CONSULTING AGREEMENT
This CONSULTING AGREEMENT (the
"Agreement") is dated as of December 10, 2009, and is between ACURA
PHARMACEUTICALS, INC., a New York corporation together with its subsidiary
(“Acura”), and Xxxxx Xxxxx, Ph.D. (“Consultant”).
WHEREAS Consultant is employed by Acura
pursuant to an employment agreement made as of March 23, 2009 (the “Employment
Agreement”);
WHEREAS, Consultant wishes to terminate
the Employment Agreement;
WHEREAS,
Acura desires to retain Consultant as an independent contractor to perform
consulting services for Acura; and
WHEREAS,
Consultant is willing to perform such services on the terms and conditions set
forth herein. NOW, THEREFORE, the parties agree as
follows:
1. Services and
Compensation
(a) Commencing
on December 14, 2009 (the “Consulting Commencement Date”), Consultant agrees to
provide to Acura consulting services, from time to time, and on a matter by
matter basis, at Acura’s request to assist Acura, for example, (i) in
conjunction with Acura’s outside patent counsel, in evaluating Acura’s issued
patents and filed patent applications; (ii) in developing, authoring, and/or
co-authoring new patent applications intended to encompass and protect
commercially viable pharmaceutical products with abuse deterrent features and
benefits; (iii) in reviewing draft patent applications authored by Acura staff;
(iv) in conjunction with Acura patent counsel, evaluating competitive patents
and published patent applications for freedom to operate and other relevant
considerations; (v) in evaluating technical aspects of competitive and
potentially competitive products in development with abuse deterrent features
and benefits; (vi) in collaborating with Acura's technical staff regarding
development of new modified-release oral solid dosage forms with abuse deterrent
features using previously approved active and inactive pharmaceutical
ingredients; and (vii) such other matters as may be requested by Acura from time
to time during the term of this Agreement (“Services”); provided that prior to
being obligated to perform any Service hereunder Consultant must agree in
writing to perform such Service. The Services will be performed by
Consultant at such times and in such number of hours as shall be mutually agreed
by Acura and Consultant.
(b) In
the performance of the Services hereunder, Consultant shall comply with all
applicable federal, state and local laws, regulations and
guidelines.
(c) In
consideration for the Services performed by Consultant, Acura agrees to pay the
Consultant three hundred dollars ($ 300.00) per hour (the "Consulting Fee") and
at 33% of the Consulting Fee for travel time, if any, relating to such
Services. Notwithstanding the foregoing, Consultant shall receive no
Consulting Fee for the first forty (40) hours of Services performed by him
hereunder.
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(d) In
addition, reimbursement will be made to the Consultant by Acura for reasonable
expenses incurred by the Consultant on Acura’s behalf, including reimbursement
for travel, meals and lodging subject to Acura’s prior approval.
(e) At
the end of each month in which Services are rendered, Consultant shall provide
an invoice to Acura and a copy of any receipts for any individual expense item
exceeding $25.00. All invoices shall include a daily written
accounting and a brief description of the number of hours spent by the
Consultant performing the Services, and expenses incurred. All
invoices shall be due and payable by Acura to Consultant within thirty (30) days
after receipt by Acura.
2. Protection
of Confidential Information. In view of the fact that the
Consultant's work for Acura will bring him into close contact with the Company’s
confidential information, including plans for future developments, the
Consultant agrees to the following:
2.1 Secrecy. During
the Term (as defined in Section 5) and after the date of termination of this
Agreement, Consultant will preserve the confidential nature of, and not use,
disclose, reveal, or make accessible to anyone other than Acura’s officers,
directors, employees, consultants or agents, otherwise than within the scope of
his consulting duties and responsibilities hereunder, any and all documents,
information, knowledge or data of or pertaining to Acura, its subsidiaries or
affiliates, including, without limitation, the Aversion® Technology, or
pertaining to any other individual, firm, corporation, partnership, joint
venture, business, organization, entity or other person with which Acura or any
of its subsidiaries or affiliates may do business during the Term (including
licensees, licensors, manufacturers, suppliers and customers of Acura or any of
its subsidiaries or affiliates) and which is not in the public domain, including
trade secrets, "know how", names and lists of licensees, licensors,
manufacturers, suppliers and customers, development plans or programs,
statistics, manufacturing and production methods, processes, techniques,
pricing, marketing methods and plans, specifications, advertising plans and
campaigns or any other matters, and all other confidential information of Acura,
its subsidiaries and affiliates (hereinafter referred to as "Confidential
Information"). The restrictions on the disclosure of Confidential
Information imposed by this Section 2.1 shall not apply to any Confidential
Information that (i) was part of the public domain at the time of its receipt by
the Consultant or becomes part of the public domain in any manner and for any
reason other than an act by the Consultant, and (ii) Consultant is legally
compelled (by applicable law, deposition, interrogatory, request for documents,
subpoena, civil investigative demand or similar process) to disclose, in which
event the Consultant shall provide Acura with prompt notice of such requirement
so that Acura may seek a protective order or other appropriate remedy, and if
such protective order or other remedy is not obtained, the Consultant shall
exercise reasonable efforts in good faith to obtain assurance that confidential
treatment will be accorded such Confidential Information.
2.2 Return
Memoranda, etc. The Consultant hereby agrees to deliver
promptly to Acura on termination of this Agreement, or at any other time Acura
may so request, all memoranda, notes, records, email records, reports, manuals,
drawings, blueprints and other documents (and all hard and soft copies thereof)
relating to Acura's business and all property associated therewith, which the
Consultant may then possess or have under his control.
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2.3 Non-competition. The
Consultant agrees that he shall not at any time prior to one (1) year after the expiration or
termination of this Agreement for any reason, own, manage, operate, be a
director or an employee of, or a consultant to or provide any services,
consultation or advice to any person, business, corporation, partnership, trust,
limited liability company or other firm or enterprise ("Person") which is
engaged in marketing, selling or distributing products, or in developing product
candidates in or for the United States, which contain opioid anti-abuse or abuse
deterrent technology or technology meant to achieve all or some of the same
effects as Acura’s Aversion® Technology or are potentially competitive with: (a)
Acura’s products or product candidates in development or (b) its licensee’s
products or product candidates in development that contain Aversion® Technology
or any similar abuse deterrent technology (hereinafter the
“Non-compete”). For avoidance of doubt, the Non-compete shall apply
only to the extent that Consultant’s service, consultation or advice for any
Person directly relates to opioid anti-abuse or abuse deterrent technology,
including Acura’s Aversion Technology. For avoidance of doubt,
product candidates are as evidenced by the current written product development
plan and/or business plan of Acura at the time of termination of this Agreement
and/or described in Acura’s most recent filing on Form 8-K, Form 10-K or Form
10-Q with the Securities and Exchange Commission as of the date of the
termination of this Agreement. If any of the provisions of this
Section 2.3, or any part thereof, is hereinafter construed to be invalid or
unenforceable, the same shall not affect the remainder of such provision or
provisions, which shall be given full effect, without regard to the invalid
portions. If any of the provisions of this Section 2.3, or any part
thereof, is held to be unenforceable because of the duration of such provision,
the area covered thereby or the type of conduct restricted therein, the parties
agree that the court making such determination shall have the power to modify
the duration, geographic area and/or other terms of such provision and, as so
modified, said provision shall then be enforceable. In the
event that the courts of any one or more jurisdictions shall hold
such provisions wholly or partially unenforceable by reason of the scope thereof
or otherwise, it is the intention of the parties hereto that such determination
not bar or in any way affect Acura's right to the relief provided for herein in
the courts of any other jurisdictions as to breaches or threatened
breaches of such provisions in such other jurisdictions, the above provisions as
they relate to each jurisdiction being, for this purpose, severable into diverse
and independent covenants.
2.4 Injunctive
Relief. The Consultant acknowledges and agrees that, because
of the unique and extraordinary nature of his services, any breach or threatened
breach of the provisions of Sections 2.1, 2.2, or 2.3 hereof will cause
irreparable injury and incalculable harm to Acura, and Acura shall, accordingly,
be entitled to injunctive and other equitable relief for such breach or
threatened breach and that resort by Acura to such injunctive or other equitable
relief shall not be deemed to waive or to limit in any respect any right or
remedy which Acura may have with respect to such breach or threatened
breach.
2.5 Expenses
of Enforcement of Covenants. In the event that any action,
suit or proceeding at law or in equity is brought to enforce the covenants
contained in Section 2.1, .2 or 2.3, hereof or to obtain money damages for the
breach thereof, the party prevailing in any such action, suit or other
proceeding shall be entitled upon demand to reimbursement from the other party
for all expenses (including, without limitation, reasonable attorneys' fees and
disbursements) incurred in connection therewith.
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2.6 Non-Solicitation. The
Consultant covenants and agrees not to (and not to cause or direct any Person
to) hire or solicit for employment any employee of Acura or any of its
subsidiaries or affiliates. The prohibitions of this Section 2.6
shall apply for six (6) months following the termination of this
Agreement.
2.7 Information
of other Parties. In performing the
Services, Consultant shall not improperly use or disclose any proprietary
information or trade secrets of, any former or current employer or other person
or entity with which Consultant has an agreement or duty to keep in confidence
information acquired by Consultant. Consultant shall not bring onto
the premises of Acura any unpublished document or proprietary information
belonging to any prior or current employer, person or entity unless consented to
in writing by such employer, person or entity. Consultant shall
indemnify Acura and hold it harmless from and against all claims, liabilities,
damages and expenses, including reasonable attorney's fees and costs of suit,
arising out of or in connection with any violation or claimed violation of a
third party's rights resulting in whole or in part from Acura's use of the work
product of Consultant under this Agreement.
3. Ownership
Rights.
(a) Consultant
acknowledges and agrees that Acura will be the exclusive owner of all
deliverables created by Consultant in the performance of the Services,
including, without limitation, all data, information, products, processes and
technology. Without limiting the foregoing, all copyrightable
material, notes, records, drawings, designs, inventions, improvements,
developments, discoveries and trade secrets conceived, made or discovered by
Consultant, solely or in collaboration with others, during the term of this
Agreement as a result of Consultant's performance of the Services (collectively,
"Inventions") will be the sole property of Acura. Consultant shall
assign (or cause to be assigned) and does hereby assign fully to Acura all
Inventions and any copyrights, patents, mask work rights or other intellectual
property rights relating thereto.
(b) Consultant
shall assist Acura, or its designee, at Acura's expense, in every proper way to
secure Acura's rights in the Inventions and any copyrights, patents, mask work
rights or other intellectual property rights relating thereto in any and all
countries, including the disclosure to Acura of all pertinent information and
data with respect thereto, the execution of all applications, specifications,
oaths, assignments and all other instruments that Acura may deem necessary in
order to apply for and obtain such rights and in order to assign and convey to
Acura, its successors, assigns and nominees the sole and exclusive right, title
and interest in and to such Inventions, and any copyrights, patents, mask work
rights or other intellectual property rights relating
thereto. Consultant's obligation to execute or cause to be executed,
when it is in Consultant's power to do so, any such instrument or papers will
continue after the termination of this Agreement.
(c) If,
in the course of performing the Services, Consultant incorporates into any
Invention developed hereunder any invention, improvement, development, concept,
discovery or other proprietary information owned by Consultant or in which
Consultant has an interest, then Consultant hereby grants to Acura a
nonexclusive, royalty-free, perpetual, irrevocable, worldwide license to make,
have made, modify, use and sell such item as part of or in connection with such
Invention.
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(d) If
Acura is unable for any reason to secure Consultant's signature to apply for or
to pursue any application for any United States or foreign patents or mask work
or copyright registrations covering the Inventions assigned to Acura above, then
Consultant hereby irrevocably designates and appoints Acura and its duly
authorized officers and agents as Consultant's agent and attorney in fact, to
act for and in Consultant's behalf and stead to execute and file any such
applications and to do all other lawfully permitted acts to further the
prosecution and issuance of patents, copyright and mask work registrations
thereon with the same legal force and effect as if executed by
Consultant.
4. Conflicting
Obligations.
(a) Consultant
hereby represents that he has no agreement or obligation that conflicts with any
of the provisions of this Agreement or that preclude Consultant from complying
fully with the provisions of this Agreement. Consultant shall not
enter into any such conflicting agreement during the term of this
Agreement. Nothing in this Agreement shall preclude the Consultant
from providing consulting services to others where
there are no conflicts with the provisions of this
Agreement. Consultant warrants and represents that Consultant has
never been, is not currently, and during the term of this Agreement, will not
become an individual who has been debarred by the FDA pursuant to 21 U.S.C.
335(a) or (b) (“Debarred Individual”) from providing services in any capacity to
a person that has an approved or pending drug product application, or an
employer, employee or partner of a Debarred Individual.
5. Term and
Termination.
(a) The
term (the “Term”) of this Agreement will
commence on the Consulting Commencement Date and will continue until the earlier
of (i) the second (“2nd”)
annual anniversary of the date hereof or (ii) the termination of this Agreement
pursuant to Sections 5(b) or 5(c).
(b) Acura
may terminate this Agreement (i) for convenience, upon ninety (90) days’ prior
written notice to Consultant, or (ii) immediately and without prior notice if
Consultant is in breach of any material provision of this
Agreement.
(c) Consultant
may terminate this Agreement for convenience upon ninety (90) days’ prior
written notice to Acura, provided Consultant has performed at least forty (40)
hours of Services hereunder for Acura.
(d) Upon
termination of this Agreement, all rights and duties of the parties toward each
other shall cease except: (i) that Acura shall pay to Consultant, within 30 days
of the effective date of termination, all amounts owing to Consultant for
Services completed and accepted by Acura through the termination date, and (ii)
Section 2 (Protection of Confidential Information), Section 3 (Ownership
Rights), Section 7 (Independent Contractors and Benefits), Section 8
(Arbitration), Section 9 (Indemnification) and Section 12 (Other Provisions)
will survive the termination of this Agreement.
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6. Assignment.
Neither
this Agreement nor any right hereunder or interest herein may be assigned or
transferred by Consultant without the prior written consent of
Acura. Acura may not assign any of its rights or obligations under
this Agreement without the prior written consent of Consultant except in
connection with the sale of all or substantially all of Acura's business,
whether by means of a merger, sale of stock, sale of assets, or
otherwise.
7. Independent
Contractors and Benefits.
Consultant
will at all times perform the Services as an independent
contractor. Nothing in this Agreement will in any way be construed to
constitute the Consultant as an agent, employee or representative of
Acura. Consultant shall report as income all compensation received by
Consultant pursuant to this Agreement and shall pay all self-employment and
other taxes thereon. Effective on the Consulting Commencement Date,
Consultant will not be entitled to any Acura-sponsored benefits, including,
without limitation, paid vacation, sick leave, medical insurance, and 401(k)
participation. If Consultant is reclassified by a state or federal
agency or court as an employee of Acura, Consultant will become a reclassified
employee and will receive no benefits except those mandated by state or federal
law, even if by the terms of Acura's benefit plans in effect at the time of such
reclassification Consultant would otherwise be eligible for such
benefits.
8. Arbitration.
(a) Except
as provided in Section 8(c) below, Acura and Consultant agree that any dispute
or controversy arising out of, relating to or in connection with the
interpretation, validity, construction, performance, breach or termination of
this Agreement will be settled by binding arbitration to be held in New York,
New York, in accordance with the Commercial Arbitration Rules of the American
Arbitration Association then in effect. The arbitrator may grant
injunctions or other equitable relief in such dispute or
controversy. The decision of the arbitrator will be final, conclusive
and binding on the parties. Judgment may be entered on the
arbitrator's decision in any court of competent jurisdiction.
(b) Acura
and Consultant shall each pay one-half of the costs and expenses of such
arbitration and each party shall separately pay its counsel fees and expenses,
unless otherwise directed by the arbitrator.
(c) The
parties may apply to any court of competent jurisdiction for a temporary
restraining order, preliminary injunction, or other interim or conservatory
relief, as necessary, without breach of the above agreement to arbitrate and
without abridgment of the powers of the arbitrator.
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(d) CONSULTANT
HAS READ AND UNDERSTANDS SECTION 8, WHICH DISCUSSES
ARBITRATION. CONSULTANT UNDERSTANDS THAT BY SIGNING THIS AGREEMENT,
CONSULTANT AGREES TO SUBMIT ANY CLAIMS ARISING OUT OF, RELATING TO, OR IN
CONNECTION WITH THIS AGREEMENT, OR THE INTERPRETATION, VALIDITY, CONSTRUCTION,
PERFORMANCE, BREACH OR TERMINATION THEREOF, TO BINDING ARBITRATION, EXCEPT AS
PROVIDED IN SECTION 8(c). THIS ARBITRATION CLAUSE CONSTITUTES A
WAIVER OF CONSULTANT'S RIGHT TO A JURY TRIAL AND RELATES TO THE RESOLUTION OF
ALL DISPUTES RELATING TO THIS AGREEMENT.
9. Indemnification.
(a) Consultant
shall indemnify and hold harmless Acura and its directors, officers, and
employees from and against any and all expenses, damages, claims, suits,
actions, judgments and costs (including but not limited to attorneys' fees)
arising directly or indirectly from (i) any negligent, reckless or intentionally
wrongful act of Consultant, (ii) a determination by a court or agency that the
Consultant is not an independent contractor, or (iii) any breach by the
Consultant of any of the covenants contained in this Agreement.
(b) Except
as otherwise provided in Section 9(a), Acura shall indemnify and hold Consultant
harmless from and against any and all expenses, damages, claims, suits, actions,
judgments and costs (including but not limited to attorneys' fees) arising from
Consultant's performance of the Services. Acura's obligation to
defend and indemnify Consultant is conditioned upon Consultant (1) giving prompt
written notice to Acura of the claim, (2) allowing Acura to have sole and
exclusive control of the defense of the claim and any settlement negotiations,
including the exclusive authority to compromise any claim and make all strategy
decisions regarding all facets of the litigation or matter, and (3) at Acura's
reasonable request and expense, assisting Acura in such defense.
10. Notices.
Every
notice or other communication required or contemplated by this Agreement must be
in writing and sent by one of the following methods: (1) personal delivery, in
which case delivery will be deemed to occur the day of delivery; (2) certified
or registered mail, postage prepaid, return receipt requested, in which case
delivery will be deemed to occur the day it is officially recorded by the U.S.
Postal Service as delivered to the intended recipient; or (3) next-day delivery
to a U.S. address by recognized overnight delivery service such as Federal
Express, in which case delivery will be deemed to occur upon
receipt. In each case, a notice or other communication sent to a
party must be directed to the address for that party set forth below, or to
another address designated by that party by written notice:
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If
to Acura:
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If
to Xxxxx Xxxxx, Ph.D.:
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Xxxxx Xxxxx,
Ph.D.
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000
X. Xxxxx Xxxxx Xxxxx 000
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000
Xxxxxxxx Xxxxxx
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Xxxxxxxx,
Xxxxxxxx 00000
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Xxxxxxxxx,
XX 00000
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Attention: President
& CEO
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11. Termination
of Employment Agreement.
Consultant’s
employment and the Employment Agreement are deemed terminated by Consultant as
of the Consulting Commencement Date without Good Reason (as defined in the
Employment Agreement) and Acura agrees that Consultant shall not be in breach of
the Employment Agreement by reason of such termination. The
provisions hereof (including, without limitation, those of Section 2 hereof) are
in addition to, and not in derogation of, the surviving provisions of the
Employment Agreement. Acura and Consultant acknowledge that as of the
Consulting Commencement Date Consultant has vested (i) in seven thousand (7,000)
Commencement Date Restricted Stock Units (as defined in the Employment
Agreement) and (ii) Commencement Date Options (as defined in the Employment
Agreement) to purchase twenty-eight thousand (28,000) shares of Acura’s common
stock, par value $.01 per share. All Commencement Date Restricted
Stock Units and Commencement Date Options not vested as of the Consulting
Commencement Date are forfeited and shall terminate effective as of such
date. Commencement Date Options which vested prior to the Consulting
Commencement Date must be exercised by Consultant within twelve (12) months of
the Consulting Commencement Date, failing which the Commencement Date Options
will terminate. Consultant acknowledges that the Commencement Date
Restricted Stock Units and Commencement Date Options are subject to the terms of
their respective grant agreements (as appended to the Employment Agreement) and
the underlying plans referenced in such grant agreements.
12. Other
Provisions
This
Agreement is governed by the laws of the State of New York without giving effect
to principles of conflict of laws. This Agreement is the entire
agreement of the parties and supersedes any prior agreements between them,
whether written or oral, with respect to the subject matter
hereof. No waiver, alteration, or modification of any of the
provisions of this Agreement will be binding unless in writing and signed by
duly authorized representatives of the parties hereto. The invalidity
or unenforceability of any provision of this Agreement, or any terms thereof,
will not affect the validity of this Agreement as a whole, which shall at all
times during the term of the Agreement remain in full force and
effect.
IN
WITNESS WHEREOF, the parties hereto have executed this Agreement as of the day
and year first above written.
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By:
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/s/Xxxxxx Xxxxxxx 12/10/09
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By:
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/s/Xxxxx Xxxxx 12/8/09
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Xxxxxx
Xxxxxxx
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Xxxxx
Xxxxx, Ph.D.
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President
and Chief Executive Officer
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Consultant
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