ADDENDUM TO LICENSE AGREEMENT
This Addendum to License Agreement (hereinafter "ADDENDUM"), entered into
as of this __ day of December, 1999, supplements the License Agreement
(hereinafter referred to as "AGREEMENT"), dated December 11, 1998, by and
between Med-Design Corporation (hereinafter referred to as "LICENSOR") and
Becton, Xxxxxxxxx and Company (hereinafter referred to as "BECTON").
WHEREAS, the parties desire to extend the term of the OPTION under the
AGREEMENT, and the parties desire to include further products under the
AGREEMENT in the OPTION;
NOW, THEREFORE, for and in consideration of the premises and the mutual
promises, contained herein, and other good and valuable consideration, the
receipt and sufficiency is hereby acknowledged, it is agreed by and between the
parties hereto, as follows:
1. In addition to the OPTION PRODUCTS set forth in the AGREEMENT, "OPTION
PRODUCTS" as defined in the Agreement shall include further products
(hereinafter "ADDITIONAL OPTION PRODUCTS"), as follows:
(a) Safety Dental Injector for injecting medication from a pre-filled
dental cartridge, using retractable needle technology, such as the devices
in Appendix A;
(b) Safety Blood Donor Needle using retractable needle technology and
designed to operate with an expandable reservoir, such as the device in
Appendix B;
(c) Safety Arterial Blood Gas Syringe, fixed or staked needle,
including ABG II Add-on using retractable needle technology, such as the
device in Appendix C;
(d) Safety Guidewire Introducer using retractable needle technology
such as the device in Appendix D;
ADDENDUM
PAGE 2
(e) Safety Vial Injector for injecting medication from a pre-filled
vial, using retractable needle technology, such as the device in Appendix
E;
(f) Safety Tuberculine Syringe for injecting up to 1.0 cc of fluid,
using retractable needle technology;
(g) Safety Insulin Syringe for injecting insulin, using retractable
needle technology.
(h) Safety Spinal Needle for use in delivering or withdrawing fluid
from the cerebrospinal fluid of the spinal column, using retractable needle
technology; and
(i) Safety Epidural Needle for use with a through-the-needle catheter
to be used in delivering anesthetics to the epidural space, using
retractable needle technology.
2. The term of the OPTION under Article IX, Section 1, of the AGREEMENT,
shall be extended for 45 days to January 26, 1999, for the five (5) OPTION
PRODUCTS identified in Article 1, Section 13, of the AGREEMENT. The parties will
negotiate in good faith and in a timely fashion for a license to such OPTION
PRODUCTS that BECTON notifies LICENSOR it desires to license.
3. At BECTON's option, LICENSOR agrees to grant to BECTON an exclusive
worldwide license, to make, use, sell and sublicense any one or more of the
ADDITIONAL OPTION PRODUCTS whether patented or not, at terms and conditions to
be negotiated. BECTON's option under this Section will expire on March 10, 2000
unless BECTON notifies LICENSOR on or before that date that it is interested in
acquiring a license on specific of the ADDITIONAL OPTION PRODUCTS. The parties
upon BECTON sending such notice will negotiate in good faith and in a timely
fashion during the subsequent fourteen (14) days the terms and conditions of
such license with respect to the ADDITIONAL OPTION PRODUCTS set forth in such
notice. During such fourteen (14) day period the provisions of Section 6 of this
Addendum will apply to
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the ADDITIONAL OPTION PRODUCTS set forth in the notice. LICENSOR will have no
further obligation to BECTON with respect to ADDITIONAL OPTION PRODUCTS after
March 10, 2000 other than as provided in the previous two sentences with respect
to ADDITIONAL OPTION PRODUCTS set forth in such notice. If no agreement is
reached during such 14 day period BECTON's option under this Addendum for the
ADDITIONAL OPTION PRODUCTS in the notice will expire. In the event BECTON
acquires a license in one or more of the ADDITIONAL OPTION PRODUCTS, the parties
will take such steps necessary, if any, to vest within BECTON ownership to
rights under U.S. Patent 4,900,307 with respect to such ADDITIONAL OPTION
PRODUCT. In the event BECTON does not acquire a license with respect to any one
or more of the ADDITIONAL OPTION PRODUCTS, the parties will take such steps
necessary, if any, to vest within LICENSOR a limited non-exclusive, paid-up
royalty free license to make, use and sell and license the non-elected
ADDITIONAL OPTION PRODUCTS under U.S. Patent 4,900,307. The parties may extend
the option granted hereunder by mutual agreement.
4.LICENSOR agrees to disclose in writing to BECTON, before December 31,
1999, subject to the confidentiality conditions of Article XII, paragraph 7, of
the AGREEMENT, all material information, including, but not limited to patent
applications, specifications, designs and prototypes for the ADDITIONAL OPTION
PRODUCTS, not previously disclosed to BECTON for BECTON's consideration and to
promptly disclose to BECTON material information developed hereafter on the
ADDITIONAL OPTION PRODUCTS as the products are further developed by LICENSOR.
5. BECTON shall pay LICENSOR a payment of One Million Five Hundred Thousand
Dollars ($1,500,000) (hereinafter the "Addendum Payment") within five (5) days
from the date of execution of this ADDENDUM. The Addendum Payment will be
applied to any non-refundable, up-front license fee under any license agreement
entered into between the parties relative to one or more of the OPTION PRODUCTS
or ADDITIONAL OPTION PRODUCTS. In the event the non-refundable licensing fees
under such licenses, if any, are less than the
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Addendum Payment or no license agreement is entered into, BECTON will have the
right until December 31, 2002 to elect with respect to the balance, i.e. the
difference between the Addendum Payment and the licensing fees paid under any
license agreement entered into between the parties relative to one or more of
the OPTION PRODUCTS or ADDITIONAL OPTION PRODUCTS (hereinafter the "Balance
Amount"), the following:
(a) to apply the Balance Amount toward any other up-front,
non-refundable payment for a license agreement that BECTON and LICENSOR may
enter into after the execution of this Addendum and prior to December 31,
2002. or
(b) to have it applied to any money owed to LICENSOR under any future
manufacturing or development agreement between BECTON and LICENSOR at a
rate of 50% of the amount owing to LICENSOR, provided however that,
LICENSOR shall not be required to work under such manufacturing or
development agreement below its costs and expenses, and provided still
further that, if the one half (50%) ratio set forth above is not acceptable
to LICENSOR during the negotiations for such manufacturing and development
agreement, then the parties will seek to agree to another ratio based on
reasonable commercial practices.
Becton may at any time after the expiration of the options described herein and
prior to December 31, 2002, elect either:
(c) to receive a payment from LICENSOR of one-half of the then
remaining Balance Amount, or
(d) to apply one half of the then remaining Balance Amount toward the purchase
of stock in LICENSOR at the then current market price or, alternatively, that
the Balance Amount be applied toward the purchase of stock in LICENSOR at a 100%
premium to the then current market price (that is, twice the then current market
price), provided however that, in no event will the purchase price of the stock
under this subparagraph be less than 30% below the closing price
ADDENDUM
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of the stock on 12/10/99,
the remainder of the Addendum Payment will be retained by LICENSOR.
6. LICENSOR agrees that for the 45 day extension period under paragraph 2
relative to the OPTION PRODUCTS under Article IX, LICENSOR will not negotiate to
license or sell the OPTION PRODUCTS to any third party, and for the 90 day
period relative to the ADDITIONAL OPTION PRODUCTS under paragraph 1 hereof,
LICENSOR will not negotiate to license or sell the ADDITIONAL OPTION PRODUCTS to
any third party.
7. (a) LICENSOR represents and warrants that it has the right to grant
the rights set forth in this Addendum and is able to enter into this Addendum
and become bound by the terms hereof.
(b) LICENSOR represents and warrants that it knows of no patent and
patent applications owned by a third party that would be infringed by
making, using, offering for sale, sale or importing of one of the OPTION
PRODUCTS.
(c) LICENSOR represents and warrants that is has not received any
notice whether written or oral, that the OPTION PRODUCTS infringe any
patents or patent applications of a third party.
(d) LICENSOR represents and warrants that it is under no obligation to
any third party that would interfere with its representatives or
obligations under this Addendum.
(e) LICENSOR represents and warrants that it has complied in all
material respects with its obligations under the first sentence of Article
IX, Section 1.
8. Other than as set forth above, the terms and conditions of the AGREEMENT
shall govern
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the rights and duties of the parties.
The parties, intending to be legally bound, indicate their agreement to the
foregoing at the places provided below.
The Med-Design Corporation Becton, Xxxxxxxxx and Company
By: _______________________ By: _________________________
Xxxxx X. Xxxxxxx Name:
President Its:
Date: _____________________ Date: _______________________
