EXHIBIT 10.12a
AMENDMENT AND ASSIGNMENT
PATENT AND KNOW-HOW LICENCE AGREEMENT
THIS AMENDMENT AND ASSIGNMENT (the "Agreement") is entered by and among
Hypoguard Limited, (previously Hypoguard (UK) Limited), a company registered in
England under company number 01912532, Xxxx Xxxx, Xxxxxx, Xxxxxxxxxx, Xxxxxxx,
XX00 1 PE, U.K. ("Hypoguard"), and Chronimed Inc. and its wholly owned
subsidiary MEDgenesis Inc., 00000 Xxx Xxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxxxx,
00000, X.X.X. (respectively, "Chronimed" and "MEDgenesis"), effective upon the
date of full execution.
WHEREAS, Hypoguard and Chronimed are parties to a February 18, 1993
Patent and Know-How Licence (the "Licence Agreement") by which Hypoguard has
licensed to Chronimed certain rights to manufacture, distribute and sell blood
glucose test products, and
WHEREAS, Chronimed has restructured its Diagnostic Products business
unit as MEDgenesis, with the intention that MEDgenesis will become an
independent, publicly traded company bearing all of the rights and
responsibilities of Chronimed's Diagnostic Products business, and
WHEREAS, Chronimed has requested that Hypoguard consent to Chronimed's
assignment of the Licence Agreement to MEDgenesis, and Hypoguard has consented
to such assignment,
THEREFORE, the parties agree as follows:
1. Certain words or phrases in this Agreement, when capitalized, shall
have the same meaning as defined and when capitalized in the Licence Agreement.
2. Chronimed hereby assigns all its rights, liabilities and interests
under the Licence Agreement to MEDgenesis. MEDgenesis accepts and assumes all
such rights, liabilities and interests. Effective with this Agreement,
MEDgenesis shall be the Licensee under the Licence Agreement and shall fully
indemnify and hold Chronimed harmless from any and all liabilities arising under
the Licence Agreement, past, present or future.
3. Hypoguard consents to Chronimed's assignment to MEDgenesis and
accepts MEDgenesis as Licensee under the Licence Agreement. Hypoguard fully
releases Chronimed from any and all liabilities or claims under the Licence
Agreement or Chronimed's performance thereof, and agrees to substitute and look
to MEDgenesis only in pursuit of any such liabilities, claims or related
remedies. Except as stated in Section
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5, the parties agree that Hypoguard's release of Chronimed and substitution of
MEDgenesis shall cause no waiver of any claim or right on behalf of Hypoguard,
known or unknown, asserted or unasserted, past, present, or future, except only
as to the substitution of parties as stated herein.
4. Upon full execution of this Agreement, Chronimed and MEDgenesis
shall pay to Hypoguard, by wire transfer of immediately available funds, the sum
of Four Hundred Seventy-five Thousand Dollars ($475,000.00).
5. Hypoguard hereby agrees to discontinue its current action pending in
the English High Court against Chronimed, entitled Hypoguard Limited v.
Chronimed Inc., Commercial Court 2000/Claim No. 737, with each party to bear its
own costs. Hypoguard shall promptly take all appropriate steps to discontinue
the action. Hypoguard shall draw up and Chronimed shall sign any necessary
Consent Orders to effect the discontinuance of the action on the terms of this
Section 5.
6. The parties further agree that the Licence Agreement is amended as
follows:
A. Hypoguard shall have the right, notwithstanding the provisions of
Clause 5 of the Licence Agreement, which otherwise remain in full force and
effect, either itself or through licensees, to manufacture, market, distribute
and sell or otherwise deal in Products in the Territory outside the United
States (and any US territories wherever located), without royalty or fee to the
Licensee.
B. Subject to the requirements of Section 6.C., Hypoguard shall have
the right, notwithstanding the provisions of Clause 5 of the Licence Agreement,
which otherwise remain in full force and effect, to manufacture, market,
distribute and sell or otherwise deal in Products in the United States (and any
US territories wherever located) only under private label to markets or
customers other than the long term care market, without royalty or fee to the
Licensee.
C. Hypoguard will take commercially prudent steps to ensure that its
Products are not distributed or sold into the long term care market in the
United States (and any US territories wherever located). Hypoguard shall not use
the "Supreme" or "Select" tradenames or marks in association with Hypoguard's
manufacture, marketing, distribution or sale of Products within the United
States (and any US territories wherever located). All blood glucose test strip
Products manufactured, marketed, distributed or sold by Hypoguard in the United
States (and any US territories wherever located) shall be designed and
manufactured to cause them to be functionally incompatible with MEDgenesis
Supreme or Select blood glucose meters.
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7. Except as specifically amended above, the Licence Agreement remains
fully in force and effect. In the event of any inconsistency among the terms of
this Agreement and the terms of the Licence Agreement, the terms of this
Agreement shall prevail.
8. The construction validity and performance of this Agreement shall be
governed in all respects by English Law and the parties hereto submit to the
nonexclusive jurisdiction of the English Courts.
HYPOGUARD LIMITED CHRONIMED INC
By: /s/ Xxxxxxx Xxxxx By: /s/ Xxxxx X. Xxxxxxxxxxx
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Its: CFO Its: CEO
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Dated: August 30, 2000 Dated: August 30, 2000
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MEDGENESIS INC.
By: /s/ Xxxxxxx X. Xxxxxx XX
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Its: CEO
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Dated: August 30, 2000
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