, prototypes, models,
products and the like.
3. CONSULTING SERVICES. In consideration of the mutual covenants
and agreements hereafter set forth, the parties agree as follows:
a. This Agreement will terminate on November 16, 1999, unless
terminated earlier pursuant to Paragraph 4 of this Agreement.
b. Consultant agrees to render consulting services ("Consulting
Services") in the anti-cancer and anti-viral fields (collectively, the "Field")
to the Company for the term of this Agreement. Consultant's duties shall
include, but are not limited to, those duties set forth in EXHIBIT A hereto and
such other duties as the Company may from time to time prescribe. Consultant
also agrees to submit to the Company, in written form or other tangible form,
any deliverables or results of Consultant's work under this Agreement
("Results," including, without limitation, all Inventions referred to in 3.g.
below) and all documentation of work performed under this Agreement upon request
and in a timely manner. Consultant shall report directly to the Chief
Scientific Officer of the Company and shall provide his services in accordance
with the instructions of the Chief Scientific Officer, and with such reasonable
instructions given to him by any other officer of the Company.
c. Consultant further agrees to render services (together with
the Consulting Services, the "Services") to the Company as a member of the
Company's Scientific Advisory Board for the term of this Agreement, and in such
capacity shall advise the Company in fields of technical interest to the
Company. As a member of the Company's Scientific Advisory Board, Consultant's
time commitment will include up to 6 formal all-day meetings per year, at the
Company's request, unless Consultant agrees to extend the length or number of
such meetings. These meetings will be scheduled at the party's mutual
convenience, which may include weekends.
d. As partial consideration for Consultant's Services under
this Agreement, Consultant has been permitted to purchase securities of the
Company pursuant to that certain Series A Preferred Stock Purchase Agreement
and that certain Restricted Stock Purchase Agreement dated October 31, 1995.
Within thirty (30) days after the date of this Agreement, the Company shall
pay Consultant Two Thousand Dollars ($2,000). In addition, during the term
of this Agreement, Consultant shall be compensated at the rate of Twenty-Five
Thousand Dollars ($25,000) per year, payable quarterly in arrears subject to
deferral as described below. The Company shall not be required to pay any
such amounts unless and until it has raised from and after the date of this
Agreement equity financing of at least Ten Million Dollars ($10,000,000) (in
addition to equity financing raised by the Company prior to the date of this
Agreement). Within five (5) business days after the date that the Company
has raised an additional Ten Million Dollars ($10,000,000) in equity
financing (the date when such funding has been raised shall be the "Funding
Date"), the Company shall pay to consultant the sum of Six Thousand Two
Hundred Fifty Dollars ($6,250) for each complete quarter period
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that has elapsed since the date of this Agreement. The Company shall also
reimburse Consultant for reasonable long distance travel (transportation,
lodging and meals) and telephone expenses Consultant is required to incur in
providing the Services. All long-distance travel and lodging will be coach
class or equivalent and must be authorized in writing by the Company in advance.
The foregoing compensation is Consultant's sole compensation for rendering
Services to the Company. Consultant shall provide an itemized statement and
receipts for expenses. The Company agrees to reimburse Consultant for approved
expenses within 45 days of receipt of Consultant's itemized statement and
accompanying receipts. The foregoing shall constitute Consultant's sole
compensation for rendering Services to the Company.
e. All Proprietary Information and all title, patents, patent
rights, copyrights, mask work rights, trade secret rights, and other
intellectual property and rights anywhere in the world (collectively "Rights")
in connection therewith shall be the sole property of the Company. Consultant
hereby assigns to the Company any Rights Consultant may have or acquire in such
Proprietary Information. At all times, both during the term of this Agreement
and after its termination, Consultant will keep in confidence and trust and will
not use or disclose any Proprietary Information without the prior written
consent of an officer of the Company. Consultant acknowledges that any
disclosure or unauthorized use of Proprietary Information will constitute a
material breach of this Agreement and cause substantial harm to the Company for
which damages would not be a fully adequate remedy, and, therefore, in the event
of any such breach, in addition to other available remedies, the Company shall
have the right to obtain injunctive relief.
f. All Company Materials shall be the sole property of the
Company. Consultant agrees that during the term of this Agreement, Consultant
will not remove any Company Materials from the business premises of the Company
or deliver any Company Materials to any person or entity outside the Company,
except as required to do in connection with performance of the Services under
this Agreement. Consultant further agrees that, immediately upon the Company's
request and in any event upon completion of the Services, Consultant shall
deliver to the Company all Company Materials, any document or media which
contains Results, apparatus, equipment and other physical property or any
reproduction of such property, excepting only Consultant's copy of this
Agreement. At all times before or after completion of the Services, the Company
shall have the right to examine the Results and any materials relating thereto
to ensure Consultant's compliance with the provisions of this Agreement.
g. Prior to entering into this Agreement with the Company,
Consultant was employed, and continues to be employed, by University of
California, San Diego (the "Institute"). The Company recognizes that in
connection with Consultant's employment by the Institute, Consultant's primary
responsibility is to the Institute. In connection with such employment,
Consultant has entered into an Institute Patent Policy, in the form attached
hereto as EXHIBIT B (the "Patent Policy"). The Company hereby acknowledges the
existence of the Patent Policy and agrees to take no actions that would result
in Consultant violating the Patent Policy. To the extent Consultant is not
3
prevented from doing so by virtue of the Patent Policy, Consultant will promptly
disclose in writing to the Chief Scientific Officer of the Company, or to any
persons designated by the Company, all "Inventions" (which term includes
improvements, inventions, designs, formulas, works of authorship, trade secrets,
technology, computer programs, ideas, processes, techniques, know-how and data,
whether or not patentable) in the Field made or conceived or reduced to practice
or developed by Consultant, either alone or jointly with others, during the term
of this Agreement. Such disclosures shall be received by the Company in
confidence (to the extent they are not assigned in Section 3(h) below) and do
not extend the assignment made in Section 3(h) below. Consultant will not
disclose Inventions covered by Section 3(h) to any person outside the Company
unless requested to do so by management personnel of the Company.
h. Consultant agrees that all Inventions which Consultant
makes, conceives, reduces to practice or develops (in whole or in part, either
alone or jointly with others) during the term of this Agreement in the course of
performing the Services or (to the extent permitted by the Patent Policy and the
Approved Agreements, as defined below) which relate to any Proprietary
Information, shall be the sole property of the Company. Consultant agrees to
assign and hereby assigns to the Company all Rights to any such Inventions. The
Company shall be the sole owner of all Rights in connection therewith. No
assignments in this Agreement shall extend to inventions, the assignment of
which Consultant proves would be prohibited by North Carolina Commerce and
Business Code section 66-57.1 or California Labor Code Section 2870 (copies of
which is attached as EXHIBIT C), were Consultant an employee of the Company. In
the case of Inventions which Consultant is prohibited by the terms of the Patent
Policy from assigning to the Company, Consultant shall use his best efforts to
facilitate the license of such Inventions from Consultant and the Institute to
the Company for no additional consideration to Consultant. "Approved
Agreements" shall consist of: (1) the Consulting Agreement dated July 30, 1990,
between Consultant and CIBA-GEIGY Corporation as in effect on the date of this
Agreement, and (2) so long as Consultant complies with the right of first
refusal set forth immediately below in this Section 3.h, any future agreements
entered into by Consultant and a third party, pursuant to which the third party
provides funding to the research laboratory of Consultant in an academic
institution where Consultant is employed, and pursuant to which the third party
receives rights to patents or patent rights resulting from such research. The
Company shall have a right of first refusal to fund research in the anti-viral
and/or anti-cancer fields (and obtain any resulting assignment or license of
inventions or proprietary rights) in the laboratory of Consultant. Prior to
entering into any agreement (or permitting any academic or other institution at
which Consultant may be conducting research to enter into any agreement) with a
third party to fund research or grant rights to resulting inventions or
proprietary rights, Consultant shall notify the Company in writing of the terms
of any such proposed agreements and shall include in such notice copies of any
proposed agreements. Such notice shall be deemed an offer to the Company to
enter into such agreements. The Company shall have thirty (30) days to accept
the offer contained in such notice. Upon acceptance by the Company, such
agreement(s) shall be binding between the Company and Consultant. If the
Company does not accept such offer within such thirty (30) day period,
Consultant shall be entitled, for a period of
4
ninety (90) days after the expiration of the thirty (30) day period, to enter
into such agreements with such third party on the terms presented and offered to
the Company. If Consultant does not enter into such agreements with such third
party on the terms presented and offered to the Company within such ninety (90)
day period, then Consultant must again comply with the terms of this Section 3.h
before entering into such agreements. This right of first refusal shall
terminate as to Consultant if and when this Consulting Agreement is terminated;
provided that such termination shall not affect any agreements the Company and
Consultant may have entered into pursuant to this Section 3.h prior to such
termination or the obligations of Consultant under this Section 3.h prior to
such termination.
i. Consultant agrees to perform, during and after the term of
this Agreement, all acts deemed necessary or desirable by the Company to permit
and assist it, in evidencing, perfecting, obtaining, maintaining, defending and
enforcing Rights and/or Consultant's assignment with respect to such Inventions
in any and all countries. Such acts may include, but are not limited to,
execution of documents and assistance or cooperation in legal proceedings.
Consultant hereby irrevocably designates and appoints the Company and its duly
authorized officers and agents, as Consultant's agents and attorneys-in-fact to
act for and in behalf and instead of Consultant, to execute and file any
documents and to do all other lawfully permitted acts to further the above
purposes with the same legal force and effect as if executed by Consultant.
j. Any assignment of copyright hereunder includes all rights of
paternity, integrity, disclosure and withdrawal and any other rights that may be
known as or referred to as "moral rights" (collectively "Moral Rights"). To the
extent such Moral Rights cannot be assigned under applicable law and to the
extent the following is allowed by the laws in the various countries where Moral
Rights exist, Consultant hereby waives such Moral Rights and consents to any
action of the Company that would violate such Moral Rights in the absence of
such consent. Consultant will confirm any such waivers and consents from time
to time as requested by the Company.
k. Consultant has attached hereto as EXHIBIT D a complete list
of all existing Inventions to which Consultant claims ownership as of the date
of this Agreement and that Consultant desires to specifically clarify are not
subject to this Agreement, and Consultant acknowledges and agrees that such list
is complete. If no such list is attached to this Agreement, Consultant
represents that Consultant has no such Inventions at the time of signing this
Agreement.
l. During the term of this Agreement and for one (1) year
thereafter, Consultant will not encourage or solicit any employee or consultant
of the Company to leave the Company for any reason.
m. Except for services Consultant may continue to render to the
Institute (as defined in Section 3(p) below) and/or CIBA-GEIGY Corporation,
Consultant agrees that during the term of this Agreement Consultant will not
engage in any employment, business, or activity that is in any way competitive
with the business or
5
proposed business of the Company, and Consultant will not assist any other
person or organization in competing with the Company or in preparing to engage
in competition with the business or proposed business of the Company.
n. Consultant represents that performance of all the terms of
this Agreement will not breach any agreement to keep in confidence proprietary
information acquired by Consultant in confidence or in trust prior to the
execution of this Agreement. Consultant has not entered into, and Consultant
agrees not to enter into, any agreement either written or oral that conflicts or
might conflict with Consultant's performances of the Services under this
Agreement.
o. In the case of technology and/or Rights which Consultant is
prohibited by the terms of the Patent Policy from assigning to the Company,
Consultant shall use his best efforts to facilitate the license of such
technology and/or Rights from Consultant and the Institute to the Company for no
additional consideration to Consultant. This Section 3(o) shall survive any
termination of this Agreement (including any modifications, improvements and
derivatives thereof).
4. TERMINATION. Consultant agrees that this Agreement may be
terminated by the Company at any time, for any reason, with or without cause, by
giving ninety (90) days prior written notice to Consultant, such termination to
be effective upon the ninety-first (91st) day after the date of such notice.
5. CONSULTANT'S STATUS. Consultant is an independent contractor and
is solely responsible for all taxes, withholdings, and other similar statutory
obligations, including, but not limited to, Workers' Compensation Insurance; and
Consultant agrees to defend, indemnify and hold Company harmless from any and
all claims made by any entity on account of an alleged failure by Consultant to
satisfy any such tax or withholding obligations.
6. NO AUTHORITY FOR THE COMPANY. Consultant has no authority to act
on behalf of or to enter into any contract, incur any liability or make any
representation on behalf of the Company.
7. STANDARD OF PERFORMANCE. Consultant's performance under this
Agreement shall be conducted with due diligence and in full compliance with the
highest professional standards of practice in the industry. Consultant shall
comply with all applicable laws and Company safety rules in the course of
performing the Services. If Consultant's work requires a license, Consultant
has obtained that license and the license is in full force and effect.
8. INDEMNIFICATION. Consultant will indemnify and hold Company
harmless, and will defend Company against any and all loss, liability, damage,
claims, demands or suits and related costs and expenses to persons or property
that arise, directly or indirectly, from acts or omissions of Consultant, or
breach of any term or condition of this Agreement.
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9. SURVIVAL OF CERTAIN OBLIGATIONS. Consultant agrees that all
obligations under paragraphs 3(e) through 3(j) and paragraphs 3(l), (n), and
(o), 5 and 8 of this Agreement shall continue in effect after termination of
this Agreement, and that the Company is entitled to communicate Consultant's
obligations under this Agreement to any future client or potential client of
Consultant.
10. GOVERNING LAW; SEVERABILITY. Consultant agrees that any dispute
in the meaning, effect or validity of this Agreement shall be resolved in
accordance with the laws of the State of North Carolina without regard to the
conflict of laws provisions thereof. Consultant further agrees that if one or
more provisions of this Agreement are held to be illegal or unenforceable under
applicable North Carolina law, such illegal or unenforceable portion(s) shall be
limited or excluded from this Agreement to the minimum extent required and the
balance of the Agreement shall be interpreted as if such portion(s) were so
limited or excluded and shall be enforceable in accordance with its terms.
11. SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon
Consultant, and inure to the benefit of, the parties hereto and their respective
heirs, successors, assigns, and personal representatives; provided, however,
that it shall not be assignable by Consultant.
12. ENTIRE AGREEMENT. This Agreement contains the entire
understanding of the parties regarding its subject matter and can only be
modified by a subsequent written agreement executed by the President or Chief
Executive Officer of the Company.
13. NOTICE. All notices required or given herewith shall be
addressed to the Company or Consultant at the designated addresses shown below
by registered mail, special delivery, or by certified courier service:
a. TO COMPANY:
TRIANGLE PHARMACEUTICALS, INC.
0000 X. Xxxxxxxx Xxxxxx
Xxxxxxxx 0000, Xxxxx 0000
Xxxxxx Xxxx, XX 00000
b. TO CONSULTANT:
Xxxxxx Xxxxxx, M.D.
Department of Medicine
000 Xxxxxxxx Xxxxxxxx Xxxxxxxx
Xx Xxxxx, XX 00000-0000
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14. ATTORNEYS' FEES. If any action at law or in equity is necessary
to enforce or interpret the terms of this Agreement, the prevailing party shall
be entitled to reasonable attorneys' fees, costs and necessary disbursements, in
addition to any other relief to which the party may be entitled.
CONSULTANT HAS READ THIS AGREEMENT CAREFULLY AND UNDERSTANDS AND
ACCEPTS THE OBLIGATIONS WHICH IT IMPOSES UPON CONSULTANT WITHOUT RESERVATION.
NO PROMISES OR REPRESENTATIONS HAVE BEEN MADE TO CONSULTANT TO INDUCE CONSULTANT
TO SIGN THIS AGREEMENT. CONSULTANT SIGNS THIS AGREEMENT VOLUNTARILY AND FREELY,
IN DUPLICATE, WITH THE UNDERSTANDING THAT ONE COUNTERPART WILL BE RETAINED BY
THE COMPANY AND THE OTHER COUNTERPART WILL BE RETAINED BY CONSULTANT.
Dated: November 16, 1995 /s/ Xxxxxx Xxxxxx
-----------------------------
(Signature)
-----------------------------
(Print Name)
Accepted and Agreed to:
TRIANGLE PHARMACEUTICALS, INC.,
a Delaware corporation
By: /s/ Xxxxx X. Xxxxx
--------------------------------
Its: Chairman and CEO
-------------------------------
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EXHIBIT A
DUTIES OF CONSULTANT
1. Evaluation of specific Company opportunities, including those relating to
technologies and compounds.
2. Report to Company on presentations of interest within the Field at
meetings/symposia attended.
3. Identify potential opportunities from all other sources.
4. Review/critique reports and technical data packages.
5. Assist in preparation of presentations to third parties.
A-1
EXHIBIT B
INSTITUTE PATENT POLICY
X-0
XXXXXXX X
XXXXXXXXXX XX XXXXXXXXXX PATENT POLICY
I. PREAMBLE
It is the intent of the President of the University of California, in
administering intellectual property rights for the public benefit, to
encourage and assist members of the faculty, staff, and others associated
with the University in the use of the patent system with respect to their
discoveries and inventions in a manner that is equitable to all parties
involved.
The University recognizes the need for and desirability of encouraging
the broad utilization of the results of University research, not only by
scholars but also in practical application for the general public benefit,
and acknowledges the importance of the patent system in bringing innovative
research findings to practical application.
Within the University, innovative research findings often give rise to
patentable inventions as fortuitous by-products, even though the research was
conducted for the primary purpose of gaining new knowledge.
To encourage the practical application of University research for the
broad public benefit, to appraise and determine relative rights and equities
of all parties concerned, to facilitate patent applications, licensing,
equitable distribution of royalties, if any, to assist in obtaining funds for
research, to provide for the use of invention-related income for the further
support of research and education, and to provide a uniform procedure in
patent matters when the University has a right or equity, the following
University of California Patent Policy is adopted.
II. STATEMENT OF POLICY
A. An agreement to assign inventions and patents to the University, except
those resulting from permissible consulting activities without use of
University facilities, shall be mandatory for all employees, for persons
not employed by the University but who use University research
facilities, and for those who receive gift grant, or contract funds
through the University. Exemptions from such agreements to assign may be
authorized in those circumstances when the mission of the University is
better served by such action, provided that overriding obligations to other
parties are met and such exemptions are not inconsistent with other
University policies.
B. Those individuals who have so agreed to assign inventions and patents
shall promptly report and fully disclose the conception and/or reduction
to practice of potentially patentable inventions to the Director of the
Patent, Trademark, and Copyright Office. They shall execute such
declarations, assignments, or other documents as may be necessary in the
course of invention evaluation, patent prosecution, or protection of
patent or analogous property rights, to assure that title in such
inventions shall be held by the University or by such other parties
designated by the University as may be appropriate under the
circumstances. Such circumstances would include, but not be limited to,
these situations when there are overriding patent obligations of the
University arising from gifts, grants, contracts, or other agreements with
outside organizations.
In the absence of overriding obligations to outside sponsors of
research, the University may release patent rights to the inventor in
these circumstances when:
(1) the University elects not to file a patent application and the inventor
is prepared to do so, or
(2) the equity of the situation clearly indicates such release should be
given, provided in either case that no further research or development
to develop that invention will be conducted involving University
support or facilities, and provided further that a shop right is
granted to the University.
C. Subject to restrictions arising from overriding obligations of the
University pursuant to gifts, grants, contracts, or other agreements with
outside organizations, the University agrees, for and in consideration of
said assignment of patent rights, to pay annually to the named
inventor(s), or to the inventor(s)' heirs, successors, or assigns, 50% of
the first $100,000 of cumulative net royalties and fees per invention
received by the University, 35% of the next $400,000 of cumulative net
royalties and fees per invention received by the University, and 20% of
all additional cumulative net royalties and fees per invention received by
the University. Net royalties are defined as gross royalties and fees,
less 15% thereof for administrative costs, and less the costs of
patenting, protecting, and preserving patent rights, maintaining patents,
the licensing of patent and related property rights, and such other costs,
Taxes or reimbursements as may be necessary or required by law.
When there are two or more inventors, each inventor shall share equally
in the inventor's share of royalties, unless all inventors previously have
agreed in writing to a different distribution of such share.
Distribution of the inventor's share shall be made annually in
February from the amount received during the penultimate calendar year. In
the event of any litigation, actual or imminent, or any other action to
protect patent rights, the University may withhold distribution and
impound royalties until resolution of the matter.
D. In the disposition of any net income accruing to the University from
patents, first consideration shall be given to the support of research.
III. PATENT RESPONSIBILITIES AND ADMINISTRATION
A. Pursuant to Standing Order 100.4(gg), the President has responsibility for
all matters relating to patents in which the University of California is
in any way concerned.
B. The President is advised on such matters by the Intellectual Property
Advisory Council (IPAC), which is chaired by the Senior Vice
President-Academic Affairs. The membership of IPAC includes
representatives from campuses, Agriculture and Natural Resources, the
Department of Energy Laboratories, and the Director of the Patent,
Trademark, and Copyright Office. IPAC is responsible for:
1. reviewing and proposing University policy on intellectual property
matters including patents, copyrights, trademarks, and tangible research
products;
2. reviewing proposed exceptions to established policies; and
3. advising the President on related matters as requested.
C. The Senior Vice President-Administration is responsible for implementation
of this Policy, including the following:
1. Evaluating inventions and discoveries for patentability, as well as
scientific merit and practical application, and requesting the filing
and prosecution of patent applications.
2. Evaluating the patent or analogous property rights or equities held by
the University in an invention, and negotiating agreements with
cooperating organizations, if any, with respect to such rights or
equities.
3. Negotiating licenses and license option agreements with other parties
concerning patent and/or analogous property rights held by the
University.
4. Directing and arranging for the collection and appropriate distribution
of royalties and fees.
5. Assisting University officers in negotiating agreements with cooperating
organizations concerning prospective rights to patentable inventions or
discoveries made as a result of research carried out under grants,
contracts, or other agreements to be funded in whole or in part by such
cooperating organizations, and negotiating with Federal agencies
regarding the disposition of patent rights.
6. Recommending to the President appropriate action on exemptions from the
agreement to assign inventions and patents to the University as
required by Section II. A. above.
Revised April 16, 1990
B-2
EXHIBIT C
NORTH CAROLINA COMMERCE AND BUSINESS CODE SECTION 66-57.1
Section 66-57.1 Employee's right to certain inventions
Any provision in an employment agreement which provides that the employees
shall assign or offer to assign any of his rights in an invention to his
employer shall not apply to an invention that the employee developed entirely on
his own time without using the employer's equipment, supplies, facility or trade
secret information except for those inventions that (i) relate to the employer's
business or actual or demonstrably anticipated research or development, or
(ii) result from any work performed by the employee for the employer. To the
extent a provision in an employment agreement purports to apply to the type of
invention described, it is against the public policy of this State and is
unenforceable. The employee shall bear the burden of proof in establishing that
his invention qualifies under this section.
CALIFORNIA LABOR CODE SECTION 2870
Section 2870 Employment agreements; assignment of rights
(a) Any provision in an employment agreement which provides that an
employee shall assign, or offer to assign, any of his or her rights in an
invention to his or her employer shall not apply to an invention that the
employee developed entirely on his or her own time without using the employer's
equipment, supplies, facilities, or trade secret information except for those
inventions that either:
(1) Relate at the time of conception or reduction to practice of the
invention to the employer's business, or actual or demonstrably anticipated
research or development of the employer.
(2) Result from any work performed by the employee for the employer.
(b) To the extent a provision in an employment purports to require an
employee to assign an invention otherwise excluded from being required to be
assigned under subdivision (a), the provision is against the public policy of
this state and is unenforceable.
C-1
EXHIBIT D
LIST OF ALL EXISTING INVENTIONS
TRIANGLE PHARMACEUTICALS, INC.
0000 X. Xxxxxxxx Xxxxxx
Building 1000, Suite 1005
Xxxxxx Xxxx, XX 00000
Gentlemen:
1. The following is a complete list of Inventions relevant to the
performance of consulting services for Triangle Pharmaceuticals, Inc. (the
"Company") that have been made or conceived or first reduced to practice by me
alone or jointly with others prior to the execution of the Company's Consulting
Services Agreement (the "Agreement") that I desire to clarify are not subject to
the Agreement.
No Inventions
--------
X See below
-------
X Additional sheets attached
-------
/s/ Xxxxxx Xxxxxxx
------------------------------------
Consultant
D-1
[*]
* Confidential Treatment Requested
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* Confidential Treatment Requested
