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CONSULTING
AGREEMENT
THIS CONSULTING AGREEMENT (this
“Agreement”) is made and entered into effective as
of July 19, 2007 (the “Effective Date”), by and
between Medical Imaging Informatics (MI 2 ), a
Corporation chartered under the laws of the State of California
located at 4676 Admiralty Way, Suite 601, Marina Del Rey,
California 90292 (“”MI 2 ” or the
"Consultant"), and Guardian Technologies International, Inc., a
Delaware corporation located at 516 Herndon Parkway, Herndon,
Virginia, 20170 (the "Company").
WITNESSETH:
WHEREAS , the Company desires to engage
the Consultant to provide certain medical imaging technology and
related consulting services and the Consultant desires to
provide such services to the Company; and
WHEREAS , the Company and the Consultant
intend that this Agreement and the services to be performed
under the Agreement shall be a “written compensation
contract” within the meaning of Rule 405 under the
Securities Act of 1933, as amended (the “Securities
Act”), pursuant to which the Company will issue shares of
its common stock, $.001 par value per share (the “Common
Stock”), as partial compensation for services rendered by
the Consultant to the Company; and
WHEREAS , the shares to be issued as
compensation under this Agreement shall be issued to a
“natural person” within the meaning of Rule 405
under the Securities Act, namely, Dr. H.K. (Bernie) Huang, the
Acting Director of the Consultant, pursuant to a registration
statement on Form S-8 to be filed by the Company with the
Securities and Exchange Commission (“SEC”).
NOW, THEREFORE , in consideration of the
mutual covenants contained herein and other good and valuable
consideration, the receipt and sufficiency of which is hereby
acknowledged, the Company and the Consultant agree as
follows:
1.
ENGAGEMENT. The Company hereby
engages the Consultant to provide consulting services to the
Company and the Consultant hereby accepts such engagement,
subject to the terms of this Agreement.
2.
DESCRIPTION OF SERVICES.
During the Term (as hereinafter defined), the
Consultant agrees to perform certain medical imaging consulting
services (“Services”) as part of the product
definition and implementation project (“3i-Med”),
all as more particularly set forth in Exhibit A, Medical
Imaging Consulting Project and Services ; provided that all
the Services shall be performed under the direction of the
Company. 3i-Med shall be completed and the Services shall
be provided in two phases, Phase I and Phase II, as described in
Exhibit A . The Services shall be performed
by Consultant’s employee, H.K. (Bernie) Huang, D.Sc., FRCR
(Hon.), Professor of Radiology and Biomedical Engineering
(“Dr. Huang”), and/or such other individuals as Dr.
Huang shall designate and direct.
3.
COMPENSATION. The Company
shall pay or provide to the Consultant the following
compensation:
(a)
upon execution of this Agreement, the Company
shall pay to the Consultant $10,000 in cash; and
(b)
the Company shall issue to Dr. Huang shares of
Common Stock pursuant to and subject to the effectiveness of a
Registration Statement on Form S-8 to be filed by the Company
following the execution hereof registering such shares of Common
Stock under the Securities Act; and;
(c)
on July 19, 2007, unless this Agreement is
earlier terminated as provided herein, the Company shall issue
to Dr. Huang 39,604 shares of Common stock; provided that Dr.
Huang understands and agrees that the issuance of such shares of
Common Stock shall be pursuant to and shall be subject to the
effectiveness of a Registration Statement on Form S-8 to be
filed by the Company following the execution hereof registering
such shares of Common Stock under the Securities Act; and;
(d)
on January 19, 2007, unless this Agreement is
earlier terminated as provided herein, the Company shall pay to
the Consultant $50,000 in cash.
4.
EXPENSES. The Consultant shall be
responsible for all of its business expenses incurred in
connection with the performance of the Services under this
Agreement; provided, however, that the Company shall reimburse
the Consultant for all reasonable out-of-pocket expenses that
are requested or approved in advance by the Company, in
particular, travel. Any of the Consultant’s expenses
pre-approved in writing by the Company shall be paid with thirty
(30) calendar days of receipt by the Company of a proper invoice
for same accompanied by original receipts for all expenses so
invoiced and referencing the Company’s appropriate
purchase order number.
5.
INTELLECTUAL PROPERTY.
(a)
The Consultant and the Company understand and
acknowledge that the Company will provide the Consultant with
access to proprietary and valuable information that the
Consultant might otherwise not receive or have access to.
The Consultant understands and agrees that the Company is
providing access to such proprietary and valuable information
for the sole purpose of enabling the Consultant to perform the
Services hereunder and for no other purpose and that the Company
is not thereby granting to the Consultant any right, title or
interest therein. In addition, the Consultant and the
Company understand and agree that, if the Consultant or any
agent or employee of the Consultant, in the course of providing
the Services, invents or participates in inventing any
modification or improvement to the Company’s technology,
the Company reasonably seeks to secure such modification or
improvement for its own use and practice. The rights of the
parties with respect to Intellectual Property utilized and/or
developed in the performance of this Agreement shall be
determined solely in accordance with this section.
(b)
For purposes hereof, “Intellectual
Property” shall mean intangibles such as information,
inventions, modifications, improvements, adaptations, derivative
works, discoveries, works of authorship, designs, communications
or data including, but not limited to, patent applications,
business information, marketing plans, technical or financial
information, customer lists or proposals, sketches, models,
samples, computer programs and documentation, drawings,
specifications, or other intellectual property rights whether
conveyed in oral, written, graphic or
electromagnetic form or otherwise and the Intellectual Property
Rights (as hereinafter defined) therein. For purposes
hereof, “Intellectual Property Right(s)” shall mean
all of the worldwide legal rights for the Intellectual Property
based on statute or common law and includes, by way of example,
patents, copyrights, trademarks, service marks, trade secrets or
other intellectual property rights.
(c)
Background Intellectual Property.
(i) “Background Intellectual
Property” (hereinafter, “BIP”) means property
and the legal rights therein owned or controlled by any party to
this Agreement that (A) are required in order to develop and/or
use Project Intellectual Property as specified in Section 5(d),
and (B) were or are created, developed, or reduced to practice
outside the scope of this Agreement.
(ii) Company BIP is limited to BIP that was or
is created, developed or reduced to practice by or under the
Company; and Consultant BIP is limited to BIP that was created,
developed or reduced to practice prior to any contact or
discussions with the Company, all as more particularly set forth
in the following Exhibits to this Agreement:
Exhibit B : Identification of Company
BIP
Exhibit C : Identification of Consultant
BIP
(iii)
Notwithstanding anything in this Agreement to
the contrary, the parties understand and agree that any rights
to Company BIP not expressly granted to the Consultant by the
Company herein are retained by the Company, and that any rights
to Consultant BIP not expressly granted to the Company by the
Consultant herein are retained by the Consultant.
(d)
Project Intellectual Property.
Project Intellectual Property (hereafter,
”PIP”) shall mean property and the legal rights
therein that the Consultant and/or the Company first create,
develop or reduce to practice during the Term of this Agreement,
including inventions, modifications, improvements, adaptations,
derivative works, discoveries, tangible property, software,
materials, mask works, methods, techniques, formulae, data,
copyrighted works and processes and Intellectual Property Rights
therein.
(e)
Ownership of PIP.
Each party to this Agreement agrees that:
(i)
Company PIP . The following PIP
created, developed or reduced to practice during the Term or
thereafter shall be owned by the Company (“Company
PIP”) and the Consultant and/or its agents or employees
shall have no ownership interest therein:
(A) Any PIP created, developed or reduced to
practice solely by Company personnel shall be owned by the
Company.
(B) Any PIP created, developed or reduced to
practice solely by Consultant personnel using the
Consultant’s resources such as facilities, equipment,
funds, or funds under the control of or administered by the
Consultant as a result of the Consultant’s collaboration
with the Company and/or this Agreement even if such PIP was
based solely on publicly available information related to the
Company’s technology and/or discussions, or communications
of any kind with the Company shall be owned by the Company.
(C) PIP created, developed or reduced to
practice by Consultant personnel using the Consultant’s
resources such as facilities and/or equipment under the control
of or administered by the Consultant but paid for by the Company
as a result of the Consultant’s work with the Company
shall be owned by the Company.
Moreover, in the case of subsections (B) and (C)
above, the Consultant hereby irrevocably transfers, conveys and
assigns to the Company all of its right, title and interest in
and to such Company PIP; provided further that the Consultant
shall cooperate with the Company to the fullest extent necessary
to permit the Company to prosecute any patent or other
application with regard to Company PIP and in connection
therewith shall, at the written request of the Company or its
counsel, execute any and all agreements or other documents of
assignment to transfer, convey and/or assign to the Company its
right, title and interest in and to such Company PIP as the
Company may reasonably request.
(ii)
Jointly-Owned PIP .
Notwithstanding subsection (i) above, any PIP
jointly created, developed or reduced to practice by the Company
and the Consultant shall be jointly-owned by the Company and the
Consultant provided that the Company, in its sole discretion,
has expressly agreed thereto in writing; provided further that
the Company and the Consultant shall each have a worldwide,
perpetual, royalty free license to develop, re-engineer, and
sublicense to third parties any such jointly owned PIP.
(iii)
Consultant PIP .
PIP created, developed or reduced to practice
solely by Consultant personnel using the Consultant’s
resources such as facilities, equipment, funds, or funds under
the control of or administered by the Consultant as a result of
the Consultant’s independent work will be owned by the
Consultant and the Company shall have no ownership interest
therein (“Consultant PIP”); provided that, during
the Term and for ten (10) years thereafter, the Company shall
have the option to purchase from the Consultant a worldwide
license of any such Consultant PIP from the Consultant pursuant
to the terms of a license agreement to be negotiated and entered
into between the parties and reasonably acceptable to the
Consultant and the Company, including as to any royalty or other
compensation arrangements.
(f)
Disclosure of PIP.
The Consultant agrees that any PIP developed by
the Consultant during the Term shall be disclosed to the Company
in writing within three (3) business days of the initial and
each subsequent stage of the development thereof, such notice to
be in such form as the Company may reasonably request.
Except as provided herein, the Company agrees to hold such
disclosure in confidence and will not further disclose or use
the invention in a way that is inconsistent with the terms and
intent of this Agreement.
(g)
Exchange of Intellectual Property.
The exchange of Intellectual Property under this
Agreement shall not constitute any representation, warranty,
assurance, guaranty or inducement by either Party to the other
with respect to the validity and/or infringement of patents,
copyrights, or other rights and such Intellectual Property is
exchanged on an “as is” basis and all warranties
and/or conditions, representations, indemnities and guarantees,
whether express or implied, arising by law, custom, prior oral
or written statements by the parties or otherwise (including,
but not limited to, any warranty of merchantability or fitness
for a particular purpose or uninterrupted use, or satisfactory
quality, of accuracy, of quiet enjoyment, or non-infringement of
third party rights, usage or trade practice) are hereby
over-ridden, excluded and disclaimed.
6.
INDEPENDENT CONTRACTOR.
The Company and the Consultant understand and
agree that the Consultant is an independent contractor engaged
in the operation of its own
consulting business. In this regard, the
Consultant is free at all times to arrange the time, manner and
place of performance of the Services. Further, the
Consultant has no obligation to work any particular hours or
days except as necessary to perform the Services within the time
constraints and schedules agreed upon by the Company and the
Consultant. Neither the Company nor the Consultant shall
be considered to be the agent, master, or servant of the other
party for any purpose whatsoever. Neither the Company nor
the Consultant shall have any general or specific authority to
enter into any contract, assume any obligations, or make any
warranties or representations on behalf of the other. In
addition, except as provided elsewhere herein, the Consultant
retains the right to provide similar services to other
businesses or individuals. The Consultant agrees to
properly report all Consulting Fees received for the Services
and shall be responsible for payment of all taxes with respect
thereto.
7.
CONFIDENTIALITY.
(a)
Definitions . For purposes hereof
"Confidential Information" shall mean any information or
compilation of information which is proprietary to the Company
and which relates to its existing or reasonably foreseeable
business, including, but not limited to, trade secrets and
information contained in or relating to product designs,
software code, schematics, plans or other information relating
to any research project, work in progress, future development,
scientific, engineering, manufacturing methods, processes,
techniques, tooling, sales techniques, marketing plans or
proposals, financial and sales information, investors, existing
or potential customer lists and all other customer information.
Such information, whether received by Consultant prior to
or following the Effective Date of this Agreement, shall be
treated as Confidential Information irrespective of its source,
and all information which Company identifies as being
"confidential" or "trade secret" shall be presumed to be
Confidential Information. Notwithstanding the
foregoing, the following will not constitute Confidential
Information for purposes of this Agreement:
(i)
Information that is already known to the
Consultant prior to its being disclosed to the Consultant by the
Company, as evidenced by prior documentation held by
Consultant;
(ii)
Information that is already in the public domain
or later becomes publicly available through no fault of the
Consultant;
(iii)
Information that is disclosed to the Consultant
by a third party who, insofar as the Consultant knows, has a
legal right to disclose it;
(iv)
Information that is disclosed by the Company to
a third party without obligation of confidentiality;
(v)
Information that is, in the Consultant’s
good faith judgment, requested or required to be disclosed
pursuant to any order, law, rule or regulation applicable to the
Consultant, or is necessary to defend against or assert a claim
in connection with this Agreement, provided however that prior
to any such disclosure, the Consultant will notify the Company
of its intent to disclose such information; or
(vi)
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