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Exhibit 10.1 AMENDMENT NO. 1 TO LICENSE
AGREEMENT This Amendment No. 1 to License Agreement ("
Amendment No. 1 ") is entered into as of
September 12, 2008 and effective on the Amendment Date
(defined below) by and between DURECT Corporation (" Durect
") and EpiCept Corporation (" EpiCept "). PRELIMINARY
STATEMENTS A. EpiCept and
Durect have previously entered into that certain License Agreement
effective December 20, 2006 (the " Agreement ").
B. In consideration for a
one-time cash payment by Durect in the amount specified below,
EpiCept and Durect now desire to amend the license granted by
EpiCept to Durect pursuant to the Agreement so that it is
royalty-free, fully paid up, perpetual and irrevocable, in addition
to other amendments to the Agreement as specified below.
THEREFORE, in consideration of the
premises and mutual promises and covenants herein contained and for
good and valuable consideration, the sufficiency of which is hereby
acknowledged, Durect and EpiCept hereby agree to amend the
Agreement as follows: AMENDMENT TO AGREEMENT
1. Unless otherwise defined
herein, all capitalized terms used herein shall have the same
meaning ascribed to such terms in the Agreement.
2. On or before three
(3) business days after the Amendment Date, Durect shall pay
to EpiCept the sum of two million two hundred fifty thousand U.S.
Dollars ($2,250,000) by wire transfer to an account designated in
writing by EpiCept in exchange for and in consideration of the
changes and modifications made to the Agreement, as set forth in
this Amendment No. 1, including, without limitation, the
modifications that have the effect of expanding the license as set
forth below and making the license and other rights granted by
EpiCept to Durect in the Agreement exclusive, royalty-free, fully
paid up, perpetual and irrevocable, as set forth below. For the
avoidance of doubt, after the Amendment Date and EpiCept’s
receipt of the payment described above, Durect will not owe any
further royalty, milestone or other payments to EpiCept for any
intellectual property governed by the Agreement, as amended by this
Amendment No. 1. As used herein, " Amendment Date "
means the date upon which this Agreement is fully executed by the
Parties and the consent to the Amendment in the form attached
hereto as Exhibit A has been fully executed by Durect and
Hercules Technology Growth Capital, Inc.
3. Section 1.27 shall be
replaced in its entirety to read as follows: " Field " shall
mean all uses which are covered by the Epicept Licensed Patents and
Patents within the EpiCept Improvements.
4. Section 2.1 of the Agreement shall be replaced in its
entirety to read as follows: License Grant : Subject to the
terms and conditions hereof, EpiCept hereby grants to Durect, and
Durect hereby accepts, an exclusive (even as to EpiCept and its
Affiliates), royalty-free, fully paid up, perpetual, irrevocable
right and license, with the right to grant sublicenses, under the
EpiCept Licensed Patents and Patents within the EpiCept
Improvements to make, have made, develop, use, sell, offer for
sale, have sold, and import Licensed Products in and for the Field
throughout the Territory.
5. Section 6.1 of the
Agreement is hereby amended to delete all references to a "
Non-Back Pain Product ."
6. The following sections of the
Agreement are hereby deleted in their entirety: Sections 2.3, 3
(except for 3.2), 4, 5, 10 (except for 10.2, 10.5, 10.6 and 10.7)
and 11.9. 7. EpiCept represents
and warrants that it has carefully reviewed the terms of the
transaction described in the Agreement as amended by this Amendment
No. 1 and determined that the consideration paid by Durect
hereby is reasonable and fair consideration for the rights and
benefits obtained by Durect pursuant to the Agreement as amended by
this Amendment No. 1. EpiCept further represents and warrants
that it is not now insolvent and will not be rendered insolvent by
consummating the transaction described herein. EpiCept further
represents and warrants that it is not entering into this Amendment
No. 1 with the intent to defraud, delay or hinder its
respective creditors and the consummation of the transaction
described herein will not have any such effect.
7. Each Party hereby represents
and warrants to the other Party that such Party’s
representations and warranties set forth in Section 7 of the
Agreement are true and correct as of the Amendment Date, where each
reference to the Agreement shall mean the Agreement as amended
pursuant to this Amendment No. 1.
8. Except as specifically
provided in this Amend
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