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EXHIBIT 10.2
AMENDMENT XX. 0
XXXXXXXXX XX. 0 entered into as of October 10, 1996, with an effective
date of August 6, 1996 (the "Effective Date") to COLLABORATION AGREEMENT AND
WORLDWIDE EXCLUSIVE LICENSE dated March 22, 1994 (the "Collaboration
Agreement"), as amended by AMENDMENT NO. 1 to the Collaboration Agreement dated
April 12, 1995, by and between ACCUMED INTERNATIONAL, INC. (the successor to
Alamar Biosciences, Inc. ("Alamar")) and G&G DISPENSING, INC. ("G&G).
WHEREAS, the parties desire to amend certain of their respective
rights and obligations under the Collaboration Agreement and certain related
agreements;
NOW THEREFORE, in consideration of the premises and the mutual
promises set forth herein, the parties agree as follows:
1. For the purpose of this Amendment No. 2, Accumed
International, Inc. shall be defined as "Accumed". The parties agree that all
references to "Alamar" in the Collaboration Agreement, Amendment No. 1, the
Securities Purchase Agreement dated March 22, 1994 between G&G and Alamar (the
"Securities Purchase Agreement"), the Warrant issued by Alamar to G&G dated
March 22, 1994 (the "Warrant"), and the Escrow Agreement dated March 22, 1994
among G&G, Alamar and Hackmyer & Nordlicht (the "Escrow Agreement") are
intended to mean Accumed.
2. There will be no development, manufacture or sale of an
Actuator by the parties in connection with the Product or otherwise pursuant to
the Collaboration Agreement, and all references to an Actuator are therefore
deleted in their entirety.
3. The definition of the following term is hereby added to the
Collaboration Agreement as a new Section 1.2b:
1.2b "Commercially Viable Product" shall mean a Product which
can be manufactured by or on behalf of Accumed using reasonable
production tooling and production methods, for a per unit cost of
production no greater than $.75, which cost shall be comprised
exclusively of Accumed's costs for manufacturing labor and raw
materials associated with such production.
4. Section 5.2 of the Collaboration Agreement is hereby deleted
in its entirety. In satisfaction and lieu of the monthly payments and expenses
contemplated therein, Accumed shall pay G&G, as compensation for its activities
through the date of this Amendment No. 2 in accordance with Section 2.2 of the
Collaboration Agreement, the aggregate sum of $26,750, representing G&G's time
and out-of-pocket expenses devoted to such activities, provided
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that G&G promptly submits to Accumed an invoice itemizing time costs and
expenses.
5. Section 5.3(a) of the Collaboration Agreement is hereby
deleted in its entirety and replaced with the following:
(a) Amount. Accumed shall pay to G&G a non-refundable, except as
provided in Paragraph 14 of this Amendment No. 2, minimum annual
royalty for each twelve month period commencing August 1, 1996,
payable quarterly as described in Section 5.3(c) of the Collaboration
Agreement as follows:
i. First three twelve month periods: $25,000;
ii. Fourth twelve month period: $50,000; and
iii. Fifth twelve month period and each additional twelve
month period through the term of this Agreement as
defined in Section 12 below: $100,000.
6. Section 5.3(c) of the Collaboration Agreement is hereby
deleted and replaced with the following:
Accumed shall pay to G&G no later than the 30th day following the end
of each quarter based on a year beginning August 1, twenty five
percent (25%) of each year's minimum annual royalty. All payments
made under this Section 5.3 of this Agreement shall be made and
transmitted as described in Section 5.1 hereof. For the purpose of
clarity, payments under Section 5.3 are due no later than thirty (30)
days after each August 1, November 1, February 1 and May 1).
7. Section 5.4(a)(i) of the Collaboration Agreement is hereby
deleted in its entirety.
8. Section 5.4(a)(ii) of the Collaboration Agreement is hereby
deleted and replaced with the following:
ii. for each Disposable sold
[a] ten cents ($.10) each for the first 250,000
Disposables sold (1 - 250,000);
[b] eighteen cents ($.18) each for the next
750,000 Disposables sold (250,001 -
1,000,000) and
[c] twenty two cents ($.22) each for Disposables
sold in excess of 1,000,000.
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9. Section 5.4(b) of the Collaboration Agreement is hereby
deleted in its entirety and Section 5.4(c) of the Collaboration Agreement is
hereby renumbered as Section 5.4(b).
10. Section 5.4(d)(i) of the Collaboration Agreement is hereby
amended by deleting the first sentence thereof and replacing it with the
following sentence:
Accumed will remit to G&G either the royalties payable under this
Section 5.4 or, if higher, twenty five percent (25%) of the applicable
minimum annual royalty specified in Section 5.3(a) hereof, quarterly
within thirty (30) days after the end of each quarter commencing with
the quarter beginning August 1, 1996.
11. In the event Accumed breaches any of the provisions of this
Amendment No. 2, each of the foregoing terms shall be deemed null and void and
the original terms of the Collaboration Agreement replaced by this Amendment
No. 2 shall be reinstated. In such case, Accumed shall be responsible for all
payments due under the original terms of the Collaboration Agreement as though
this Amendment No. 2 had never been executed, and will immediately pay G&G all
amounts which would have been payable under the original terms of the
Collaboration Agreement (less any amounts otherwise paid by Accumed under the
terms of this Amendment No. 2).
12. (a) Accumed hereby grants G&G the unlimited right to
utilize Accumed's manufacturing facility in Westlake, Ohio and the tooling,
equipment and/or personnel located at such facility, for the production of the
Product or similar products for any and all purposes except those involving
minimum inhibitory concentration tests. Accumed will xxxx G&G for only (i) the
actual cost to Accumed of the labor and materials used by G&G in connection
with its use of Accumed's facility, tooling, equipment and/or personnel, plus
(ii) a surcharge of five percent (5%) on such actual labor and materials costs,
such billing to be done through a monthly detailed invoice. Notwithstanding
the foregoing, Accumed shall be under no obligation to make its facilities and
resources available to G&G to the extent that doing so would exceed Accumed's
manufacturing capacity or would result in Accumed's inability to satisfy demand
for the Product.
(b) If Accumed at any time discontinues manufacturing or
subcontracting the manufacture of the Product:
(i) Accumed shall notify G&G in writing that it
has discontinued the Product. G&G shall have the right, to be exercised within
ninety (90) days after receiving Accumed's notice, to purchase the tooling and
equipment previously utilized by Accumed in manufacturing the Product for its
fair market value, and Accumed will not unreasonably refuse to sell or deliver
the tooling and equipment to G&G.
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(ii) If Accumed intends to sell the tooling and
equipment previously utilized by Accumed in manufacturing the Product to a
third party, it will give written notice of such intent to G&G, specifying the
terms of sale and identity of the prospective purchaser, and G&G will have a
right of first refusal to purchase the tooling and equipment on the terms set
forth in the notice, such right to be exercised within thirty (30) days after
receipt of Accumed's notice by delivery of written notice of acceptance by G&G
to Accumed. If G&G does not exercise such right, Accumed will be free to sell
the tooling and equipment to the third party identified in its notice on the
terms and conditions set forth therein.
13. The parties confirm that Phase II and a portion of Phase III,
as described in the Collaboration Agreement, has been completed. Reference is
hereby made to Section 5.5(a) of the Collaboration Agreement, Section 2.3 of
the Securities Purchase Agreement and Section 3 of the Escrow Agreement. The
parties acknowledge that 29,000 Shares have previously been released from
escrow to G&G and that the remaining 116,000 Shares are in escrow. The parties
agree that 72,500 Shares in escrow, representing the 40% holdback pending
completion of Phase II and one-half of the 20% holdback pending completion of
Phase III, will be released from escrow and delivered to G&G on the earliest
day that such Shares may be freely sold by G&G (it being understood that such
Shares are currently subject to a lock-up agreement between Accumed and G&G).
The Escrow Agent identified in the Escrow Agreement is hereby authorized to
release such 72,500 Shares upon the expiration of the lock-up period without
any further action being necessary on the part of Accumed or G&G. The
remaining 43,500 Shares will be released to G&G as follows: 14,500 Shares will
be released upon the completion of molds and when a working prototype of the
Product exists, and 29,000 Shares will be released upon completion of Phase IV,
the date of the First Commercial Sale of the Product. Accumed and G&G will
provide joint written instructions to the Escrow Agent advising that the
applicable milestone has been obtained and directing that the corresponding
number of Shares and, if Phase IV has been completed, the Warrant, be released
to G&G.
14. Section 12.2(a)(ii) of the Collaboration Agreement is hereby
deleted in its entirety and Section 12.2(a)(iii) is renumbered as Section
12.2(a)(ii). Instead, either party shall have the right to terminate the
Collaboration Agreement by notice in writing to the other party in the event
that Phase IV is not completed on or before eighteen (18) months from the date
of this Amendment No. 2 (i.e., April 10, 1998); provided, however, that no
party may exercise such right of termination if it has not in good faith and
with reasonable diligence cooperated and pursued the development of the
Product. If G&G terminates the Collaboration Agreement because of Accumed's
failure to cooperate or diligently pursue the development of the Product, G&G
will be entitled to receive (i) as liquidated damages for all liability of
Accumed to
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G&G arising prior to the date of this Amendment No. 2, the sum of $93,684.18
(representing the amount currently owed by Accumed to G&G which G&G is
foregoing at Accumed's request in connection with this Amendment No. 2
($120,434.18), less the $26,750 to be paid to G&G pursuant to Section 3 of this
Amendment) and (ii) all out-of-pocket expenses for materials and all royalties
accrued and owing from the date of this Amendment No. 2 through the date of
such termination. If Accumed terminates the Collaboration Agreement because of
G&G's failure to cooperate or diligently pursue the development of the Product
or because a Commercially Viable Product has not been developed within the
allotted time period set forth in this Agreement through no fault of Accumed,
(i) all of the Shares and the Warrant remaining in escrow shall be forfeit by
G&G and (ii) G&G shall promptly refund to Accumed all minimum annual royalties
paid by Accumed pursuant to Section 5.3 hereof.
15. Section 12.1(a) of the Collaboration Agreement is hereby
amended by adding a new subparagraph (iv) thereto as follows:
iv. in the event that the license granted to Accumed
under this Agreement is rendered non-exclusive pursuant to Accumed's
failure to pay $200,000 in royalties from and after the ninth year of
this Agreement (beginning July 1, 2002) as specified in Section 5.3(b)
hereof.
16. Accumed agrees to pay $20,250 to attorney Xxxx Xxxxxxx for
costs associated with obtaining foreign patent protection for the Product. All
foreign patents applied for and/or granted are identified on Schedule A hereto
by a description of the country and date of filing, and application and/or
registration number. Except as agreed to above, Section 9 of the Collaboration
Agreement shall remain in full force and effect.
17. The payments to be made by Accumed under Sections 3 and 14
above will be made upon the earlier of (i) the closing of a public or private
offering of stock by Accumed or (ii) October 15, 1996.
18. Accumed agrees to pay G&G for its President, Xxxx Xxxxxxx, to
develop an assembly line method for producing the Product. in accordance with
the cost estimates set forth in Xx. Xxxxxxx'x letter to Accumed dated July 29,
1996, a copy of which is attached hereto as Exhibit 1. Accumed will purchase
and own all of the materials and equipment related to such development.
Accumed will pay G&G at the rate of $100.00 per hour for Xx. Xxxxxxx'x services
and will reimburse all reasonable and related out-of-pocket expenses incurred
by Xx. Xxxxxxx and/or G&G in connection therewith (including but not limited to
travel expenses) within thirty (30) days after G&G's delivery of an invoice
therefor. The total cost of such development activities, including all
necessary production equipment and set-up costs (except costs relating to the
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manufacture of the mold), is estimated to be approximately $119,000 plus travel
expenses. Without limiting the foregoing, Accumed shall pay G&G a bonus if the
production line is completed and operational prior to specified dates as
follows: (i) a bonus of $20,000 for completion within 11 months of the date of
this Amendment No. 2 (September 10, 1997); or (ii) a bonus of $10,000 for
completion within 15 months of the date of this Amendment No. 2 (by January 10,
1997).
19. Accumed hereby agrees to pay all legal fees and disbursements
of Hackmyer & Nordlicht for legal services rendered in connection with the
negotiation and preparation of this Amendment No. 2.
20. The Collaboration Agreement, Securities Purchase Agreement and
Escrow Agreement are hereby amended to provide that all notices permitted or
required to be sent to Accumed shall be sent to Accumed International, Inc.,
000 Xxxxx Xxxxxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxxx 00000, Attention: Xxxxx
Xxxxxxxx, Chief Executive Officer, Facsimile No. (000) 000-0000.
21. Except as amended hereby, the Collaboration Agreement,
Securities Purchase Agreement, Escrow Agreement and Warrant shall remain in
full force and effect. The terms of the Collaboration Agreement shall apply to
this Amendment No. 2, except to the extent that any of such terms are
contradictory herewith, in which event the terms of this Amendment No. 2 shall
prevail.
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IN WITNESS WHEREOF, the undersigned have executed this Amendment No. 2
as of the date first above written, to be effective as of the Effective Date.
G&G DISPENSING, INC.
By: /s/ XXXX XXXXXXX
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Name: Xxxx Xxxxxxx
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Title: President
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ACCUMED INTERNATIONAL, INC.
By: /s/ XXXXXXX XXXXX
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Name: Xxxxxxx Xxxxx
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Title: President
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WITH RESPECT TO SECTIONS 13 and
21 ONLY
HACKMYER & NORDLICHT
By: /s/ XXXXX X. HAND
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Xxxxx X. Hand
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SCHEDULE A
FOREIGN PATENT APPLICATIONS
Country Application No.
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Canada Serial No. 2,166,144
Japan Hei 7-503044
EP Based on PCT/US94/07008
