EXHIBIT 10.37
AMENDMENT NO. 4 dated as of this 24th day of April, 2002, ("Amendment
No. 4") between LIFE MEDICAL SCIENCES, INC. (the "Company") (formerly
"BIOMEDICAL POLYMERS INTERNATIONAL, LTD.") and YISSUM RESEARCH DEVELOPMENT
COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM ("Yissum").
WITNESSETH:
WHEREAS, the parties have entered into an agreement dated June 14, 1991
(the "1991 Agreement"), which 1991 Agreement was amended pursuant to (i) an
amendment dated as of February __, 1994 ("Amendment No. 1"), (ii) an amendment
dated as of January 1, 1996, ("Amendment No. 2") and (iii) an amendment dated as
of October 1, 1996, ("Amendment No. 3") (the 1991 Agreement as amended by
Amendment Xx. 0, Xxxxxxxxx Xx. 0 and Amendment No. 3 is referred to herein as
the "Original Agreement"); and
WHEREAS, the parties wish to modify and amend the Original Agreement
upon the terms, provisions and conditions set forth below.
NOW, THEREFORE, in consideration of the mutual agreements set forth
herein, the parties hereto agree as follows:
1. Section 18 of the Original Agreement is hereby amended to
provide that the address at which the Company shall receive
all notices and communications shall be 00 Xxxxxxxxx Xxxxx
Xxxx, Xxxxxxxxx Xxx Xxxxxx 00000, Attention: Xxxxxx X. Xxxxxx,
Chairman, President & CEO.
2. Research Program IV, a copy of which is attached hereto shall
become a part of appendix "A" to the Original Agreement. The
initial term of Research Program IV shall be for a period of
three (3) months from the date hereof and may be extended by
mutual agreement of the parties and shall be subject to the
requirements as provided in Sections 2 (f) and (g) of the
Original Agreement. The Company will pay to Yissum the $22,000
set forth in the budget of Research Program IV in three equal
monthly installments, the first of which shall be paid against
receipt of invoice upon execution of Amendment No. 4.
3. Section 8 (c) of the Original Agreement is hereby amended
through the addition of the following sentences: "Sections
8(b) (1) and 8(b) (2) are hereby declared null and void.
Notwithstanding the provisions of Section 8 (b) (3), in the
event that the Company does not reach total net sales of
products or achieve income of $1,000,000 by December 31, 2004,
Yissum shall not terminate the Original Agreement and the same
shall remain in full force and effect for the year
ended December 31, 2005 so long as the Company pays to Yissum
a minimum annual royalty payment of $50,000. Notwithstanding
the provisions of Section 8 (b) (3), in the event that the
Company does not reach total net sales of products or achieve
income of $1,000,000 by December 31, 2005, Yissum shall not
terminate the Original Agreement and the same shall remain in
full force and effect for the year ended December 31, 2006 so
long as the Company pays to Yissum a minimum annual royalty
payment of $100,000. Notwithstanding the provisions of Section
8 (b) (3), in the event that the Company does not reach total
net sales of products or achieve income of $1,000,000 by
December 31, 2006, Yissum shall not terminate the Original
Agreement and the same shall remain in full force and effect
for the year ended December 31, 2007, so long as the Company
pays to Yissum a minimum annual royalty payment of $100,000.
Any and all minimum royalty payments made by the Company to
Yissum in compliance with the terms of Section 8 (c) of the
Original Agreement shall be applied in full against the
Company's royalty obligation as referenced in Section 7 (a) of
the Original Agreement and defined in Appendix E to the
Original Agreement."
4. The following language set forth in the first sentence of
Section 5 of the Original Agreement: "This Agreement shall
take effect on June 14, 1991, and end, if not ended or
terminated prior thereto pursuant to the provisions hereof, at
the earlier of the following:" is hereby deleted and is hereby
replaced with the following: "This Agreement shall take effect
on June 14, 1991, and end, if not ended or terminated prior
thereto pursuant to the provisions hereof, at the later of the
following:".
5. The following language set forth in Section 1 (b) of the
Original Agreement: ""product" means any product and/or
product component and/or process directly and/or indirectly
based on and/or related to the patents, know-how and/or any
part thereof." is hereby deleted and is hereby replaced with
the following: ""product" means any product and/or product
component or process directly or indirectly based on and/or
related to any or all of the patents or know-how, including
but not limited to any and all patents or patent applications
developed, conceived or reduced to practice in the course of
the research, as defined in Section 1. (b) of the Original
Agreement, or resulting or deriving therefrom."
6. The following new Section 5 (d) is hereby added to the
Original Agreement: "In the event of the termination of the
Original Agreement by Yissum under the terms of either Section
14 (a), Section 8 (b) or Section 8 (c) herein, in addition to
the remedy described in Section 5 (c) of the Original
Agreement, all patents and patent applications derived from
the research, as defined in Section 1 (b) of the Original
Agreement, shall revert in full to Yissum.
7. The following language in the first paragraph in Section 9 of
Exhibit A, Exhibit B and Exhibit C of the Original Agreement:
"in the field of biopolymeric materials which would be in
competition with the Research and/or any activity of LMS, its
successors or assigns or which might create such competition."
is hereby deleted and is hereby replaced with the following:
"in the field of development or commercialization of projects
and/or products for post-operative adhesion prevention and
controlled release of anti-arrhythmic drugs which would be in
competition with any product, product component and/or product
development program derived directly from the Research."
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8. The following language in Section 6 of Appendix E to the
Original Agreement: "royalty of 5% per annum of all net sales
of licensees," is hereby deleted and is hereby replaced with
the following: "the Company shall pay to Yissum a royalty of
5% of the aggregate value of the Company's Net Sales ("Net
Sales" defined as sales revenue less discounts, returns,
allowances and taxes) of products to third parties, including
but not limited to distributors, licensees and other
customers, and its licensing income from products,"
9. All terms used herein but not otherwise defined herein shall
have the same meaning ascribed to such term in the Original
Agreement.
10. Amendment No. 4 may be executed in counterparts each of which
shall be deemed an original, but all of which together shall
constitute one and the same instrument. From and after the
execution and delivery of Amendment No. 4, the term "Original
Agreement" shall be deemed to include the terms and provisions
of Amendment No. 4.
11. By executing Amendment No. 4, Yissum and the Company hereby
certify that any and all necessary approvals and consents for
the effectiveness of Amendment No. 4 have been obtained.
12. Yissum and the Company further acknowledge that as of the date
of execution of Amendment No. 4, the Original Agreement, as
amended by Amendment No. 4, is in full force and effect with
no current or anticipated events of default.
IN WITNESS WHEREOF, the parties have duly executed Amendment No. 4 as
of the day and year first above written.
Yissum Research Development Life Medical Sciences, Inc.
Company of the Hebrew
University of Jerusalem
By:______________________ By:_____________________
Name:____________________ Name:___________________
Title:___________________ Title:__________________
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