Amendment to License, Development and Supply Agreement


    Exhibit
      4.13

    


     

    AMENDMENT
      TO LICENSE, DEVELOPMENT AND SUPPLY AGREEMENT

     

    
      	
              THIS
                AMENDMENT AGREEMENTeffective
                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 Suite 615, 4211 Yonge Street, Toronto,
                Ontario, M2P 2A9, Canada (“PreMD-Canada”),
                PREMD
                INTERNATIONAL INC.(previously
                known as IMI
                International Medical Innovations Inc.,
                a corporation incorporated under the laws of Switzerland, and having
                its
                office c/o Schmid Attorneys at Law, Stockerstrasse 38 Schwanengasse
                1,
                CH-3011 Berne, Switzerland (“PreMD-Switzerland”)
                (PreMD-Canada together with PreMD-Switzerland being herein referred
                to
                collectively as “PreMD”
                or “Party”)
                and McNEIL Consumer & Specialty Pharmaceuticals Division of
                McNEIL-PPC, Inc., incorporated under the laws of the State of New
                Jersey,
                the United States of America, and having its principal place of business
                at 7050 Camp Hill Road, Pennsylvania, PA 19034 (“McNEIL-US”),
                and McNEIL PDI Inc., a corporation incorporated under the laws of
                Canada,
                with and having its principal place of business at 768 Hebert Street,
                Desbiens, Quebec, Canada (acting through its McNEIL Consumer Healthcare
                division) (“McNEIL-Canada”
                )(MCNEIL-US together with MCNEIL-Canada being herein referred to
                collectively as “MCNEIL”
                or “Party”).
                McNEIL
                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 28th,
      2004 (the “International
      Agreement”);

    B.
       The
      Parties wish to waive certain rights and obligations that 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;
      and

    C. 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:


    Sales
      Minimums

    
      	 	
              1.

            	
              PreMD
                hereby waives any rights which it may have as a result of McNeil’s not
                having cumulative Net Sales of Products pursuant to section 17.3(a)
                for
                the 2004, 2005 and 2006 Calendar Years (it being understood that
                the
                obligations of McNeil pursuant to section 17.3(a) shall arise only
                in
                respect of the 2007 and subsequent Calendar Years), subject to the
                ability
                of McNeil to ***** provided for in section 17.3 of the Agreement.
                

            


    

    
    

     

     

    
      
         

      

      
         

        
          

        

      

      
         

      

    

     

    
      	 	
              2.

            	
              PreMD
                hereby waives any rights which it may have as a result of McNeil’s not
                having cumulative Net Sales of Products pursuant to section 17.3
                (b) for
                the 2004 and 2005 Calendar Years (it being understood that the obligations
                of McNeil pursuant to section 17.3(b) shall arise only in respect
                of the
                2006 and subsequent Calendar Years), subject to the ability of McNeil
                to
                ***** provided for in section 17.3 of the Agreement.
                

            


    

    
      	 	
              3.

            	
              For
                greater certainty, it is understood and agreed that McNeil
                *****
                in respect of obligations arising
                under:

            


    

    
      	 	
              a.

            	
              Subsection
                17.3(a), commencing in 2007; and

            


    

    
      	 	
              b.

            	
              Subsection
                17.3(b) commencing in 2006.

            


    

    US
      Patent Matters

    
      	 	
              4.

            	
              In
                the event that both US Patent No. 5,489,510 and US Patent No. 5,587,295
                (collectively, the “Expired Patents”)
                are not reinstated by the United States Patent Office by 1
                August in a given Calendar Year, then the reference subsection 17.3(a)
                to
                ***** in respect of such Calendar Year shall be read as
                *****.

            


      	 	5.	
              In
                the event that one but not both of the Expired Patents is reinstated
                by
                the United States Patent Office by 1
                August in a given Calendar Year, then the reference subsection 17.3(a)
                to
                ***** in respect of such Calendar Year shall be read as
                *****.

            


    

    


    


    *****

    
      	 	
              6.

            	
              The
                provisions of section 8.7 of the Agreement (other than the first
                sentence
                thereof) shall not apply in respect of the Product in circumstances
                where
                the Product is *****,
                the specifications of which are identified in Appendix “A” hereto.
                *****
                as contemplated in section 8.1 of the Agreement.
                *****
                and development work results in a lower *****.

            


    

    
      	 	
              7.

            	
              Notwithstanding
                the provisions of section 6 of this amending agreement, in the event
                that
                the specifications for the *****
                (a)
                change from those identified on Appendix A as a result of additional
                development costs *****.
                For
                example, if subsequent development efforts are required *****, then
                the
                going forward *****

            


    

    
      	 	
              a)

            	
              *****

            


    

    
      	 	
              b)

            	
              *****

            


    

    
      	 	
              c)

            	
              *****

            


    

    


    
      	 	
              8.

            	
              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 up to ***** to
                renegotiate the development agreement with ***** (such agreement,
                as
                amended from time to time, being herein referred to as the *****
                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
                *****.

            


    

     

     

    
      
         

      

      
         

        
          

        

      

      
         

      

    

     

    
      	 	
              8.1

            	
              In
                the event that the amount of payment required to obtain the rights
                set
                forth in this Paragraph exceeds the amount of the ***** shall be
                responsible for any additional payment ***** (other than attorneys
                fees
                and any other out-of-pocket expenses in connection with the negotiations
                thereof) *****. 

            


    

    
      	 	
              8.2

            	
              In
                the event that the amount of payment required to obtain the rights
                set
                forth in this Paragraph exceeds a total of ***** responsible for
                any
                additional payment ***** (other than attorneys fees and any other
                out-of-pocket expenses in connection with the negotiations thereof)
                *****.
                

            


    

    
      	 	
              8.3

            	
              In
                the event that the amount of payment required to obtain the rights
                set
                forth in this Paragraph exceeds a total of ***** discuss their respective
                payment responsibilities for the amount, if any, that may be due
                *****
                (but, for greater certainty, no Party shall be required to make any
                payment under Section 8.3 unless **** to do
                so).

            


    

    
      	 	
              8.4

            	
              Each
                party shall be responsible for the payment of their own, respective,
                attorneys fees and out of pocket expenses that it may incur in connection
                with the negotiations as set forth in this Section 8.

            


    

     

    Royalty
      on ***** Sales

    
      	 	
              9.

            	
              The
                parties acknowledge and agree that for the purposes of provisions
                of
                Article IV of the Agreement the Net Sales of the Product are to include
                any Net Sales attributed to the sales of
                *****.

            


    

    


    *****-
      PreMD Collaboration IP

    
      	 	
              10.

            	
              To
                the extent commercially practicable, PreMD shall offer to include
                a
                designated representative of McNeil (the “McNeil
                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
                McNeil
                shall wish to participate in such meetings. PreMD shall provide the
                McNeil
                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 McNeil Designate. McNeil 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 McNeil has not been provided with such
                advance
                notice, PreMD will as soon as reasonably practicable after such meeting
                provide the McNeil Designate with a summary of the material matters
                discussed and agreed upon at such
                meeting.

            


    

    
    

     

     

    
      
         

      

      
         

        
          

        

      

      
         

      

    

     

    
      	 	
              11.

            	
              Subject
                to compliance with the terms and conditions of the *****, the parties
                agree that the Collaboration IP shall be considered as IMI Improvement
                Intellectual Property under Section 2.5.4 of the International
                Agreement.

            


    

    
      	 	
              12.

            	
              The
                provisions of 14.1 and 14.2 of the Agreement shall apply in respect
                of the
                Collaboration IP.

            


    

    


    Milestone
      Payments

    
      	 	
              13.

            	 


    

    
      	 	
              a.

            	
              McNeil
                shall pay PreMD-Canada a payment of 1) ***** upon completion of the
                Principal Design Review Meetings (within the meaning of the *****);
                and 2)
                ***** upon completion of the Critical Design Review Meeting (within
                the
                meaning of the ***** in consideration of IMI’s costs incurred in
                developing the ***** and for McNEIL’s right to obtain a ***** unit cost
                pursuant to Paragraphs 7 and 8 herein.


            


    

    


    Miscellaneous

    
      	 	
              14.

            	
              In
                all other respects, the terms and conditions of the Agreement shall
                remain
                in full force and effect,
                unamended.

            


    

    
      	 	
              15.

            	
              The
                provisions of sections 19.4 and 19.7 shall apply, mutatis
                mutandis,
                to this amending agreement. 

            


    

     

     

    
      
         

      

      
         

        
          

        

      

      
         

      

    

    IN
      WITNESS WHEREOF, the Parties have duly executed this Agreement as of the day
      and
      year first written above. 

    


    MCNEIL
      PDI INC.

    (acting
      through its McNEIL Consumer Healthcare

    division
      on behalf of McNEIL PDI Inc.)

    


    By:
      /s/______________________

    Name:

    Title:

    Authorized
      Signing Officer

    


    MCNEIL
      CONSUMER & SPECIALTY PHARMACEUTICAL DIVISION OF MCNEIL-PPC,
      INC.

    


    By:
      /s/______________________

    Name:

    Title:

    Authorized
      Signing Officer

    


    PREMD
      INC.

    A
      Canadian corporation

    


    By:
      /s/______________________

    Name:

    Title:

    Authorized
      Signing Officer

    PREMD
      INTERNATIONAL INC.

    A
      Swiss corporation

    


    By:
      /s/______________________

    Name:

    Title:

    Authorized
      Signing Officer