Exhibit
4.19
DATED 17 DECEMBER
2004
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(1) ELAN CORPORATION,
PLC
(2) ELAN INTERNATIONAL
SERVICES, LTD
(3) GENEREX BIOTECHNOLOGY
CORPORATION
AND
(4) GENEREX (BERMUDA),
LTD
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TERMINATION
AGREEMENT
MATHESON ORMSBY PRENTICE
30 Herbert Street
Dublin 2
Ireland
TEL + 353 1 619 9000
FAX + 353 1 619 9010
\MOP_DUBLIN\1081878.5
CONTENTS
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Page No
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2
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Termination of
the Newco Agreements
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3
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3
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Representations, Warranties, Confirmations and
Indemnities
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4
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4
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6
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5
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Rights Related
to Securities
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6
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6
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Sale of Shares
and Completion
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6
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7
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7
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8
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Waiver of
Accrued Rights/Mutual Releases
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9
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9
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9
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THIS
TERMINATION AGREEMENT made this 17 th day of December 2004 (this “
Agreement ”)
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(1)
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ELAN
CORPORATION, PLC , a
public limited company incorporated under the laws of Ireland and
having its registered office at Lincoln House, Lincoln Place,
Dublin 2, Ireland (“ Elan Corp
”);
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(2)
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ELAN
INTERNATIONAL SERVICES, LTD., an exempted limited liability company
incorporated under the laws of Bermuda, and having its registered
office at Clarendon House, 2 Church St., Hamilton, Bermuda (
“EIS” );
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(3)
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GENEREX
BIOTECHNOLOGY CORPORATION , a Delaware corporation having its principal
place of business at 33 Harbour Square, Suite 202, Toronto,
Ontario, Canada M5J 2G2; and
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(4)
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GENEREX
(BERMUDA), LTD ,
an exempted company incorporated under the
laws of Bermuda, and having its registered office at Clarendon
House, 2 Church St., Hamilton, Bermuda.
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A.
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The Parties
entered into various agreements whereby Elan Corp, EIS and JVP
established the joint venture company, Newco, and Elan Corp and JVP
each licensed certain intellectual property to Newco for a
specified field of use. Specifically:
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(i)
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Elan Corp, EIS,
JVP and Newco entered into a Subscription, Joint Development and
Operating Agreement dated 17 January 2001 as amended and restated
on 15 January 2002 (the “ JDOA
”);
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(ii)
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Elan Corp and
Newco entered into a License Agreement dated 16 January 2001 as
amended and restated on 15 January 2002 (the “ Elan
License Agreement ”);
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(iii)
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JVP and Newco
entered into a License Agreement dated 16 January 2001 as amended
and restated on 15 January 2002 (the “
JVP License Agreement ”);
and
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(iv)
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Newco, JVP and
EIS entered into a Registration Rights Agreement with respect to
the capital stock of Newco dated 16 January 2001 (the “
Newco Registration Rights Agreement
”).
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B.
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The JDOA, Elan
License Agreement, JVP License Agreement, and Newco Registration
Rights Agreement, are together defined in this Agreement as the
“ Newco Agreements ”.
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C.
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The Parties
also entered into agreements whereby JVP sold and EIS purchased
certain securities of JVP and the Parties agreed to certain matters
related to the ownership of such securities.
Specifically:
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(i)
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Elan Corp, EIS
and JVP entered into a Securities Purchase Agreement dated 16
January 2001 (the “ Securities Purchase
Agreement ”);
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(ii)
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EIS and JVP
entered into a Registration Rights Agreement with respect to the
capital stock of JVP dated 16 January 2001 (the “ JVP
Registration Rights Agreement ”); and
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(iii)
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JVP executed
and delivered to EIS a Warrant to Purchase Shares dated 16 January
2001 (the “ Warrant ”).
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D.
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The Securities
Purchase Agreement and JVP Registration Rights Agreement are
together defined in this Agreement as the “ Security
Agreements ”.
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E.
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The Parties
wish to (i) terminate in full the Newco Agreements as set forth
below, (ii) set forth their agreement in relation to other matters
including, inter alia, the transfer of shares by EIS to JVP, and
(iii) terminate in full the Security Agreements and amend the
Warrant as set forth below.
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IN
CONSIDERATION OF THE MUTUAL COVENANTS CONTAINED HEREIN, AND OTHER
GOOD AND VALUABLE CONSIDERATION, THE RECEIPT AND ADEQUACY OF WHICH
ARE HEREBY ACKNOWLEDGED, IT IS HEREBY AGREED AS
FOLLOWS:
Capitalised terms used in this Agreement shall
have the same meanings assigned to them in the Newco Agreements,
unless such terms are expressly defined to the contrary in this
Agreement.
“
Affiliate” shall mean any corporation or
entity controlling, controlled or under the common control of any
other corporation or entity, excluding, in the case of Elan Corp,
an Elan JV. For the purpose of this definition, (i)
“control” shall mean direct or indirect ownership of
fifty percent (50%) or more of the stock or shares entitled to vote
for the election of directors; and (ii) Newco shall not be an
Affiliate of Elan Corp or EIS.
“
Effective Date ” shall mean the date of this
Agreement.
“Elan” shall mean Elan Corp and its
Affiliates.
“
Elan Improvements ” shall mean improvements
to the Elan Patents and/or the Elan Know-How, developed (i) by Elan
outside the Project, (ii) by Elan, JVP or Newco or by a third party
(under contract with Newco, Elan or JVP) pursuant to the Project,
and/or (iii) jointly by any combination of Elan, JVP, Newco or a
third party (under contract with Newco, Elan or JVP) pursuant to
the Project.
“Elan JV”
shall mean an entity that Elan and a
third party (i) establish or have established; (ii) take
shareholdings in or have a right to take shareholdings in; and
(iii) grant certain licenses in and to certain intellectual
property rights for the purpose of implementing a strategic
alliance.
“Elan Know-How”
shall have the meaning set forth in
the Elan Licence Agreement.
“Elan Patents”
shall have the meaning set forth in
the Elan Licence Agreement.
“Elan Trademark(s)”
shall have the meaning set forth in
the Elan Licence Agreement.
“Exchange Right”
has the meaning assigned to such
term in the Certificate of Designations.
“
Force Majeure ” shall mean causes beyond a
Party’s reasonable control, including, without limitation,
acts of God, fires, strikes, acts of war, or intervention of a
governmental authority.
“
JVP ” shall mean Generex Biotechnology
Corporation and its Affiliates.
“
JVP Improvements ” shall mean improvements
to the JVP Patents and/or the JVP Know-How, developed (i) by JVP
outside the Project, (ii) by JVP, Elan or Newco or by a third party
(under contract with Newco, Elan or JVP) pursuant to the Project,
and/or (iii) jointly by any combination of JVP, Elan, Newco or a
third party (under contract with Newco, Elan or JVP) pursuant to
the Project.
“
JVP Know-How ” shall mean Generex Know-How
(as such term is defined in the JVP Licence Agreement).
“
JVP Patents ” shall mean Generex Patents (as
such term is defined in the JVP Licence Agreement).
“
JVP Trademarks ” shall mean Generex
Trademarks (as such term is defined in the JVP Licence
Agreement).
“
Newco ” shall mean Generex (Bermuda), Ltd.
and its Affiliates.
“
Newco Intellectual Property ” shall have the
meaning set forth in the JDOA.
“Newco Trademark”
shall mean Generex (Bermuda),
Ltd..
“
Party ” shall mean Elan Corp, EIS, JVP or
Newco, as the case may be, and “ Parties
” shall mean all such parties together.
“Project”
shall have the meaning set forth in
the JDOA.
“Territory”
shall mean all of the countries of
the world.
“United States
Dollar” and
“US$” and
“$” shall mean the lawful currency of
the United States of America.
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2
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TERMINATION OF THE NEWCO
AGREEMENTS
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2.1
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Subject to the
provisions of Clause 2.2 hereof, the Parties hereby agree to
terminate the Newco Agreements and the Security Agreements,
including without limitation, those provisions expressly stated to
survive termination, in each case with effect from the Effective
Date.
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All the
provisions of the Newco Agreements and the Security Agreements
shall terminate forthwith with effect from the Effective Date and
be of no further legal force or effect.
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2.2
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For the
avoidance of doubt and without prejudice to the generality of the
foregoing Clause 2.1, the Parties hereby acknowledge and agree as
follows as of the Effective Date:
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2.2.1
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the Management
Committee (as such term is defined in the JDOA) shall be dissolved
forthwith with effect from the Effective Date and thereby cease to
have any function;
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2.2.2
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the EIS
Director, Seamus Mulligan, holding office with Newco immediately
prior to the Effective Date, shall resign;
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2.2.3
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the nominees on
the Management Committee of Elan shall be deemed to have been
removed from the Management Committee by Elan immediately prior to
the dissolution of the Management Committee;
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2.2.4
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all rights
granted to Newco pursuant to the Elan License Agreement to use the
Elan Patents, the Elan Know-How, the Elan Improvements and the Elan
Trademark(s) shall terminate forthwith;
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2.2.5
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all rights
granted to Newco pursuant to the JVP License Agreement to use the
JVP Patents, the JVP Know-How, the JVP Improvements and the JVP
Trademark(s) shall terminate forthwith;
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2.2.6
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with effect
from the Effective Date, neither JVP nor Newco shall have any
rights in or to the Elan Patents, the Elan Know-How, the Elan
Improvements and/or the Elan Trademark(s) and/or any other patents,
know-how or any other intellectual property rights whatsoever of
Elan;
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2.2.7
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with effect
from the Effective Date, neither Elan nor Newco shall not have any
rights in or to the JVP Patents, the JVP Know-How, the JVP
Improvements and/or the JVP Trademarks and/or any other patents,
know-how or any other intellectual property rights whatsoever of
JVP;
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2.2.8
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the Parties
shall terminate or shall cause to be terminated any and all
research and development work being conducted in connection with or
pursuant to any R&D Program of Newco, the Newco Agreements, or
otherwise on behalf of Newco;
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2.2.9
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the Parties
shall terminate or cause to be terminated any and all technical
services and assistance being conducted in connection with the
Newco Agreements;
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2.2.10
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for the
avoidance of doubt, none of the Parties shall have any obligation
to provide working capital, research or development funding, or
other funding or financing of any nature to Newco;
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2.2.11
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Elan shall not
have any obligation to pay any milestone payment or make any
milestone investment to or in Newco or JVP whether relating to the
Project, the achievement of any objectives set forth therein or
otherwise.
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2.3
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Each of the
Parties acknowledges and agrees with the other Parties that, as of
the Effective Date, no monies are owed or are refundable by any of
the Parties to the others pursuant to the Newco
Agreements.
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For the
avoidance of doubt, the Parties acknowledge that Newco is liable to
pay any fees due and owing to Codan Corporate Administrative
Services upon the Effective Date, and thereafter.
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3
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REPRESENTATIONS, WARRANTIES, CONFIRMATIONS AND
INDEMNITIES
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Newco
represents and warrants to the other Parties that it has not
granted any sub-licences or any other rights of any nature to any
third parties pursuant to the Elan License Agreement or the JVP
License Agreement.
JVP confirms to
the other Parties that it is the legal and beneficial owner of
(i) 6000 Common Shares (as defined in the JDOA and (ii) 3,612
Preference Shares (as defined in the JDOA).
EIS confirms to the other Parties that it
is the legal and beneficial owner of 2,388 Preference Shares (the
“ EIS Shares ”).
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3.4
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Third
party agreements / Orders / Claims
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3.4.1
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Each of the
Parties confirms to the other Parties hereto that, as of the
Effective Date, to its actual knowledge, Newco is not a party to,
or bound by, any judgment, order, decree or other directive of or
stipulation with any court or any governmental or regulatory
authority.
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3.4.2
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Each of the
Parties confirms to the other Parties hereto that, as of the
Effective Date, to its actual knowledge, Newco is not a party to,
or bound by, or is a third party beneficiary of any agreement with
any third party except for the Newco Agreements.
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3.4.3
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Each of the
Parties confirms to the other Parties hereto that, as of the
Effective Date, to its actual knowledge, there are no claims, suits
or proceedings pending or threatened against Newco.
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Each of the
Parties confirms to the other Parties that, prior to and as of the
Effective Date, no regulatory applications have been filed by Newco
or by any Party with any government authority in any part of the
world with respect to the Newco Intellectual Property or otherwise
howsoever in relation to the Project.
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3.6
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Exclusion of warranties /
liability
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WITH
REFERENCE TO THE TRANSFER BY EIS TO JVP OF THE EIS SHARES AS
PROVIDED BY CLAUSE 6 ON THE EFFECTIVE DATE (BUT WITHOUT PREJUDICE
TO EIS’S OBLIGATION UNDER CLAUSE 6.1.1 HEREOF TO TRANSFER THE
EIS SHARES TO JVP FREE FROM ALL LIENS, CHARGES AND ENCUMBRANCES),
THE PARTIES ACKNOWLEDGE AND AGREE THAT EIS AND ITS AFFILIATES MAKE
NO REPRESENTATION OR WARRANTY OF ANY NATURE TO JVP OR ANY OTHER
PERSON IN RELATION TO NEWCO OR ANY OF ITS AFFAIRS PAST, PRESENT OR
FUTURE.
JVP
ACKNOWLEDGES THAT IT IS ENTERING INTO THIS AGREEMENT IN RELIANCE
EXCLUSIVELY ON ITS OWN BUSINESS JUDGEMENT, THE INFORMATION WHICH
HAS BEEN AVAILABLE TO IT AS A SHAREHOLDER OF NEWCO AND OTHERWISE
AND ON THE DUE DILIGENCE IT HAS CARRIED OUT IN RELATION TO
NEWCO.
EXCEPT
AS EXPRESSLY PROVIDED IN THIS AGREEMENT, ALL OTHER WARRANTIES,
CONDITIONS OR REPRESENTATIONS, EXPRESS OR IMPLIED, STATUTORY OR
OTHERWISE, ARE HEREBY EXPRESSLY EXCLUDED BY THE
PARTIES.
NOTWITHSTANDING ANYTHING TO THE CONTRARY IN THIS
AGREEMENT, NO PARTY SHALL BE LIABLE TO ANY OTHER PARTY BY REASON OF
ANY REPRESENTATION OR WARRANTY,
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