EXHIBIT 10.10
CONSULTING AGREEMENT
This Agreement is entered into this 1st day of January, 1996 by and
between INCSTAR Corporation, a Minnesota corporation having its principal place
of business at 1990 Industrial Boulevard, P.O. Box 285, Stillwater, Minnesota
55082 (the "Company"), and Michael Steffes, M.D., Ph.D., an individual residing
at 1583 Fulham Street, St. Paul, Minnesota 55108 ("Consultant").
Recitals
A. Consultant has been involved in the field of immunodiagnostic
technology and has substantial technical and business knowledge of the
development, manufacturing and marketing of immunodiagnostic products.
B. The Company values the knowledge and expertise of Consultant and
desires to obtain consulting services from Consultant on the terms and
conditions set forth in this Agreement.
NOW, THEREFORE, the Company and Consultant agree as follows:
1. Retention of Consultant; Services to be Performed. The Company
hereby retains Consultant for the term of this Agreement to perform consulting
services in the field of immunodiagnostic products (the "Field"), including
attendance at meetings of the Company's Scientific Advisory Panels, and general
consulting services relating to such field and such other consulting services
as the parties may agree.
2. Compensation. For Consultant's services hereunder, the Company shall
pay to Consultant a fee of $12,000 per year. The Company shall pay such fee in
equal quarterly amounts on the first day of the applicable quarter. Consultant
shall be responsible for the payment of all federal, state or local taxes
payable with respect to all amounts paid to Consultant under this Agreement.
3. Expenses. The Company shall reimburse Consultant for all reasonable
travel and other out-of-pocket expenses incurred by Consultant in rendering
consulting services hereunder; provided that the Company has approved such
expenses in advance. The Company shall pay such reimbursement within 30 days
after receipt of appropriate receipts or documentation of the expenses.
4. Ownership and Assignment of Inventions.
a. Notification of Inventions. Consultant shall promptly notify
the Company in writing of the existence and nature of, and shall promptly and
fully disclose to the Company, any and all ideas, designs, practices,
processes, apparatus, improvements and inventions, whether or not they are
believed to be patentable, which Consultant has conceived or first actually
reduced to practice and/or may conceive or first actually reduce to practice
during the term of this Agreement or which Consultant may conceive or reduce
to practice within six (6) months after termination of this agreement, if such
inventions relate to a product or process upon which Consultant worked during
the term of his consulting arrangement with the Company ("Inventions").
b. Assignment to Company. Consultant agrees to assign, and hereby
does assign, to the Company, all right, title and interest in and to all such
Inventions. At the request of the Company, Consultant shall execute all
papers, including patent applications, assignments of inventions, patents and
copyrights, and other instruments that the Company shall deem necessary or
convenient in order to perfect the Company's rights in the Inventions.
c. Limitation. Section 4(b) shall not apply to any invention
meeting the following conditions:
(1) such invention was developed entirely on Consultant's own time;
(2) such invention was made without the use of any of the equipment,
supplies, facility or trade secret information of the Company;
(3) such invention does not relate (i) directly to the business of
the Company, or (ii) to the Company's actual or demonstrably
anticipated research or development; and
(4) such invention does not result from any work performed by
Consultant for the Company.
d. Copyrights. All right, title, and interest in all copyrightable
material which Consultant shall conceive or originate, either individually or
jointly with others, and which arise out of the performance of this Agreement,
will be the property of the Company and are by this Agreement assigned to the
Company along with ownership of any and all copyrights in the copyrightable
material. Consultant agrees to execute all papers and perform all other acts
necessary to assist the Company to obtain and register copyrights on such
materials in any and all countries. Where applicable, works of authorship
created by Consultant for the Company in performing his responsibilities under
this Agreement shall be considered "works made for hire" as defined in the U.S.
Copyright Act.
e. Know-How. All know-how and trade secret information conceived
or originated by Consultant which arises out of the performance of his
obligations or responsibilities under this Agreement or any related material or
information shall be the property of the Company, and all rights therein are by
this Agreement assigned to the Company.
5. Confidential Information.
a. Confidentiality Obligation. Except as permitted by the Company
in writing, during the term of this Agreement or for a period of three (3)
years thereafter, Consultant shall not divulge, furnish or make accessible to
anyone or use in any way (other than in the consultancy for the Company) any
confidential or secret knowledge or information of the Company which Consultant
has acquired from the Company concerning trade secrets, confidential or secret
designs, processes, formulae, plans, devices or material (whether or not
patented or patentable) directly or indirectly useful in any aspect of the
business of the Company, any confidential or secret development or research
work of the Company, or any other confidential information or secret aspects of
the business of the Company. The foregoing obligation of confidentiality,
however shall not apply to any knowledge or information which is now part of
the public domain, which subsequently becomes generally publicly known other
than as a direct or indirect result of the breach of this Agreement by
Consultant, the knowledge or information was known to Consultant prior to
disclosure by Company or the knowledge or information is obtained from a third
party having the right to make such disclosure.
b. Irreparable Harm. Consultant acknowledges that the above-
described confidential or secret knowledge or information constitutes a unique
and valuable asset to the Company and represents a substantial investment of
time and expense by the Company, and that any disclosure or other use of such
knowledge or information other than for the sole benefit of the Company would
be wrongful and would cause irreparable harm to the Company.
6. Relationship to an Academic Institution. The Company acknowledges
that Consultant is a member of the faculty of the University of Minnesota (the
"University"), and is subject to certain agreements and policies of the
University. Consultant represents that he is not a party to any existing
agreement with the University that would prevent him from performing any of the
consulting services for the Company contemplated in this Agreement. Consultant
represents that he will ensure that any services he performs outside of the
University are not in conflict with any University policy or agreement.
7. Competing Activities. Consultant represents to the Company that (a)
Consultant has disclosed to the Company any and all other obligations,
arrangements, agreements or interests of Consultant that may constitute or give
rise to a conflict of interest on the part of Consultant given the nature and
terms of this Agreement and (b) Consultant is not now under any obligation of a
contractual or other nature to any person, firm, corporation or other entity
which is inconsistent or in conflict with this Agreement, or which would
prevent, limit or impair the execution of this Agreement or the performance by
Consultant of Consultant's obligations hereunder. Consultant further agrees
that he will not, during the term of this Agreement and for six (6) months
thereafter, provide to any other business or entity any services relating to
the research, development, production, marketing or sale of any product in the
Field that is similar to or competitive with any in vitro immunodiagnostic
product researched, developed, produced, marketed or sold by the Company during
the term of this Agreement.
8. Term and Termination. Unless terminated as provided herein, this
Agreement shall continue until the one (1) year anniversary of the date set
forth above, and shall be renewed automatically for one (1) year terms
thereafter, unless either party notifies the other party at least sixty (60)
days prior to the renewal date. This Agreement shall be terminated earlier (a)
in the event of the death or serious disability of Consultant or (b) upon
thirty (30) days written notice by either party. If this Agreement is
terminated prior to the expiration of the term hereof, Consultant shall be
entitled to receive the quarterly consulting fee through the date of
termination, pro rated as of the date of termination. Sections 4 and 5 shall
survive termination of this Agreement.
9. Miscellaneous.
a. Assignment. Consultant may not assign any right nor delegate
any obligation under this Agreement without the prior written consent of the
Company. Any such attempted assignment or delegation without proper consent
shall be void.
b. Governing Law. This Agreement shall be construed and enforced
in accordance with the laws of the State of Minnesota, excluding its choice of
law rules.
c. Entire Understanding; Binding Agreement. This Agreement
constitutes the final and complete agreement between the Company and Consultant
with respect to the subject matter hereof, superseding any previous oral or
written communication, representation, understanding or agreement with the
Company or any officer or representative of the Company. This Agreement shall
inure to the benefit of and shall be binding upon the Company and its
successors and assigns and upon Consultant and his executors, administrator or
representatives. No modification of this Agreement shall be valid unless made
in writing and signed by the parties hereto.
d. Notices. Any notice required or permitted to be given hereunder
shall be in writing and shall be deemed effective upon the personal delivery
thereof, if mailed, forty-eight (48) hours after having been deposited in the
United States mails, postage prepaid, and addressed to the party to whom it is
directed at the address set forth above (or such other address provided in
writing to the other party).
e. Injunctive Relief. Consultant acknowledges that it would be
difficult to fully compensate the Company for damages resulting from any breach
by Consultant of the provisions of Section 4 or 5 of this Agreement.
Accordingly, in the event of any actual or threatened breach of such
provisions, the Company shall (in addition to any other remedies that it may
have) be entitled to temporary and/or permanent injunctive relief to enforce
such provisions, and such relief may be granted without the necessity of
proving actual damages.
f. Status of Consultant. Consultant is an independent contractor
and not an employee of the Company. Consultant has no authority to obligate
the Company by contract or otherwise. Consultant shall not be entitled to any
employee benefits that the Company provides to its employees. Consultant shall
be free to exercise discretion and independent judgment as to the method and
means of performance of the services to be provided pursuant to this Agreement.
IN WITNESS WHEREOF, the Company and Consultant have executed this
Agreement as of the date set forth in the first paragraph.
INCSTAR CORPORATION
By /s/John Booth___________
/s/Michael Steffes_________
Michael Steffes, M.D., Ph.D.