Exhibit 4.9
[*] =Certain confidential information contained in this exhibit, marked by
brackets with asterisks, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
AMENDMENT TO LICENSE, DEVELOPMENT AND SUPPLY AGREEMENT
THIS AMENDMENT to the License, Development and Supply Agreement dated May 9,
2002, ("Agreement") is made effective the 20th day of December 2002 by and
between IMI International Medical Innovations Inc., a Canadian corporation,
having its principal place of business at Xxxxx 000, 0000 Xxxxx Xxxxxx, Xxxxxxx,
Xxxxxxx, X0X 0X0, Xxxxxx ("IMI") and XxXxxx PDI Inc., a Canadian corporation,
having its principal place of business at 000 Xxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxx,
Xxxxxx (acting through its XxXXXX Consumer Healthcare division on behalf of
XxXxxx PDI Inc.) ("XXXXXX").
Whereas:
X. XXXXXX has determined, through its market research, that the Laboratory Field
is the first field to be pursued in Canada by XxXxxx.
B. IMI desires that XXXXXX
take an expanded roll in advancing IMI's skin cholesterol measurement
technology.
ARTICLE I
DEFINITIONS
Section 1.9.3 shall be amended to read:
1.9.3 "Laboratory Field" shall mean the field of diagnosing, predicting
and monitoring of cardiac risk utilizing systems that are approved by
the applicable governmental regulatory authorities for use under the
supervision of trained medical personnel and/or trained healthcare
workers and that are operated in an outpatient clinic, medical
laboratory, patient collection center associated with a laboratory,
hospital laboratory or similar venue providing laboratory services, and
for clarification, the parties agree that Laboratory Field includes the
"Insurance Laboratory Field", which shall mean the field of diagnosing,
predicting and monitoring of cardiac risk utilizing systems that are
approved by the
applicable governmental regulatory authorities for use under the
supervision of trained medical personnel and/or trained healthcare
workers and that are operated by a service provider, or in a venue
providing laboratory services, provided that such field shall be solely
related to the analysis of the cardiac health of an insurance
applicant;
Section 1.11 shall be amended to read:
1.11 "Licensed Fields" shall mean the Consumer, Nutraceutical, Professional,
Laboratory and Other Medical Fields defined above.
Section 1.20 shall be amended to read:
1.20 "Territory" shall mean:
a) Canada and its territories and possessions for Fields outside the
Insurance Laboratory Field (as defined above), and
b) solely in relation to the Insurance Laboratory Field, Territory
shall also include the "Insurance Territory", which, in addition to
Canada and its territories and possessions, shall mean Mexico and the
United States and shall include their territories and possessions.
ARTICLE III
LICENSE GRANTS, EXCLUSIVITY, AND FUTURE RIGHTS
Section 3.1 shall be amended to read:
3.1 For the term of this Agreement, IMI hereby grants to XXXXXX the exclusive
right and license in the Licensed Fields under the Licensed Patents and Licensed
Know-How to use, sell and have sold products, processes and/or apparatus
embodying the Licensed Patents and/or Licensed Know-How in the Territory. XXXXXX
may xxxxx sublicenses of such rights, subject to IMI's prior written approval.
IMI's approval will be deemed granted unless it provides written objection
within fifteen (15) Business Days of XXXXXX'x written notification of its desire
to grant a particular sublicense. XXXXXX shall not use or sublicense any rights
granted hereunder or offer any Licensed Products to any person whom XXXXXX has
reason to believe will use such rights or Licensed Products outside of the
Territory. For greater certainty and clarification, the parties agree and
acknowledge that the foregoing grant includes the grant of the enumerated rights
and licenses
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in the Insurance Territory solely in respect of the Insurance Laboratory Field.
XXXXXX shall, in respect of any person to whom it sells Licensed Products for
use in the Insurance Territory outside of Canada, obtain a written
acknowledgement and agreement from such person in the form attached as Schedule
"M" hereto.
ARTICLE XVII
TERM AND TERMINATION
Section 17.3 shall be amended to read:
17.3 XXXXXX may terminate this Agreement at any time prior to XXXXXX'X first
commercial sale of Licensed Product in the Territory upon thirty (30) days prior
written notice to IMI and thereafter, upon ninety (90) days prior written notice
to IMI. This Agreement may be terminated by XXXXXX on a country by country
basis, provided that if XXXXXX terminates this Agreement insofar as it concerns
Canada and its territories and possessions this Agreement shall also be deemed
to be terminated in the Insurance Territory.
Section 17.4.1 shall be amended by inserting the words "IMI provides XXXXXX with
Licensed Product conforming to specifications which the parties shall agree
upon, acting reasonably, prior to January 31, 2003 and" after "Professional
Field if".
Section 17.4.1(i) shall be amended by deleting the words "the first anniversary
of the Effective Date" and replacing such words with "the end of the 6th month
following the first shipment of any Licensed Product from IMI to XXXXXX which
conforms to the foregoing specifications".
Section 17.4.1(ii) shall be amended by deleting the words "the first anniversary
of the Effective Date" and replacing such words with "the first shipment of
Licensed Product from IMI to XXXXXX".
Notwithstanding the three immediately preceding paragraphs, if for any reason
the parties are unable to agree, on or prior to February 15, 2003, upon the
specifications which Section 17.4.1, as amended, contemplates that the parties
shall agree upon prior to January 31, 2003, then the
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foregoing amendments to Section 17.4.1, 17.4.1(i) and 17.4.1(ii) shall be
considered to have never been made and the Agreement shall be deemed to be
amended to provide that the original terms and conditions of such provisions
shall continue to apply.
Section 17.4.4(i) shall be amended by deleting the words "the option
contemplated in Section 3.2 is exercised" and replacing such words with "IMI
provides XXXXXX with Licensed Product conforming to specifications which the
parties shall agree upon, acting reasonably, prior to January 31, 2003)" and by
deleting the number $***** and replacing such number with $***** and adding the
words ", including at least $***** in Net Sales in Canada relating to the
Laboratory Field" after the words "in the Territory".
Notwithstanding the immediately preceding paragraph, if for any reason the
parties are unable to agree, on or prior to February 15, 2003, upon the
specifications which Section 17.4.4(i), as amended, contemplates that the
parties shall agree upon prior to January 31, 2003, then (a) the foregoing
amendments to Section 17.4.4(i) shall be considered to have never been made and
(b) the Agreement shall be deemed to be amended to (1) delete the words "the
anniversary of the date on which the option contemplated in Section 3.2 is
exercised" and (2) replace such words with "December 20 commencing in 2003 (and
December 20 in succeeding years)".
ARTICLE XIII
MISCELLANEOUS PROVISIONS
Section 18.1 shall be amended to read:
18.1 The rights and obligations of IMI and XXXXXX under this Agreement are
personal thereto and neither party shall have the right to sublicense, assign,
transfer or delegate, in whole or in part, any of its rights or obligations
hereunder to any third party without the prior written consent of the other
party except that either party may assign this Agreement to any Affiliate
provided that the assignor guarantees all of the covenants and obligations of
such Affiliate arising pursuant to such assignment and except that, solely for
the Insurance Laboratory Field, XXXXXX may assign, transfer or delegate, in
whole or in part, any of its rights or obligations under this Agreement to any
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Affiliate provided that the XXXXXX guarantees all of the covenants and
obligations of such Affiliate arising pursuant to such assignment, transfer or
delegation.
OTHER PROVISIONS OF THIS AMENDING AGREEMENT
(a) Contemporaneously with the execution and delivery of this Amendment, XXXXXX
is delivering to IMI a cheque or bank draft in the amount of $100,000 pursuant
to the exercise by XXXXXX of its option to acquire rights in the Laboratory
Field as contemplated in section 3.2 of the Agreement.
(b) In all other respects, the terms and conditions of the Agreement shall
remain in full force and effect, unamended.
(c) The provisions of sections 18.7, 18.9 and 18.10 shall apply, mutatis
mutandis, to this Amendment.
(d) The Agreement shall be amended by adding Appendix "M" hereto as a
corresponding Appendix thereto.
IN WITNESS WHEREOF, the parties have duly executed this Amendment as of the day
and year first written above.
XxXXXX PDI INC.
(acting through its XxXXXX Consumer Healthcare division on behalf of XxXxxx PDI
Inc.)
By: /s/ Xxxxx Xxxxxx
------------------------
Name:
Title:
Authorized Signing Officer
IMI INTERNATIONAL MEDICAL INNOVATIONS INC.
By: /s/ Xxxxx Xxxxxx
------------------------
Name:
Title:
Authorized Signing Officer
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Appendix "M"
To: XxXXXX PDI INC. (or the other Affiliates of XxXxxx who will effect
the Sale}
And to: IMI INTERNATIONAL MEDICAL INNOVATIONS INC.
In consideration of the sale or other provision from time to time by _________
{Note to draft: XxXXXX or the other ------------- Affiliates of XxXxxx who will
effect the Sale} to the undersigned of a cardiac risk predictor that measures
skin cholesterol marketed under the name o (the "Product"), and for other
good and valuable consideration, the undersigned hereby acknowledges and agrees
that:
1. It is acquiring the Product for its own purposes only, and will not
sell, provide or otherwise distribute the Product to any other person (other
than to insurance brokers and agents for the purposes of collecting samples from
policy holders for delivery to the undersigned in connection with the analysis
to be conducted by the undersigned of such samples)
2. It will use the Product solely for the purpose of diagnosing, predicting and
monitoring of cardiac risk utilizing systems solely related to the analysis of
the cardiac health of an insurance applicant and for no other purposes.
Dated this ________ day of _______________, 200__.
.........................................
{Name of Entity}
by: ____________________________________
Name:
Title:
Authorized Signing Officer
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