AMENDMENT TO LICENSE, DEVELOPMENT AND SUPPLY AGREEMENT
Exhibit
4.12
Canadian
License Amendment
AMENDMENT
TO LICENSE, DEVELOPMENT AND SUPPLY AGREEMENT
THIS
AMENDMENT AGREEMENT effective
as of December 9, 2005 is made by and between PREMD
INC. (previously
known as IMI
International Medical Innovations Inc.),
a corporation incorporated under the laws of Canada, and having its principal
place of business at Xxxxx 000, 0000 Xxxxx Xxxxxx, Xxxxxxx, Xxxxxxx, X0X 0X0,
Xxxxxx (hereinafter referred to as “PreMD”)
and XxXXXX PDI Inc., a corporation incorporated under the laws of Canada, with
and having its principal place of business at 000 Xxxxxx Xxxxxx, Xxxxxxxx,
Xxxxxx, Xxxxxx (acting through its XxXXXX Consumer Healthcare division)
(hereinafter referred to as “XxXXXX”).
XxXXXX
and PreMD may also be referred to as“Parties.”
Whereas:
A. The
Parties are parties to a License, Development And Supply Agreement dated as
of
May 9, 2002, as amended by agreement dated December 20, 2002 (the “Agreement”);
B.
The
Parties wish to waive certain rights and obligations they may have pursuant
to
certain provisions contained in the Agreement and to amend the provisions of
the
Agreement, in each case as specifically contemplated herein;
C. The
Parties are parties to a License, Development and Supply Agreement dated as
of
May 28, 2004 (the “International
Agreement”);
and
D. Capitalized
terms used herein which are not otherwise defined shall have their respective
meanings ascribed thereto in the Agreement.
NOW,
THEREFORE, in consideration of the mutual covenants and obligations contained
herein and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the Parties agree as
follows:
Portions
of this Exhibit were omitted, as indicated by ********, and have been filed
separately with the Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
Sales
Minimums
Professional
Product
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1.
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PreMD
hereby waives any rights which it may have pursuant to section 17.4.1
of
the Agreement as a result of XxXxxx’x not having the amount of Net Sales
of Licensed Products as contemplated thereunder provided
that:
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a.
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The
provisions of section 17.4.1(i) shall be
deleted;
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b.
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The
provisions of section 17.4.1(ii) shall be deemed to be amended by
deleting
the phrase “in any subsequent calendar year commencing after the first
anniversary of the Effective Date” and replacing it with “in any calendar
year commencing on and after 2005” and adding the following phrase at the
end of section 17.4.1(ii): “subject to the provisions of section
17.4.5”;
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Consumer
Product
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2.
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PreMD
hereby waives any rights which it may have pursuant to section 17.4.2
of
the Agreement as a result of XxXxxx’x not having the amount of Net Sales
of Licensed Products as contemplated thereunder provided
that:
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a. The
provisions of section 17.4.2(i) shall be deleted and replaced with the
following: “i) by
the end of the calendar year in which a Licensed Product is cleared for sale
in
Canada as a Consumer Product and when PreMD has made such product available
for
sale to XxXxxx that meet the Consumer Product Specifications agreed to by the
Parties as defined in paragraph 2 c. hereto and PreMD has given XxXxxx notice
in
writing that all of the aforesaid conditions have been satisfied (the
“Availability
Date”),
*****.”
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b.
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The
provisions of section 17.4.2(ii) shall be deemed to be amended
by:
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i.
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Deleting
“first anniversary of the Effective date” and replacing it with
“Availability Date”); and
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ii.
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adding
the following phrase at the end thereof: “subject to the provisions of
section 17.4.5”;
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c. The
Parties acknowledge that as of the effective date of this Amendment, the Parties
have not established and agreed upon specifications for the Consumer Product
for
sale in the Consumer and Nutritional Fields. The Parties agree to use reasonable
efforts to mutually agree upon such specifications for the Consumer Product
in
writing. After such specifications have been mutually agreed upon by the
parties, *****.
Portions
of this Exhibit were omitted, as indicated by ********, and have been filed
separately with the Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
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Nutraceutical
Field
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3.
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PreMD
hereby waives any rights which it may have pursuant to section 17.4.3
of
the Agreement as a result of XxXxxx’x not having the amount of Net Sales
of Licensed Products as contemplated thereunder provided
that:
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a. The
provisions of section 17.4.3(i) shall be deleted and replaced with the
following: “i) by
the end of the calendar year in which a Licensed Product is cleared for sale
in
Canada as a Consumer Product and when PreMD has made such product available
for
sale to XxXxxx that meet the Consumer Product Specifications agreed to by the
Parties and PreMD has given XxXxxx notice in writing that all of the aforesaid
conditions have been satisfied (the “Availability
Date”),
XXXXXX has not had Net Sales of Licensed Products in the Nutraceutical Field
in
an amount ***** .
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b.
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The
provisions of section 17.4.3(ii) shall be deemed to be amended
by:
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i.
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Deleting
“first anniversary of the Effective Date” and replacing it with
“Availability Date”); and
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ii.
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adding
the following phrase at the end thereof: “subject to the provisions of
section 17.4.5”;
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Laboratory
Field
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4.
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PreMD
hereby waives any rights which it may have pursuant to section 17.4.4
of
the Agreement as a result of XxXxxx’x not having the amount of Net Sales
of Licensed Products as contemplated thereunder provided
that:
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a.
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The
provisions of section 17.4.4(i) shall be deleted and replaced with
the
following:
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“i)
in
any year (and in succeeding years) after the earlier of:
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1.
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the
first commercial sale of the Tape Test (as defined in the International
Agreement) in the Laboratory Field ,
and
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Portions
of this Exhibit were omitted, as indicated by ********, and have been filed
separately with the Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
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2.
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the
date the Tape Test is cleared for sale in Canada and when product
is
available for sale to XxXxxx that meets the specifications set out
*****.
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(the
earlier of such times being herein referred to as the “Commencement
Date”)
XxXxxx has not had Net Sales of at least ***** related to any Licensed Product
in the Laboratory Field in the Territory, including at least ***** in Net Sales
in Canada relating to the Laboratory Field (or, in the case of the first partial
calendar year after the Commencement Date, at least the amount *****.
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5.
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The
Agreement shall be amended by adding the following as a new section
17.4.5
thereto:
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“*****
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6.
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The
parties acknowledge and agree that nothing contained herein shall
affect
the entitlement of PreMD to receive the amount by which the Minimum
Administration Charge exceeds the Administration Charge for such
year.
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*****
7. The
provisions of section 8.5 of the Agreement (other than the first sentence
thereof) shall not apply in respect
of the Product in circumstances where the Product is *****.
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8.
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*****
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a)
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*****;
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b)
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*****;
and
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c)
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*****.
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9.
PreMD
agrees to use commercially reasonable efforts,
which for purposes of clarity may, at a minimum, include the need to expend
funds or make payments (other than PreMD’s attorneys fees and any other PreMD’s
out-of-pocket expenses in connection with
the negotiations thereof) of
***** to
renegotiate the development agreement with ***** to further define the rights
of
PreMD in Collaboration IP ***** in
the
event that intellectual property is created during development work
in order to provide that PreMD will be granted a worldwide, irrevocable,
royalty-free, non-exclusive license,
with the right to grant a
sublicense, to use and sell Design Elements *****.
It is acknowledged that there is a similar obligation to make the ***** and
certain other payments to ***** pursuant to an amendment to the International
Agreement dated the date hereof. For greater certainty,
*****.
Portions
of this Exhibit were omitted, as indicated by ********, and have been filed
separately with the Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
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9.1
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*****
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9.2
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*****
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9.3
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*****
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9.4
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*****
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10
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To
the extent commercially practicable, PreMD shall offer to include
a
designated representative of XxXxxx (the “XxXxxx
Designate”)
in all meetings with ***** and persons from whom ***** licenses any
patents or rights to patent applications to the extent that such
meetings
relate to Collaboration IP ***** in all cases to the extent that
XxXxxx
shall wish to participate in such meetings. PreMD shall provide the
XxXxxx
Designate with such advance notice of such meetings as PreMD shall
have
received and PreMD shall use commercially reasonable efforts to schedule
such meetings at least 48 hours after notice of such meeting has
been
provided to the XxXxxx Designate. XxXxxx acknowledges that this advance
notice shall not always be possible, and that the obligations of
PreMD
under this section 10 shall
be subject to PreMD’s need and desire to proceed with meetings with such
persons on a commercially reasonable and timely and efficient basis.
If
such a meeting occurs and XxXxxx has not been provided with such
advance
notice, PreMD will as soon as reasonably practicable after such meeting
provide the XxXxxx Designate with a summary of the material matters
discussed and agreed upon at such
meeting.
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11
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Subject
to compliance with the terms and conditions of the *****, the parties
agree that the Collaboration IP shall be considered as Licensed Know-How
for the purposes of the Agreement.
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Portions
of this Exhibit were omitted, as indicated by ********, and have been filed
separately with the Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
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Royalty
on ***** Sales
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12
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The
parties acknowledge and agree that for the purposes of provisions
of
Article IV of the Agreement the Net Sales of the Licensed Product
are to
include any Net Sales attributed to the sales of
*****.
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Miscellaneous
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13
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In
all other respects, the terms and conditions of the Agreement shall
remain
in full force and effect,
unamended.
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14
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The
provisions of sections 18.7, 18.9 and 18.10 shall apply, mutatis
mutandis,
to this amending agreement.
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IN
WITNESS WHEREOF, the Parties have duly executed this Agreement as of the day
and
year first written above.
XXXXXX
PDI INC.
(acting
through its XxXXXX Consumer Healthcare
division
on behalf of XxXXXX PDI Inc.)
By:
/s/______________________
Name:
Title:
Authorized
Signing Officer
A
Canadian corporation
By:
/s/______________________
Name:
Title:
Authorized
Signing Officer
Portions of this Exhibit were omitted, as indicated by ********, and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended.
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