Exhibit 10.5
CONFIDENTIALITY AND INTELLECTUAL
PROPERTY AGREEMENT
This CONFIDENTIALITY AND
INTELLECTUAL PROPERTY AGREEMENT (this “ Agreement
”) is entered into effective for all purposes as of August
24, 2004 by Mark A. Sirgo (“ Employee ”) in
favor of BioDelivery Sciences International, Inc., a Delaware
corporation (the “ Company ”). As used herein,
the term “Company” includes BioDelivery Sciences
International, Inc. and its subsidiaries, including Arius
Pharmaceuticals, Inc.
In consideration and as a condition
of Employee providing services to the Company pursuant to that
certain Employment Agreement, dated as of the date hereof, between
Employee and the Company (the “ Employment Agreement
”), Employee hereby agrees as follows:
1. Confidentiality . At all
times, Employee shall keep confidential, except as the Company may
otherwise consent to in writing, and not disclose, or make any use
of except for the benefit of the Company, at any time either during
or subsequent to performance by Employee of services for the
Company, any trade secrets, confidential information, knowledge,
data or other information of the Company relating to products,
processes, know-how, technical data, designs, formulas, test data,
customer lists, business plans, marketing plans and strategies, and
pricing strategies or other subject matter pertaining to any
business of the Company or any of its clients, customers,
consultants, licensees or affiliates (collectively, the “
Confidential Information ”), which Employee may
produce, obtain or otherwise learn of during the course of his
performance of services and after the expiration or termination of
the Employment Agreement. The “Confidential
Information” shall not include information, technical data or
know-how that is or becomes part of the public domain not as a
result of any inaction or action of the Employee. Employee shall
not deliver, reproduce, or in any way allow any such Confidential
Information to be delivered to or used by any third parties without
the specific direction or consent of a duly authorized
representative of the Company.
2. Return of Confidential
Material . Upon the expiration or termination the Employment
Agreement, Employee shall promptly surrender and deliver to the
Company all records, materials, equipment, drawings, documents, lab
notes and books and data of any nature pertaining to any Invention
(as defined below) or Confidential Information of the Company or to
the services provided by Employee, and Employee will not take or
retain (in any form or format) any description containing or
pertaining to any Confidential Information which Employee may
produce or obtain during the course of the services provided under
the Employment Agreement or otherwise.
3. Assignment of Inventions and
Moral Rights .
(a) Employee hereby assigns and
transfers to the Company, on a perpetual, worldwide and
royalty-free basis, his entire right, title and interest in and to
all Inventions. As used in this agreement, the term “
Inventions ” shall mean all ideas, improvements,
designs, discoveries, developments, drawings, notes, documents,
information and/or materials, whether or not patentable and whether
or not reduced to practice, made or conceived by Employee (whether
made solely by Employee or jointly with others) which: (i) occur or
are conceived during the period in which Employee performs services
for the Company pursuant to the Employment Agreement and (ii) which
relate in any manner to drug, nutraceuticals, genes, vaccines,
vitamin or other compound delivery technologies involving
liposomes, proteoliposomes, cochleates, buccal, transmucosal,
transdermal or oral applications and/or derivatives thereof
(“ Delivery Technologies ”), applications of the
Delivery Technologies to specific drugs, nutraceuticals, genes,
vaccines, vitamins or other compounds, or result from any task
assigned to or undertaken by Employee or any work performed by
Employee for or on behalf of the Company or any of its
affiliates.
(b) Employee hereby irrevocably
transfers and assigns to the Company any and all Moral Rights that
Employee may have in any Inventions. Employee also hereby forever
waives and agrees never to assert against the Company, its
successors or licensees any and all Moral Rights which Employee may
have in any Inventions, even after expiration or termination of the
Employment Agreement. For purposes of this Agreement, the term
“ Moral Rights” means any right to claim
authorship of a work, any right to object to any distortion or
other modification of a work, and any similar right, existing under
the law of any country in the world, or under any
treaty.
4. Disclosure of Inventions .
In connection with all Inventions contemplated by Section 3
hereof:
(a) Employee will disclose all
Inventions promptly in writing to the Chief Scientific Officer of
the Company, with a copy to the President of the Company, in order
to permit the Company to enforce and perfect the rights to which
the Company is entitled under this Agreement;
(b) Employee will, at the
Company’s request, promptly execute a written assignment of
title to the Company for any Invention, and Employee will preserve
all Inventions as Confidential Information in accordance with the
terms hereof; and
(c) Upon request, Employee will
assist the Company or its nominee (at the Company’s expense)
during and at any time during or subsequent to the performance of
services by Employee for the Company in every reasonable way in
obtaining for the Company’s own benefit patents and
copyrights for all Inventions in any and all countries, which
Inventions shall be and remain the sole and exclusive property of
the Company or its nominee, whether or not patented or copyrighted.
Employee will execute such papers and perform such lawful acts as
the Company deems to be necessary to allow the Company to exercise
all rights, title and interest in such patents and
copyrights.
5. Execution of Documents .
In connection with this Agreement, Employee will execute,
acknowledge and
