EXHIBIT 10.36


 


CONSULTING AGREEMENT


 


WHEREAS, effective as of
June 1, 1998, SONTRA MEDICAL, INC. (formerly “Newcorp Medical, Inc.”), a
corporation organized under the laws of the State of Delaware and having its
principal office at 21 Erie Street, Suite 22, Cambridge, Massachusetts 02139
(hereinafter referred to as “Sontra”), and Dr. Robert S. Langer, residing at 77
Lombard Street, Newton, Massachusetts 02158 (“Consultant”) desire to enter into
this Consulting Agreement;


 


NOW THEREFORE, for good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Sontra and Consultant hereby agree to such Consulting Agreement,
effective as of June 1, 1998, so that it reads in its entirety as follows:


 


Sontra desires to engage
Consultant to perform consulting services for Sontra and Consultant desires to
perform such services, on the terms and conditions hereinafter set forth.


 


1.             Term


 


Sontra agrees to retain
Consultant, and Consultant agrees to serve, on the terms and conditions of this
Agreement for a period commencing on the effective date of the License
Agreement (the “License Agreement”) between Sontra and Massachusetts Institute
of Technology (“M.I.T.”) (the “Effective Date”) and ending December 1, 1999,
subject to earlier termination as provided herein.  The period during which consultant is engaged hereunder is
hereafter referred to as the “Consulting Period.”  This Agreement may be renewed by mutual consent of both parties.


 


2.             Duties


 


Consultant is hereby engaged
to act as a consultant to Sontra to render scientific advice and counsel to
Sontra in the “Consulting Field,” herein defined as all applications in
ultrasound enhanced diagnostics and transdermal drug delivery, as such
definition may be modified 


 

















 


from time to time pursuant to the provisions
of Section 6.  Consultant agrees to lead
all projects relating thereto.  In
connection with rendering such services, Consultant shall:


 


(a)                                  report to
officers, employees and agents of Sontra and other persons or groups at
mutually agreeable times and as reasonably requested by Sontra from time to
time;


 


(b)                                 interface on
behalf of Sontra with the scientific community, peers, Institutional Review
Boards, the medical and business communities and other persons or groups at
mutually agreeable times and as reasonably requested by Sontra time to time;


 


(c)                                  consult with
Sontra employees at mutually agreeable times;


 


(d)                                 participate as
a member of Sontra’s Board of Scientific Advisors, if any, at mutually
agreeable times and as may be requested by Sontra, at no additional
compensation to that set forth in Section 3 herein; and


 


(e)                                  engage in such
other scientific undertakings at mutually agreeable times and as Consultant and
Sontra may agree upon during the Consulting Period.


 


Consultant shall devote such
time and energies as are reasonably necessary to fulfill his obligations
hereunder.  Sontra and Consultant shall
both make good faith attempts to schedule any consulting services so as not to
interfere unreasonably with Consultant’s other activities.  It is understood that Consultant shall be an
independent contractor who may be engaged in other employment or who shall
render other consulting services during the period of this Consulting
Agreement, subject to the limitations of Section 6 hereof.


 


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3.             Compensation


 


As compensation for his
services hereunder, Sontra shall pay Consultant a consulting fee, which during
the first year of the Consulting Period shall be at the annual rate of $120,000,
and thereafter at a rate as shall be agreed between the parties hereto, payable
in monthly installments on the last day of each month of each year (commencing
June 1, 1998).  The payment of the
consulting fee shall be deferred and shall not be paid until the earlier of (i)
a determination by Sontra, in the exercise of its sole discretion, that there
are sufficient Sontra cash resources to make all or any part of such payment on
an equal and ratable basis to all consultants of Sontra whose consulting fees are
then being similarly deferred; and (ii) the dissolution and termination of
Sontra.  Consultant acknowledges that as
an independent contractor he is not entitled to participate in or receive any
benefit or right offered to employees of Sontra under any employee benefit
plan, including, without limitation, medical and health insurance.  Consultant acknowledges that Sontra will not
withhold taxes on any amounts paid to him hereunder and that Consultant is
responsible for all income taxes, social security taxes, employment taxes,
unemployment taxes and insurance, and other similar payments.


 


4.             Expenses


 


Consultant shall be entitled
to reimbursement for all reasonable travel and other out-of-pocket expenses
necessarily incurred in the performance of his duties hereunder, upon
submission and approval (not to be unreasonably withheld) of written statements
and bills in accordance with the then regular procedures of Sontra.


 


5.             Representations and Warranties of Consultant


 


Consultant represents and
warrants to Sontra that, to the best of his knowledge, Consultant is under no
contractual or other restriction or obligation that is inconsistent with the 


 


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execution of this Agreement, the performance
of his duties hereunder, or the other rights of Sontra hereunder.  Consultant represents and warrants that he
will work in good faith to carry out his consulting duties.


 


6.             Noncompetition


 


(a)           During the term of this Agreement and for a period of one
year commencing on the expiration of this Agreement (the “Noncompetition
Period”), Consultant agrees that he will not perform consulting or research
services for, or accept employment with, or acquire (or negotiate with respect
to the acquisition of) control of any entity located anywhere in the world
which engages, proposes to engage, or could be deemed to be engaged in any
manner in the Consulting Field. 
Consultant represents and warrants to Sontra that listed on Appendix A
hereto are the only activities of the type specified in the first sentence of
this Section 6(a) currently engaged in by Consultant.  Sontra agrees that for purposes of this Agreement the activities
listed on Appendix A hereto do not fall within the Consulting Field.  If, during the Noncompetition Period,
Consultant desires to perform consulting or research services for, or accept
employment with, or acquire (or negotiate with respect to the acquisition of)
control of any entity located anywhere in the world which engages, proposes to
engage, or could be deemed to be engaged in any manner in the Consulting Field,
and any such activity is not then listed on Appendix A, then Consultant must
propose, in writing, an amendment to Appendix A disclosing the proposed
activity (the “Proposed Amendment”).


 


(b)           If an activity disclosed in a Proposed Amendment relates
to patents, patent applications, inventions, technological innovations,
copyrights, copyrightable works, developments, discoveries, designs, processes,
formulas, know-how, data or analysis, whether patentable or not (the
“Unlicensed Technology”), which, as a result of Consultant’s pre-existing and
on-going obligations


 


 


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to M.I.T., are then owned by M.I.T., then
Consultant shall cooperate fully with Sontra in Sontra’s efforts to license
such Unlicensed Technology.  If Sontra
obtains a license to such Unlicensed Technology within 120 days following the
delivery of the Proposed Amendment, Consultant hereby agrees that the
Unlicensed Technology shall be within the meaning of the Consulting Field for
all purposes of this Agreement, and Consultant shall not be entitled to engage
in such activity during the Noncompetition Period for any person or entity
other than Sontra.  If Sontra does not
obtain a license to such Unlicensed Technology within such period (either
because Sontra does not attempt to obtain such a license or because Sontra is
unable to negotiate successfully to obtain such a license), and the failure to
obtain a license is not the result of action taken or failed to be taken by
Consultant, then Sontra hereby agrees that the Unlicensed Technology shall not
be within the meaning of Consulting Field for all purposes of this Agreement,
and agrees to an amendment to Appendix A to such effect.


 


(c)           If the activity disclosed in a Proposed Amendment does not
relate to Unlicensed Technology which, as a result of Consultant’s pre-existing
and on-going obligations to M.I.T., are then owned by M.I.T., and if Sontra
does not agree within 30 days following delivery of the Proposed Amendment that
the proposed new activity falls outside the Consulting Field, and therefore
does not agree to the Proposed Amendment, then Consultant shall not be entitled
to engage in such activity during the Noncompetition Period for any person or
entity other than Sontra.


 


(d)           Anything in Sections 6(b) or 6(c) to the contrary
notwithstanding, however, if Consultant disagrees with Sontra’s determination
that, as provided in Section 6(b), Sontra’s inability to license the Unlicensed
Technology is a result of action taken or failed to be taken by Consultant or,
as provided in Section 6(c), the proposed activity falls inside the Consulting
Field 


 


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then, at Consultant’s election, such dispute
shall be settled by binding arbitration in Cambridge, Massachusetts.  In the arbitration proceeding, Consultant
shall select one arbitrator, Sontra shall select one arbitrator, and the two
arbitrators so selected shall select a third arbitrator.  The decision of a majority of the
arbitrators shall be binding on Consultant and Sontra.  Should one party fail to select an
arbitrator within five days after notice of the appointment of an arbitrator by
the other party, or should the two arbitrators selected by Consultant and
Sontra fail to select an arbitrator within ten days after the date of the
appointment of the last of such two arbitrators, any person sitting as a Judge
of the United States District Court for the Federal District of Massachusetts
in which the City of Cambridge is then situated, upon application of Consultant
or Sontra, shall appoint an arbitrator to fill such space with the same force
and effect as though such arbitrator had been appointed in accordance with the
second preceding sentence.  Any arbitration
proceeding pursuant to this Section 6(a) shall be conducted in accordance with
the rules of the American Arbitration Association.  Judgment may be entered on the arbitrators’ award in any court
having jurisdiction.


 


(e)           For a period of six months following the termination of
this Agreement, Consultant will not solicit, entice, persuade or induce any
individual who is then, or has been within the six-month period preceding
termination of this Agreement, an employee or consultant of Sontra or any of
its affiliates to terminate his or her employment with Sontra or any of its
affiliates or to become employed by or enter into contractual relations with
any other individual or entity, and the Consultant shall not approach any such
employee or consultant for any such purpose or authorize or knowingly approve
the taking of any such actions by any other individual or entity.  The term “affiliate” shall mean any person
or entity that directly, or indirectly through one or more intermediaries,
controls or is controlled by, or is under common control with, Sontra.


 


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(f)            Because a breach of the provisions of this Section 6
could not adequately be compensated by money damages, Sontra shall be entitled,
in the event of an actual breach of this Agreement, in addition to any other
right and remedy available to it, to an injunction restraining such actual
breach.  Consultant agrees that the
provisions of this Section 6 are necessary and reasonable to protect Sontra in
the conduct of its business.  If any
restriction contained in this Section 6 shall be deemed to be invalid, illegal,
or unenforceable by reason of the extent, duration, or geographical scope
thereof, or otherwise, then the court making such determination shall have the
right to reduce such extent, duration, geographical scope, or other provisions
hereof, and in its reduced form such restriction shall then be enforceable in
the manner contemplated hereby.  Any
restrictions on Consultant contained in this Section 6 shall not apply if this
Agreement is terminated pursuant to Section 9 as a result of a breach by Sontra
of a material term of the Agreement.


 


7.             Patents, etc.


 


Sontra shall own all rights
and title to any interest in patents, patent applications, inventions,
technological innovations, copyrights, copyrightable works, developments,
discoveries, designs, processes, formulas, know-how, data and analysis, whether
patentable or not, which Consultant conceives or develops during the time in
which he is rendering consulting services to Sontra under this Agreement both
(a) in connection with Consultant’s services pursuant to Section 2 herein,
utilizing the time, material, facilities, or information of Sontra, and (b)
relating to a field in which Sontra may (i) be engaged or (ii) contemplates (as
demonstrated by the records of Sontra) being engaged or conceived of or
developed (“Inventions”).  As soon as
Consultant owns, conceives of, or develops any Invention as described herein,
he agrees immediately to communicate such fact in writing to Sontra, and
without further compensation, forthwith upon request of Sontra, Consultant 


 


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shall execute all such assignments and other
documents (including applications for patents, copyrights, trademarks, and
assignments thereof) and take all such other action as Sontra may reasonably
request in order (a) to vest in Sontra all Consultant’s rights, title, and
interest in and to Inventions, free and clear of liens, mortgages, security
interests, pledges, charges, and encumbrances arising from the acts of
Consultant (“Liens”) (Consultant to take such actions, at his expense, as are
necessary to remove all such Liens), and (b) if patentable or copyrightable, to
obtain patents or copyrights (including extensions and renewals) thereof at
Sontra’s expense in any and all countries in such name as Sontra shall
determine.


 


8.             Confidential
Information


 


(a)           All confidential or proprietary information concerning the
conduct, affairs, products, Inventions, plans, employees or other aspects of
Sontra’s business, prospects or assets that Consultant may obtain from Sontra
during or after the Consulting Period, or may create prior to the end of the
Consulting Period or otherwise relating to the business of Sontra or of any
customer or supplier of Sontra shall not be published, disclosed, or made
accessible by him to any other person, firm, or corporation either during or
after the Consulting Period or used by him, either directly or indirectly, except
during the Consulting Period in the business and for the benefit of Sontra, in
each case without prior written permission of Sontra.  Consultant shall return or destroy all physical evidence of such
confidential information to Sontra prior to or at the termination of his
retention as a consultant by Sontra.  As
used in this Section 8, “confidential information” shall mean any information
developed by or on behalf of, or otherwise acquired by, Sontra and regarded by
Sontra as confidential, except that information which is generally known and
available to the public.  Nothing
contained herein shall in any way prohibit Consultant from publishing his
research pursuant 


 


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to his ongoing obligations to M.I.T. subject
(as currently permitted by M.I.T.) to a reasonable period of delay to permit
Sontra to perfect any patent rights relative to such research, such delay not
to exceed 90 days.


 


(b)           Consultant shall use his reasonable efforts to cause all
assistants, laboratory personnel, consultants and others who may provide
services for or on behalf of any of Sontra’s projects, to execute
confidentiality agreements.


 


(c)           The rights of Sontra, and the obligations of the
Consultant (including, without limitation, Consultant’s services set forth in
Section 2) contained in this Agreement, including, without limitation, any
interest in Inventions, are subject to and limited by the rights of M.I.T.,
growing out of such entity’s relationship (direct or indirect) with Consultant.  In particular with respect to paragraph
6(a), Consultant shall be free to perform services to the extent M.I.T.
reasonably deems it necessary to the exploitation of whatever rights they may
have in Inventions.


 


9.             Termination


 


Notwithstanding anything
herein contained, if on or after the Effective Date and prior to the end of the
Consulting Period:


 


(a)           either (i) Consultant shall be physically or mentally
incapacitated or disabled or otherwise unable fully to discharge his duties
hereunder for a period of six months, (ii) Sontra shall in its discretion, have
found “justifiable cause”, or (iii) either party to this Agreement shall breach
any material term of this Agreement and fail to correct such breach within 20
days after notice by the other party of commission of the same, then, and in
each such case, either party shall have the right to give notice of a date (not
earlier than 20 days from such notice) to be specified in such notice, and this
Agreement shall terminate on the date so specified.  For purposes of this 


 


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subparagraph, “justifiable cause” shall mean
the willful breach or habitual neglect of his duties hereunder.


 


(b)           Consultant shall die, then this
Agreement shall terminate on the date of Consultant’s death.


 


(c)           Sontra shall dissolve and not be
reconstituted within six months thereafter, then this Agreement shall terminate
effective on the date of dissolution.


 


(d)           M.I.T. or any other educational or
health-care institution with which Consultant is currently affiliated shall
adopt conflict-of-interest or other policies that shall be inconsistent in any
material respect with the terms and provisions of this Agreement, and
Consultant and Sontra shall fail to amend this Agreement so as to remove such
conflict within 60 days following written notification by Consultant to Sontra
of the existence of such conflict (each party hereby agreeing to negotiate in
good faith during such 60-day period), then this Agreement shall terminate.


 


(e)           After the fourth anniversary of the
Effective Date, either party may terminate this Agreement upon ninety (90) days
written notice to the other party.


 


10.           Survival


 


The covenants, agreements,
representations, and warranties contained in or made pursuant to this Agreement
shall survive termination of Consultant’s services as provided herein.


 


11.           Entire Agreement; Modification


 


This Agreement sets forth
the entire understanding of the parties with respect to the subject matter
hereof, supersedes all existing agreements between them concerning such subject
matter, and may be modified only by a written instrument duly executed by each
party.


 


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12.           Notices


 


Any notice or other
communication required or permitted to be given hereunder shall be in writing
and shall be mailed, return receipt requested, or delivered against receipt to
the party to whom it is to be given at the address of such party set forth in
the preamble to this Agreement (or to such other address as the party shall
have furnished in writing in accordance with the provisions of this Section
12).  Notice to the estate of Consultant
shall be sufficient if addressed to Consultant as provided in this Section 12.  Any notice or other communication given by
certified mail shall be deemed given three days after the time of certification
thereof, except for a notice changing a party’s address which shall be deemed
given at the time of receipt thereof.


 


13.           Waiver


 


Any waiver by either party
of a breach of any provision of this Agreement shall not operate as or be
construed to be a waiver of any other breach of such provision or of any breach
of any other provision of this Agreement. 
The failure of a party to insist upon strict adherence to any term of
this Agreement on one or more occasions shall not be considered a waiver or
deprive that party of the right thereafter to insist upon strict adherence to
that term or any other term of this Agreement. 
Any waiver must be in writing, signed by the party giving such waiver.


 


14.           Binding
Effect


 


Consultant’s services,
rights and obligations under this Agreement shall not be transferable by
assignments or otherwise.  The
provisions of this Agreement shall be binding upon and inure to the benefit of
Consultant and his heirs and personal representatives, and shall be binding
upon and inure to the benefit of Sontra and its successors and assigns.  The term successors and assigns shall
include any company, partnership, association or other entity that buys all or
substantially all of Sontra’s assets or stock or with which it merges or
consolidates.


 


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15.           Headings


 


The headings in this
Agreement are solely for the convenience of reference and shall be given no
effect in the construction or interpretation of this Agreement


 


16.           Counterparts; Governing Law


 


This Agreement may be
executed in any number of counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same instrument.  It shall be governed by and construed in
accordance with the laws of the State of Delaware, without giving effect to the
conflict of laws.  Notwithstanding the
above, any actions between Consultant and Sontra must be brought either in
Massachusetts State Court or the Federal Courts for the District of
Massachusetts.


 


IN WITNESS WHEREOF, the
parties have duly executed this Agreement on
                         ,
1998, effective as of the date first above written.


 


	
   

  	
  SONTRA MEDICAL, INC.

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ James R. McNab, Jr.

  
	
   

  	
   

  	
  James R. McNab, Jr.

  
	
   

  	
   

  
	
   

  	
  ROBERT S. LANGER

  
	
   

  	
   

  
	
   

  	
  /s/ Robert S. Langer

  



 


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APPENDIX A


(Langer)


 


 


None.


 


 


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