EXHIBIT 10.11
CONSULTING AGREEMENT
This Agreement is made as of June 1, 2005 (the "Effective Date"), between
Electro-Optical Sciences, Inc, a Delaware corporation (the "COMPANY") and Xxxxxx
Xxxxxx Consulting LLC (the "CONSULTANT").
The Consultant and the Company are parties to a certain Consulting Agreement
dated as of March 17, 2005 (the "Prior Agreement.") Services rendered by the
Consultant thereunder have primarily related to facilitation of the
restructuring of the Company so as to enable it to make appropriate arrangements
for the completion of developmental engineering of its MelaFind device. The
arrangements have been effectuated with an appropriate third party, and the
internal restructuring is now sufficiently along, so as to enable the parties to
the Prior Agreement to revise their relationship so as to provide for the
provision of services of an anticipated longer duration period. Accordingly, the
parties agree as follows:
1. Services. The Field of Interest for consulting hereunder is the continued
direction of the Company's MelaFind product development effort and the
implementation of the manufacturing process once production of clinical trial
prototypes becomes feasible.
The Consultant will make himself available in person at the Company's offices or
other locations as agreed upon during the term of this Agreement, as reasonably
requested by the Company
2. Consideration. In consideration for the services provided by Consultant
under the terms of this Agreement, Consultant shall be compensated as set forth
below.
2.1 The Company will pay the Consultant an amount of one hundred fifty
thousand dollars ($150,000.00), payable ratably over the course of the project
at such intervals as Consultant and the Company may agree upon. This amount is
considered to approximate the aggregate amount achieved by adding together $2000
for each full day to be spent on the project by Consultant. As a bonus,
Consultant will be granted 50,000 non-qualified stock options to purchase
Company's common stock at its then fair market value immediately after the
effective date of an Initial Public Offering on Registration Statement Form S-1.
The fair market value shall be deemed to be the price at which the Initial
Public Offering became effective.
2.2 The parties shall assess the progress of the project at a point
approximately halfway through the anticipated term. Provided that the
anticipated delivery date for the first twenty-five (25) MelaFind clinical trial
prototypes meeting the then-established Company specifications for such clinical
trial prototypes is still during the first quarter of calendar year 2006,
Consultant shall become entitled to an adjustment of the amount
paid, if necessary, so that the revised amount equals $2,000 per day for each
full day actually spent and to be spent on the project by Consultant.
2.3 Reasonable expenses of the Consultant incurred at the request of the
Company (including travel expenses incurred in connection with Company-related
business) will be reimbursed promptly by the Company, subject to customary
verification, in accordance with the Company's standard expense reimbursement
and travel policy.
3. Term. The term of this Agreement will begin on the Effective Date of this
Agreement and will end three months following the initiation of the pivotal
clinical trial for MelaFind. The parties anticipate that the pivotal clinical
trial will commence in the first quarter of 2006. The parties will negotiate
over an appropriate extension of the term of this agreement starting
approximately 30 days before the anticipated end of the term.
4. Certain Other Contracts.
4.1 The Consultant will not disclose to the Company any information that
the Consultant is obligated to keep secret pursuant to an existing
confidentiality agreement with a third party, and nothing in this Agreement will
impose any obligation on the Consultant to the contrary.
4.2 The consulting work performed hereunder will not be conducted on
time that is required to be devoted to any other third party. The Consultant
shall not use the funding, resources and facilities of any other third party to
perform consulting work hereunder and shall not perform the consulting work
hereunder in any manner that would give any third party rights to the product of
such work.
4.3 The Consultant has disclosed and, during the Term, will disclose to
the Chief Executive Officer of the Company any conflicts between this Agreement
and any other agreements binding the Consultant.
5. Exclusive Services during the Term. The Consultant agrees that during the
Term of this Agreement he will not, exclusive of any research obligations to any
third party, directly or indirectly (i) provide any services to any other
business or commercial entity in the Field of Interest, (ii) participate in the
formation of any business or commercial entity in the Field of Interest or (iii)
solicit or hire away any employee or consultant of the Company. Consultant shall
disclose on Exhibit A attached hereto all other consulting agreements in the
Field of Interest to which Consultant is currently a party.
6. Direction of Projects and Inventions to the Company. Subject to the
Consultant's obligations and confidentiality obligations to third parties,
during the Term of this Agreement, the Consultant will use his best efforts to
disclose to the Chief Executive Officer of the Company, on a confidential basis,
technology and product opportunities which come to the attention of the
Consultant in the Field of Interest, and any invention, improvement, discovery,
process, formula or method or other intellectual property
relating to or useful in, the Field of Interest (collectively "New
Discoveries"), whether or not patentable or copyrightable, to the extent the New
Discoveries do not arise from any research undertaken by the Consultant as an
employee of any third party.
7. Inventions Discovered by the Consultant While Performing Services
Hereunder.
7.1 The Consultant will promptly and fully disclose to the Chief
Executive Officer of the Company any invention, improvement, discovery, process,
formula, technique, method, trade xxxx, trade secret, mask work, or other
intellectual property, whether or not patentable, whether or not copyrightable
(collectively, "Invention") made, conceived, developed, or first reduced to
practice by the Consultant, either alone or jointly with others, while
performing services hereunder. All such Inventions are work made for hire to the
extent allowed by law and, in addition, Consultant hereby assigns to the Company
all of his right, title and interest in and to any such Inventions. The
Consultant will execute any documents necessary to perfect the assignment of
such Inventions to the Company and to enable the Company to apply for, obtain,
and enforce patents or copyrights in any and all countries on such Inventions.
The Consultant hereby irrevocably designates the Secretary of the Company as his
agent and attorney-in-fact to execute and file any such document and to do all
lawful acts necessary to apply for and obtain patents and copyrights, and to
enforce the Company's rights under this paragraph. This Section 7 will survive
the termination of this Agreement.
7.2 If any part of the Invention is based on, incorporates, or is an
improvement or derivative of, or cannot be reasonably and fully made, used,
reproduced, distributed and otherwise practiced or exploited without using,
infringing or violating technology or intellectual property rights owned or
licensed by Consultant and not assigned hereunder, Consultant hereby grants
Company a perpetual, irrevocable, worldwide royalty-free, non-exclusive, right
and license, with right to sublicense, to exploit and exercise all such
technology and intellectual property rights in support of Company's exercise or
exploitation of the Inventions, other work performed hereunder, or any assigned
rights (including any modifications, improvements and derivatives of any of
them).
8. Confidentiality.
8.1 The Consultant acknowledges that, during the course of performing
his services hereunder, the Company will be disclosing information to the
Consultant, and the Consultant will be developing information related to the
Field of Interest, Inventions, projects, products, potential customers,
personnel, business plans, and finances, as well as other commercially valuable
information (collectively "Confidential Information"). The Consultant
acknowledges that the Company's business is extremely competitive, dependent in
part upon the maintenance of secrecy, and that any disclosure of the
Confidential Information would result in serious harm to the Company.
8.2 The Consultant agrees that the Confidential Information will be used
by the Consultant only in connection with consulting activities hereunder, and
will not be used in any way that is detrimental to the Company.
8.3 The Consultant agrees not to disclose, directly or indirectly, the
Confidential Information to any third person or entity, other than
representatives or agents of the Company. The Consultant will treat all such
information as confidential and proprietary property of the Company.
8.4 The term "Confidential Information" does not include information
that was: (i) publicly known and made generally available in the public domain
prior to the time of disclosure by the disclosing party; (ii) becomes publicly
known and made generally available after disclosure by the disclosing party to
the receiving party through no action or inaction of the receiving party; (iii)
is already in the possession of the receiving party at the time of disclosure by
the disclosing party as shown by the receiving party's files and records
immediately prior to the time of disclosure; (iv) is obtained by the receiving
party from a third party without a breach of such third party's obligations of
confidentiality; and (v) is independently developed by the receiving party
without use of or reference to the disclosing party's Confidential Information,
as shown by documents and other competent evidence in the receiving party's
possession.
8.5 The Consultant may disclose any Confidential Information that is
required to be disclosed by law, government regulation or court order. If
disclosure is required, the Consultant will give the Company advance notice so
that the Company may seek a protective order or take other action reasonable in
light of the circumstances.
8.6 Upon termination of this Agreement, the Consultant will promptly
return to the Company all materials containing Confidential Information as well
as data, records, reports and other property, furnished by the Company to the
Consultant or produced by the Consultant in connection with services rendered
hereunder, together with all copies of any of the foregoing. Notwithstanding
such return, the Consultant shall continue to be bound by the terms of the
confidentiality provisions contained in this Section 8 for a period of three
years after the termination of this Agreement.
9. Use of Name. It is understood that the name of the Consultant and
Consultant's affiliation with any third party will appear in disclosure
documents required by securities laws, and in other regulatory and
administrative filings in the ordinary course of the Company's business. The
above-described uses will be deemed to be noncommercial uses. The name of the
Consultant or any third party will not be used for any commercial purpose
without the Consultant's consent.
10. No Conflict: Valid and Binding. The Consultant represents that neither the
execution of this Agreement nor the performance of the Consultant's obligations
under this Agreement (as modified to the extent required by Section 4) will
result in a violation or breach of any other agreement by which the Consultant
is bound. The Company represents that this Agreement has been duly authorized
and executed and is a valid and legally binding obligation of the Company,
subject to no conflicting agreements.
11. Notices. Any notice provided under this Agreement shall be in writing and
shall be deemed to have been effectively given (i) upon receipt when delivered
personally, (ii) one day after sending when sent by private express mail service
(such as Federal Express), or (iii) 5 days after sending when sent by regular
mail to the following address:
In the case of the Company:
Electro-Optical Sciences, Inc
Xxx Xxxxxx Xxxxxx, Xxxxx 00
Xxxxxxxxx, XX 00000
In the case of the Consultant:
Name: Xxxxxx Xxxxxx Consulting LLC
Address: 000 Xxxxx 0X
Xxxxx Xxxxxxxxx, XX 00000
SSN: 02-0662378
or to other such address as may have been designated by the Company or the
Consultant by notice to the other given as provided herein.
12. Independent Contractor: Withholding. The Consultant will at all times be
an independent contractor, and as such will not have authority to bind the
Company. Consultant will not act as an agent nor shall he be deemed to be an
employee of the Company for the purposes of any employee benefit program,
unemployment benefits, or otherwise. The Consultant recognizes that no amount
will be withheld from his compensation for payment of any federal, state, or
local taxes and that the Consultant has sole responsibility to pay such taxes,
if any, and file such returns as shall be required by applicable laws and
regulations. Consultant shall not enter into any agreements or incur any
obligations on behalf of the Company.
13. Assignment. Due to the personal nature of the services to be rendered by
the Consultant, the Consultant may not assign this Agreement. The Company may
assign all rights and liabilities under this Agreement to a subsidiary or an
affiliate or to a successor to all or a substantial part of its business and
assets without the consent of the Consultant. Subject to the foregoing, this
Agreement will inure to the benefit of and be binding upon each of the heirs,
assigns and successors of the respective parties.
14. Severability. If any provision of this Agreement shall be declared
invalid, illegal or unenforceable, such provision shall be severed and the
remaining provisions shall continue in full force and effect.
15. Remedies. The Consultant acknowledges that the Company would have no
adequate remedy at law to enforce Sections 5, 7 and 8 hereof. In the event of a
violation by the Consultant of such Sections, the Company shall have the right
to obtain injunctive
or other similar relief, as well as any other relevant damages, without the
requirement of posting bond or other similar measures.
16. Governing Law; Entire Agreement; Amendment. This Agreement shall be
governed by the laws of the State of New York applicable to agreements made and
to be performed within such State, represents the entire understanding of the
parties. It supersedes the Prior Agreement except with respect to matters
(payment for subsequent invoices, confidentiality, and the like) which by their
nature should survive the termination of that agreement. It may only be amended
in writing.
IN WITNESS WHEREOF, this Agreement may be executed in counterparts, each of
which shall constitute an original and all of which together shall constitute
one instrument, effective as of the date first above written.
Electro-Optical Sciences, Inc: Consultant: Xxxxxx Xxxxxx
By: /s/ Xxxxxxx X. Xxxxxxx Signature: /s/ Xxxxxx Xxxxxx
Its: Vice President
EXHIBIT A
OTHER RELATIONSHIPS
NONE
