EXHIBIT 10.16
AMENDMENT NO. 1 TO LICENSE AGREEMENT
Reference is made to the License Agreement ("Agreement") dated August 25,
2003 by and between Somaxon Pharmaceuticals, Inc. ("Somaxon") and ProCom One,
Inc. ("ProCom One"). All capitalized terms used herein and not otherwise defined
shall have the meanings assigned to such terms in the Agreement.
WHEREAS, the parties desire to amend certain terms of the Agreement in
accordance with the terms hereof (this "Amendment").
NOW THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged by the parties, the parties hereto,
intending to be legally bound, agree as follows:
1. Section 5.1 of the Agreement shall be deleted in its entirety and replaced
by the following:
"5.1 Patent Prosecution and Maintenance. Except to the extent
otherwise agreed by the parties, Somaxon shall be responsible for
the preparation, filing, prosecution and maintenance of the Patent
Rights, including all payment obligations. The prior written consent
of ProCom One shall be required for the amendment of any patent
claims within the Patent Rights, abandonment of any pending patent
application or termination of payment of any maintenance fees.
Within thirty (30) days of the Effective Date, ProCom One shall
provide to Somaxon a schedule setting forth the timing of all
maintenance fees and other material prosecution and maintenance
activities scheduled with respect to the Patent Rights, and ProCom
One shall timely execute powers of attorney and such other
documentation as shall be reasonably requested by Somaxon to
facilitate Somaxon's performance as contemplated herein. Somaxon
shall provide written notice to ProCom One from time to time as
Somaxon makes any required maintenance payments and as any new
material information relating to the preparation, filing,
prosecution or maintenance of the Patent Rights comes to its
attention. In the event Somaxon fails to make any required payments
or take any action required for the proper preparation, filing,
prosecution or maintenance of the Patent Rights, Procom One shall
have the right to do so. Somaxon shall notify ProCom One of its
election, providing ProCom One with sufficient time to make any such
required payments or take any such required action. For the
avoidance of doubt, title to the Patent Rights shall reside in
ProCom One irrespective of which Party files, prosecutes and/or
maintains such Patent Rights."
2. Except for the matters set forth in this Amendment, all other terms of the
Agreement shall remain unchanged and in full force and effect.
IN WITNESS WHEREOF, the parties hereto have duly executed this Amendment
as of October 20, 2003.
ProCom One, Inc. Somaxon Pharmaceuticals, Inc.
By: /s/ Xxxxx Xxxx By: /s/ Xxxxxxx Xxxxx
--------------------------------- ------------------------------
Name: Xxxxx Xxxx Name: Xxxxxxx Xxxxx
Title: Title: President and Chief
Executive Officer
