EXHIBIT 10.9
CONSULTING SERVICES AGREEMENT
November 16, 1995
TRIANGLE PHARMACEUTICALS, INC.
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
The following confirms the agreement between ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, 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 "▇▇▇▇"). This Exhibit has been
filed separately with the Secretary of the Commission without the ▇▇▇▇
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 Three Thousand Dollars ($3,000). 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 October 28,
1994, between Consultant and Vestar, Inc. (the predecessor of NeXstar) 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 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 ninety (90) days after the expiration of the thirty (30) day period, to enter
into such agreements
4
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. Consultant shall also use his best efforts to
provide the Company the right of first refusal set forth above prior to any
academic or other institution at which Consultant may be conducting research
entering into any agreement with a third party to fund research in the
laboratory of Consultant or grant rights to resulting inventions or proprietary
rights. 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.
5
m. Except for services Consultant may continue to render to the
Institute (as defined in Section 3(p) below) and/or Vestar, Inc. (the
predecessor of NeXstar), 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 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. In the event Consultant's
consulting agreement with Vestar, Inc. (the predecessor of NeXstar) is
terminated as a result of Consultant's agreement to serve as a consultant to the
Company, the Company shall reimburse Consultant the sum of $25,000 (which
payment shall be in addition to any payments owing to Consultant pursuant to
paragraph 3.d above). Such payment shall be due on or before five (5) business
days after the Funding Date (as defined in paragraph 3.d. above).
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
6
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.
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.
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Building 1000, Suite 1005
▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
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b. TO CONSULTANT:
▇▇▇▇ ▇▇▇▇▇▇▇▇▇, M.D.
Department of Medicine (0676)
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
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/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
------------------------
(Signature)
------------------------
(Print Name)
Accepted and Agreed to:
TRIANGLE PHARMACEUTICALS, INC.,
a Delaware corporation
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
--------------------------
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
B-1
UNIVERSITY OF CALIFORNIA 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 through 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 for permissible consulting activities 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 conceptions 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 those
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 of
development to develop that invention will be conducted
involving University support of 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 taxes or
reimbursements as may be necessary or required by law.
When there are two or more inventors, each inventor shall share
equality 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 shared 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 persecution 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
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.
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Building 1000, Suite 1005
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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
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X See below
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X Additional sheets attached
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/s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
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Consultant
D-1
October 9, 1995
LIST OF ALL EXISTING INVENTIONS OF ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
1. Lipid derivatives of dideoxynucleosides and other antiviral
nucleosides for liposomal incorporation and method of use; ▇▇▇▇▇▇▇▇▇,
Stuhmiller and Kumar, U.S. Patent 5,223,263, issued 6/29/93. NeXstar.
2. Antiviral liponucleoside; treatment of hepatitis B; ▇▇▇▇▇▇▇▇▇, USSN
07/730,273. NeXstar.
3. Lipid derivatives of phosphonoacids for liposomal incorporation and
method of use; Hostetler, Kumar, U.S. Patent 5,194,654, issued 3/16/93.
NeXstar.
4. Lipid derivatives of phosphonoacids. Hostetler, Kumar, USSN
07/993/133 allowed. NeXstar.
5. Method of converting a drug to an orally available form by
covalently bonding a lipid to the drug, Hostetler, Kumar, U.S. Patent
5,411,947, issue date 5/5/95. NeXstar.
6. Stynthesis of glycerol di- and triphosphate derivatives, van den
Bosch, van Wijk, Hostetler, Kumar, USSN 07/706,873. NeXstar.
7. Lipid conjugates of therapeutic peptides and protease inhibitors,
Basava, Hostetler, USSN 07/734-434. NeXstar.
8. Stynthetic calcitonin peptides, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇; U.S. Patent
5,175,146, issued 12/29/92. Vical.
9. Synthetic calcitonin peptides, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇; U.S. Patent
5,364,840, issued 11/15/94; Vical.
10. Improved antiviral prodrugs, Hostetler, Kini, USSN 08/340,161,
UCSD/NeXstar (right of first information).
[*]
12. Various foreign filings of the above.
* CONFIDENTIAL TREATMENT REQUESTED
TRIANGLE PHARMACEUTICALS, INC.
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Building 1000, Suite ▇▇▇▇
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November 16, 1995
▇▇▇▇ ▇▇▇▇▇▇▇▇▇, M.D. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, M.D.
Department of Medicine (0676) Department of Medicine
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Re: TERMINATION RIGHTS
Dear ▇▇▇▇ and ▇▇▇▇▇▇:
This letter will confirm our agreement regarding each of your rights to
terminate your respective Consulting Services Agreement with Triangle
Pharmaceuticals, Inc. (the "Company") dated as of the date hereof. We have
agreed that each of you will be entitled to terminate your respective
Consulting Services Agreement only in the event you are permitted to, and you
do in fact, terminate the License Agreement among the Company and both of you
dated as of the date hereof, pursuant to the provisions of Section 11.2(b) of
the License Agreement.
Very truly yours,
TRIANGLE PHARMACEUTICALS, INC.
By: ▇▇▇▇▇ ▇. ▇▇▇▇▇
____________________________________
Its: Chairman and Chief Executive Officer
___________________________________
AGREED and ACCEPTED this AGREED and ACCEPTED this
____ day of November, 1995: ____ day of November, 1995:
___________________________ ___________________________
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TRIANGLE PHARMACEUTICALS, INC.
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Building 1000, Suite ▇▇▇▇
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November 16, 1995
▇▇▇▇ ▇▇▇▇▇▇▇▇▇, M.D. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, M.D.
Department of Medicine (0676) Department of Medicine
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇. 305 ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Re: TERMINATION RIGHTS
Dear ▇▇▇▇ and ▇▇▇▇▇▇:
This letter will confirm our agreement regarding each of your rights to
terminate your respective Consulting Services Agreement with Triangle
Pharmaceuticals, Inc. (the "Company") dated as of the date hereof. We have
agreed that each of you will be entitled to terminate your respective
Consulting Services Agreement only in the event you are permitted to, and you
do in fact, terminate the License Agreement among the Company and both of you
dated as of the date hereof, pursuant to the provisions of Section 11.2(b) of
the License Agreement.
Very truly yours,
TRIANGLE PHARMACEUTICALS, INC.
By:
____________________________________
Its:
___________________________________
AGREED and ACCEPTED this AGREED and ACCEPTED this
16 day of November, 1995: day of November, 1995:
/s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
___________________________ ___________________________
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TRIANGLE PHARMACEUTICALS, INC.
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Building 1000, Suite ▇▇▇▇
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November 16, 1995
▇▇▇▇ ▇▇▇▇▇▇▇▇▇, M.D. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, M.D.
Department of Medicine (0676) Department of Medicine
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇. 305 ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Re: TERMINATION RIGHTS
Dear ▇▇▇▇ and ▇▇▇▇▇▇:
This letter will confirm our agreement regarding each of your rights to
terminate your respective Consulting Services Agreement with Triangle
Pharmaceuticals, Inc. (the "Company") dated as of the date hereof. We have
agreed that each of you will be entitled to terminate your respective
Consulting Services Agreement only in the event you are permitted to, and you
do in fact, terminate the License Agreement among the Company and both of you
dated as of the date hereof, pursuant to the provisions of Section 11.2(b) of
the License Agreement.
Very truly yours,
TRIANGLE PHARMACEUTICALS, INC.
By:
____________________________________
Its:
___________________________________
AGREED and ACCEPTED this AGREED and ACCEPTED this
____ day of November, 1995: 16 day of November, 1995:
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
___________________________ ___________________________
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