EXHIBIT 10.11.1
MODIFICATION TO LICENSE AGREEMENT
THIS AGREEMENT entered into this day of 27th day of October,
1995 between DALTEX MEDICAL SCIENCES, INC., (a corporation of the
State of Delaware), having a place of business at 00 Xxxxxx Xxxx,
Xxxxxxxxx, XX 00000 ("Licensor"), and ARROW INTERNATIONAL, INC.,
(a Pennsylvania corporation), having a place of business at 0000
Xxxxxxxxx Xxxx, Xxxxxxx, XX 00000 ("Licensee").
WHEREAS, Licensor and Licensee have previously entered into
a License Agreement dated the 28th day of March, 1991 ("1991
License Agreement") relating to certain technology set forth
therein and which remains in full force and effect;
WHEREAS, Licensor and Licensee, to their mutual benefit,
desire to modify the terms of the License Fees payable by
Licensed to Licensor for certain of the Licensed Products in one
of the Fields of Application.
NOW THEREFORE, in consideration of the above premises and
the mutual covenants and conditions hereinafter contained, and
for other good and valuable consideration, the receipt and
sufficiency of which is acknowledged by the execution and
delivery hereof, the parties hereby covenant and agree as
follows:
1. DEFINITIONS: The terms used in this Agreement
shall have the same meaning as those defined in Article 1 of the
1991 License Agreement.
2. MODIFICATIONS TO 1991 LICENSE AGREEMENT: The following
paragraph is hereby added to Article 3 of the 1991 License
Agreement:
*(a)(iii), For the period from August 31, 1995 to
September 1, 2000, for those Licensed Products within
Field of Application category 1(d)(ii); namely:
Central vessel and arterial catheters (exclusive of
silicone Xxxxxxx/Broviac type or implantable port
catheters); in lieu of the running royalty provided for
by paragraph 3(a)(ii), for product application (ii) of
Article 1(d) of this Agreement, a one time royalty of
U.S. $600,000.00 (Six Hundred Thousand U.S. Dollars)
will be paid by Licensee to Licensor upon execution of
this Modification Agreement, in full Satisfaction of
the running royalty payments prescribed by paragraph
3(a)(ii) will resume and will be adjusted upward
pursuant to paragraph 3(c) for the time period from
August 31, 1995 to September 1, 2000.
3. THE 1991 LICENSE AGREEMENT: Except as expressly
modified herein, the provisions of the 1991 License Agreement
between Licensor and Licensee remain in full force and effect.
In addition, this modification to the 1991 License Agreement
between Licensor and Licensee does not modify or alter the terms
of a Patent Settlement Agreement dated January 1, 1995, between
the Trustees of Columbia University, Daltex Medical Sciences
Inc., Arrow International, Inc., and Becton Xxxxxxxxx and
Company.
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THE PARTIES have duly executed this Modification Agreement
in duplicate executed counterparts, effective the first date
written.
DALTEX MEDICAL SCIENCES, INC.
By: /s/ Xxxxx Xxxxxxx
9/21/95 ------------------------
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Date Title: President and CEO
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ARROW INTERNATIONAL, INC.
By: /s/ Xxxx X. Xxxxxxxxx, Xx.
10/27/95
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Date Title: VP Finance & Treasurer
-------------------------
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EXHIBIT 10.11.2
SECOND MODIFICATION TO LICENSE AGREEMENT
THIS AGREEMENT entered into this 30th day of May,
1997 between DALTEX MEDICAL SCIENCES, INC., (a corporation of the
State of Delaware), having a place of business at 00 Xxxxxx Xxxx,
Xxxxxxxxx, XX 00000 ("Licensor"), and ARROW INTERNATIONAL, INC.,
(a Pennsylvania corporation), having a place of business at 0000
Xxxxxxxxx Xxxx, Xxxxxxx, XX 00000 ("Licensee").
WHEREAS, Licensor and Licensee have previously entered into
a License Agreement dated the 28th day of March, 1991 ("1991
License Agreement") relating to certain technology set forth
therein and which remains in full force and effect;
WHEREAS, Licensor and Licensee have also previously entered
into a Modification to the 1991 License Agreement ("First
Modification Agreement") regarding the payment of royalties,
which First Modification Agreement remains in full force and
effect; and
WHEREAS, Licensor and Licensee, to their mutual benefit,
desire to again modify the terms of the 1991 License Agreement
for certain of the Licensed Products in the Fields of
Application.
NOW THEREFORE, in consideration of the above premises and
the mutual covenants and conditions hereinafter contained, and
for other good and valuable consideration, the receipt
and sufficiency of which is acknowledged by the execution and
delivery hereof, the parties hereby covenant and agree as
follows:
1. DEFINITIONS: The terms used in this Agreement
shall have the same meaning as those defined in Article 1 of the
1991 License Agreement.
2. MODIFICATION TO 1991 LICENSE AGREEMENT: The
following paragraphs are hereby added to Article 1(d) (Fields of
Application) of the 1991 License Agreement:
(v). Epidural catheters used to infuse drugs into
the epidural space in the spinal column.
(vi). Implantable infusion ports and pumps and
their attached catheters used for drug therapy and
access to the vascular system.
(vii). Intra-aortic balloon catheters.
(viii). Drainage catheters used to drain chest
cavities, surgical incisions, wounds and abscesses.
3. SUPPLEMENTAL MODIFICATION TO 1991 LICENSE AGREEMENT:
The following paragraph is hereby added to Article 1 of the 1991
License Agreement (Definitions):
h) Running royalty rate is defined as Five (5 %)
Percent of Unit Net Sales of products sold by Licensee which fall
within the added Fields of Application (v-viii) set forth
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above. For a Licensed Product or Products within the added
Fields of Application (v-viii) that is sold together with other
non-licensed products in a single package to a customer, the
Running royalty rate of Five (5 %) Percent shall apply only to
the established Unit Net Sales price of the Licensed Product or
Products.
4. PAYMENTS: In consideration of the foregoing additions
to the Fields of Application under the 1991 License Agreement,
upon execution of this Agreement, Licensee shall pay Licensor a
one-time, non-refundable, non-creditable fee of One Hundred
Thousand ($100,000.00) Dollars.
Upon execution of this Agreement, and for the first (3)
years thereafter, Licensor waives development fees and minimum
annual royalties due for products sold by Licensee falling under
the added Fields of Application (v - viii) set forth above.
After the third full year this Agreement is in force,
Licensee shall pay development fees of $2,500.00, payable
quarterly in advance, for each of the new Fields of Application
(v - viii) set forth above, during their development phase and
prior to Licensee sales of product in each of the new Fields of
Application. Licensee's obligation to pay development fees shall
cease in the quarter following Licensee's sale of a product in
each of the added Fields of Application. After such time a sale
is made, Licensee shall pay the Running royalty rate defined
above in Article 3(h) herein, and at a minimum, shall pay a
minimum royalty of $2,500.00, payable quarterly in advance, for
each of the new Fields of Application (v - viii) set forth above.
All payment terms herein are effective throughout the remaining
term of the 1991 License Agreement and in
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accordance with the payment and recording terms provided in
Article 4 of the 1991 License Agreement.
5. NET SALES: Net Sales are hereby defined as the
total invoiced amount of all sales by Licensee to the trade, less
cash and trade discounts, returns, allowances, free goods and
replacements, taxes applicable to such sales, and government
charges assumed and delivery charges borne by Licensee.
6. BEST EFFORTS: Licensee shall use all reasonable
endeavors, to manufacture, promote and sell the products with a
view to achieving maximum benefit in its judgment to the parties
hereto, and Licensor shall be entitled to call for information
from time to time on the endeavors being made. In the event that
the Licensor considers that Licensee has failed properly to
comply with this provision, or a sub-licensee has so failed,
Licensor may give Licensee six months notice (accompanied by
detailed reasons for its decision) of its intention to convert
the Field of Use to a non-exclusive right, unless Licensee's, or
sub-licensee's, performance has been remedied to the reasonable
satisfaction of Licensor.
7. THE 1991 LICENSE AGREEMENT: Except as expressly
modified herein, the provisions of the 1991 License Agreement
between Licensor and Licensee, and the terms of the First
Modification Agreement, remain in full force and effect. In
addition, this second
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modification to the 1991 License Agreement between Licensor and
Licensee does not modify or alter the terms of a Patent
Settlement Agreement dated January 1, 1995, between the Trustees
of Columbia University, Daltex Medical Sciences Inc., Arrow
International Inc., and Becton Xxxxxxxxx and Company.
THE PARTIES have duly executed this Second Modification
Agreement in duplicate executed counterparts, effective the first
date written.
DALTEX MEDICAL SCIENCES, INC.
By: /s/ Xxxxx Xxxxxxx
May 9, 1997 ----------------------
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Date Title: President
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ARROW INTERNATIONAL, INC.
By: /s/ Xxxxxx Xxxxxx, Xx.
May 30, 1997 -----------------------
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Date Title: President
-----------------------
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