TERMINATION AGREEMENT
Exhibit 4.22
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CERTAIN INFORMATION IDENTIFIED
BY BRACKETED ASTERISKS ([* * *])
HAS BEEN OMITTED FROM THIS EXHIBIT BECAUSE
IT IS BOTH NOT MATERIAL AND WOULD BE
COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED.
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This Termination Agreement ("Agreement") is entered into as of November 3, 2021 ("Effective Date"), between Padagis Israel Pharmaceuticals Ltd, a limited liability company organized in Israel ("Padagis"), and Sol-Gel Technologies Ltd., a limited liability
company organized in Israel ("Sol-Gel"). Padagis and Sol-Gel are individually referred to as a "Party" and collectively referred to as the "Parties. "
Background
X. Xxxxxxx Israel Pharmaceuticals Ltd. ("Xxxxxxx Xxxxxx") or
Perrigo UK Xxxxx Limited Partnership ("Perrigo UK")(collectively "Perrigo") and Sol-Gel entered into the agreements set forth in Exhibit A (collectively, the "Development Agreements"). Pursuant to the transaction between Perrigo and Padagis, LLC (f/k/a Vesta Pharma LLC), Xxxxxxx Xxxxxx was sold to Padagis LLC, and renamed Padagis Israel Pharmaceuticals Ltd. Pursuant to
the same transaction, Development Agreements entered into by Perrigo UK were assigned to Padagis.
B. The Parties desire to terminate the Development Agreements upon the terms set forth in this Agreement.
Accordingly, Padagis and Sol-Gel agree as follows:
1. Terms used in this Agreement and not otherwise defined shall have the respective meaning ascribed to them under the Development
Agreements.
2. Termination of Development Agreements.
(a) The Parties hereby terminate the Development Agreements and each of their respective rights and obligations under the
Development Agreements without further liability or obligation whatsoever, including, without limitation, Padagis's obligation to pay Sol-Gel profit sharing payments and Sol-Gel's responsibility for certain development obligations and costs.
(b) Notwithstanding Section 1(a) above, nothing in this Agreement will affect (i) either Party's rights under a Development
Agreement with respect to claims arising out of events occurring prior to the Effective Date; (ii) either Party's right to receive all payments owed or accrued to it under the Development Agreements for periods prior to th e Effective Date; (iii)
Padagis's ownership of assets transferred to it pursuant to the Development Agreements and any intellectual property license granted to Padagis by Sol-Gel pursuant to the Development Agreements; (iv) any provision in all Development Agreements other
than the Development and Commercialization Agreement between Xxxxxxx Xxxxxx Pharmaceuticals Ltd. k/n/a Padagis and Sol-Gel Technologies Ltd. dated as of [***] that expressly survive termination pursuant to
the terms of the applicable Development Agreement, provided however that (1) Sol-Gel shall have no obligations
under the Development Agreements with respect to [***]; (2) Sol-Gel’s obligation
to indemnify Padagis under the indemnification provisions in the Development Agreements shall apply solely to claims arising out of events occurring prior to the Effective Date; and (v) no provision in the [***] shall survive the termination of such agreement. To the extent there is any conflict between the terms of this Agreement and the Development Agreements, this Agreement shall control.
(c) Within [***] days after the Effective Date, the Parties will true-up all payments
that were owed or accrued to the Parties under the Development Agreements prior to the Effective Date that have not already been paid. Such payments shall be made in accordance with the Development Agreements.
3. Consideration. As consideration for the agreements set forth herein, Padagis will pay Sol-Gel $[***] in the aggregate payable in [***] installments of [***] on each [***] until paid in full. The initial
payment will be made as of the Effective Date.
4. Representations and Warranties. Each Party represents and warrants to the other Party that such Party has the necessary
power and authority to execute and deliver this Agreement and to perform its obligations hereunder, and the execution, delivery and performance of this Agreement by such Party has been duly authorized by all necessary action of such Party. This
Agreement constitutes the legal, valid and binding obligation of such Party and is enforceable against it in accordance with its terms, subject to the effects of bankruptcy, insolvency, or other laws of general application affecting the enforcement
of creditor rights and judicial principles affecting the availability of specific performance and general principles of equity.
5. Covenant not to Compete. For a period of the later of: (a) [***] after the
Effective Date and (b) [***] after the launch date with respect to any Product under the Development Agreements that has not been launched as of the Effective Date, without the prior written consent of
Padagis, Sol-Gel will not directly or indirectly, and will cause its affiliates not to, promote, market, sell, distribute, develop, commercialize, or manufacture (or enter into any arrangement with any person or entity to develop, commercialize, or
manufacture) any generic pharmaceutical product that competes with any Product. In addition to any other rights or remedies provided by this Agreement, Padagis will have the right to injunctive or other equitable relief to restrain any breach or
threatened breach or otherwise to specifically enforce the provisions of this Section. Padagis acknowledges and agrees that money damages would be an inadequate remedy to compensate for the breach of this Section. Padagis and Sol-Gel intend all
provisions of this Section to be enforced to the fullest extent permitted by applicable legal requirements. If any provision or term of this Section is held to be illegal, invalid, or unenforceable under present or future applicable legal
requirements of any jurisdiction, such provision will be fully severable, and this Section will be construed and enforced in such jurisdiction as if such illegal, invalid or unenforceable provision were never a part hereof, and the remaining
provisions will remain in full force in such jurisdiction and will not be affected by the illegal, invalid, or unenforceable provision, or by its severance. Without limiting the generality of the foregoing, if a court or arbitrator of any competent
jurisdiction should determine that any of the restrictions contained in this Section are unreasonable in terms of scope, duration, geographic area or otherwise, such provision will be reformed in such jurisdiction to the extent necessary such that
such restriction will be rendered enforceable to the fullest extent permitted by applicable legal requirements.
6. Assignment and License.
(a) Sol-Gel hereby irrevocably and unconditionally sells, assigns, conveys, transfers and grants to Padagis, as of the Effective
Date, Sol-Gel's entire right, title and interest in and to the Assigned Sol-Gel Intellectual Property, the same to be held and enjoyed by Padagis for its own use and benefit, and for the use and benefit of its affiliates, successors, assigns, or
legal representatives, as fully and entirely as the same would have been held and enjoyed by Sol-Gel if this Agreement had not been executed.
(b) The transfer, assignment and sale under Section (a) above shall be deemed to include the right to register and/or apply for
registration of the Assigned Sol-Gel Intellectual Property in Padagis’ own name in appropriate registries throughout the world, including without limitation all rights to publish cautionary notices reserving ownership of the Assigned Sol-Gel
Intellectual Property.
(c) In the event that any assignment under this Agreement may be ineffective or incomplete as a result of any moral rights,
artists’ rights, or any other similar rights worldwide ("Moral Rights"), Sol-Gel hereby irrevocably and unconditionally transfers and assigns to Padagis any and all Moral Rights that Sol-Gel may have in or with
respect to the Assigned Sol-Gel Intellectual Property. To the extent that Sol-Gel cannot transfer and assign such Moral Rights to Padagis, Sol-Gel hereby waives and agrees never to assert such Moral Rights against Padagis or any of its licensees. If
Sol-Gel has any Assigned Sol-Gel Intellectual Property that cannot be assigned to Padagis or waived by Sol- Gel, then Sol-Gel unconditionally and irrevocably grants to Padagis during the term of such rights, an exclusive, irrevocable, perpetual,
worldwide, fully-paid and royalty-free license (subject to Sol-Gel’s license set forth in (d) below), with rights to transfer, sublicense and assign in any way or manner including throughout multiple tiers of sublicensees, to use, reproduce, modify,
create derivative works of, perform, display, distribute directly and indirectly, and otherwise exploit such Assigned Sol-Gel Intellectual Property by all means now known or later developed, and to make, have made, sell, offer to sell, lease, offer
to lease and import products and services that contain or embody such Assigned Sol- Gel Intellectual Property, all whether by itself or through others.
(d) Padagis hereby grants to Sol-Gel a non-exclusive, worldwide, fully-paid, royalty-free, transferable, irrevocable license
under the Assigned Sol-Gel Intellectual Property, with the right to sublicense (through multiple tiers of sublicensees), to develop, manufacture and commercialize any product other than the Products.
(e) For the purposes of this Agreement, "Assigned Sol-Gel Intellectual Property" means
the Sol-Gel Intellectual Property as such term is defined in any of the Development Agreements.
7. Miscellaneous Provisions.
(a) Entire Agreement. This Agreement and the Development Agreements contain the
entire agreement among the Parties with respect to the subject matter hereof and supersedes all prior oral and written agreements, memoranda and undertakings among the Parties with regard to such subject matter.
(b) Counterparts. This Agreement may be executed in counterparts, each of which
will be deemed an original, but all of which taken together will constitute one and the same Agreement. Such counterparts may also be executed electronically (including by DocuSign) and will be deemed as effective as an original.
(c) Successors. This Agreement will be binding upon and inure to the benefit of
each of the Parties, including all of their subsidiaries, parent companies, affiliates, officers, directors, attorneys, partners, firms, agents, employees, servants, affiliates, executors, administrators, trustees, receivers, assigns, beneficiaries,
successors, predecessors and other representatives.
(e) Amendment. No amendment or modification of this Agreement will be binding
unless executed in writing by all the Parties hereto.
(f) Applicable Law. This Agreement is made in, is governed by and shall be
construed in accordance with the laws of the State of New York and the laws of the United States of America applicable therein, without regard to principles of conflicts of laws.
(h) Validitv. If any provision of this Agreement is determined to be illegal,
against public order or otherwise unenforceable, it shall not in any way defeat, invalidate or render unenforceable any other provision of this Agreement and each such provision shall at all times be considered separate and severable in this
Agreement.
(i) Notices and Deliveries. Any notice, request, delivery, approval,
authorization, consent or other communication required or permitted to be given under this Agreement shall be in writing and shall be deemed to have been sufficiently given if delivered personally, sent by overnight courier or mailed by registered or
certified mail (return receipt requested), postage prepaid, to the other Party at the addresses first set forth below or at such other addresses (or to such other person) as any Party may designate by notice to the other Party hereunder:
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If to Sol-Gel:
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Xxxxxxxx Xxxxxxx Xxxx
0 Xxxxx Xxxx St.
Xxxx Xxxxx 7403650, Israel
Attn: [***]
E-mail: [***]
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If to Padagis:
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Padagis Israel Pharmaceuticals Ltd
0000 Xxxxxxx Xxxx
Xxxxxxx, Xxxxxxxx 00000
Attn: [***]
E-mail [***]
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Any notice, request, delivery, approval, authorization, consent or other communication as aforesaid shall be deemed to have been effectively delivered and received if
mailed, to have been received three business days after being deposited in the mails, postage prepaid, if delivered personally, to have been delivered and received on the date of such delivery and if sent by e-mail, upon receipt by the sender Party
of an acknowledgment of receipt (including an automatically-generated e-mailed read receipt); provided, however, that if such date is not a business day, then it shall be deemed to have been delivered and received on the business day next following
such delivery.
The Parties have executed this Termination Agreement as of the date first written above.
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PADAGIS ISRAEL PHARMACEUTICALS LTD
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EXHIBIT A
DEVELOPMENT AGREEMENTS
[ * * *]
