As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO, each Grantor agrees to take, at its expense, all commercially reasonable steps, including, without limitation, in the CIPO and any other Canadian federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each patent, industrial design, Trade-xxxx, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO or other Canadian federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavits, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to the extent failure to do so could not reasonably be expected to cause a Material Adverse Effect. (b) Except as could not reasonably be expected to have a Material Adverse Effect, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered with, issued by, or applied for with the CIPO that is material to the business of each Grantor and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domain. (c) Except where failure to do so could not reasonably be expected to cause a Material Adverse Effect, each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO, including, without limitation, maintaining the quality of any and all products or services used or provided in connection with any of the Trade-marks, consistent with the quality of the products and services as of the date hereof, and taking all steps necessary to ensure that all licensed users of any of the Trade-marks use such consistent standards of quality. (d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available). (e) With respect to its Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPO, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B hereto (an “Intellectual Property Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO and any other Canadian federal governmental authorities necessary to perfect or protect in Canada the security interest granted hereunder in such Intellectual Property Collateral. (f) Without limiting Section 1, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m) that is not, as of the date hereof, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”) (i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall execute and deliver to the Collateral Agent, or otherwise authenticate, an agreement substantially in the form of Exhibit C hereto (an “IP Security Agreement Supplement”) covering such After-Acquired Intellectual Property, which IP Security Agreement Supplement shall be recorded with the CIPO. (g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 16, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Intellectual Property Collateral in which such Grantor has rights wherever the same may be located, including, without limitation, in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 and for no other purpose.
Appears in 1 contract
As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPOUSPTO or the USCO, each Grantor agrees to take, at its expense, all commercially reasonable steps, including, without limitation, in the CIPO USPTO, the USCO and any other Canadian domestic federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO USPTO, the USCO or other Canadian domestic federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavitsaffidavits under Sections 8 and 15 of the U.S. Trademark Act, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to the extent failure to do so could not reasonably be expected to cause a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse Effect, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered with, issued by, or applied for with the CIPO USPTO or USCO that is material to the business of each Grantor the U.S. Borrower and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO USPTO or USCO may lapse or become invalid or unenforceable or placed in the public domain.
(c) Except where failure to do so could not reasonably be expected to cause a Material Adverse Effect, each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPOUSPTO or USCO, including, without limitation, maintaining the quality of any and all products or services used or provided in connection with any of the Trade-marksTrademarks, consistent with the quality of the products and services as of the date hereof, and taking all steps necessary to ensure that all licensed users of any of the Trade-marks Trademarks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, USPTO or USCO and the CIPOUSCO, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B hereto or otherwise in form and substance satisfactory to the Collateral Agent (an “Intellectual Property IP Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO USPTO, the USCO and any other Canadian domestic federal governmental authorities necessary to perfect or protect in Canada the U.S. the security interest granted hereunder in such Intellectual Property Collateral.
(f) Without limiting Section 1, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m1(p) that is not, as of the date hereofClosing Date, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-markstrademarks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall shall, to the extent required pursuant to Section 6.12 of the Credit Agreement, execute and deliver to the Collateral Agent, or otherwise authenticate, an agreement substantially in the form of Exhibit C hereto (an “IP Security Agreement Supplement”) Supplement covering such After-Acquired Intellectual Property, Property which IP Security Agreement Supplement shall be recorded with the CIPOUSPTO, the USCO and any other U.S. federal governmental authorities necessary to perfect the security interest granted hereunder in such After-Acquired Intellectual Property.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 1615, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Intellectual Property Collateral in which such Grantor has rights wherever the same may be located, including, without limitation, in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 15 and for no other purpose.
Appears in 1 contract
Samples: Credit Agreement (Ortho Clinical Diagnostics Holdings PLC)
As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with material to the CIPObusiness of the Grantors, each Grantor agrees to take, at its expense, all commercially reasonable stepssteps as determined in Grantor’s reasonable discretion, including, without limitation, in the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance (in accordance with the exercise of such Grantor’s reasonable business discretion) of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO Canadian Intellectual Property Office or other Canadian federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavits, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to case except where the extent failure to do so could file, register or maintain is not reasonably likely to have a Material Adverse Effect. No Grantor shall, without the written consent of the Agent, which shall not be expected unreasonably withheld or delayed, discontinue use of or otherwise abandon any such material Intellectual Property Collateral, or abandon any right to cause file an application for patent, trademark, or copyright, unless such Grantor shall have determined that such use or the pursuit or maintenance of such Intellectual Property Collateral is no longer necessary or desirable in the conduct of such Grantor’s business and that the loss thereof would not be reasonably likely to have a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse EffectUntil the termination of the Credit Agreement, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered withagrees to provide, issued by, or applied for with the CIPO that is material annually to the business of each Grantor and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any Agent an updated Schedule of its Intellectual Property Collateral Patents, Trademarks and registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domainCopyrights.
(c) Except where failure In the event that any Grantor becomes aware that any item of the Intellectual Property Collateral is being infringed or misappropriated by a third party, such Grantor shall take such commercially reasonable actions determined in its reasonable discretion, at its expense, to do so could not reasonably be expected to cause a Material Adverse Effectprotect or enforce such Intellectual Property Collateral, each including, without limitation, suing for infringement or misappropriation and for an injunction against such infringement or misappropriation.
(d) Each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its material Trademarks included in the Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, including, without limitation, maintaining substantially the quality of any and all products or services used or provided in connection with any of the Trade-marksTrademarks, consistent with the general quality of the products and services as of the date hereof, and taking all steps reasonably necessary to ensure that all licensed users of any of the Trade-marks Trademarks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered withCollateral, issued by, or applied for with upon the USPTO, or USCO reasonable request of Agent made upon the occurrence and during the CIPOcontinuance of an Event of Default, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B A hereto or otherwise in form and substance satisfactory to the Agent (an “Intellectual Property Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authorities necessary to perfect register, file or protect in Canada record the security interest granted hereunder in such Intellectual Property Collateral.
(f) Without limiting Section 1Upon the occurrence and during the continuance of an Event of Default, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(mand each entity which executes a Canadian Security Agreement Supplement (as hereinafter defined) that is not, as of the date hereof, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall execute and deliver to the Collateral AgentAgent with such written notice, or otherwise authenticate, an agreement substantially in the form of Exhibit C B hereto or otherwise in form and substance satisfactory to the Agent (an “IP Security Agreement Supplement”) covering such After-Acquired Intellectual Property, which IP Security Agreement Supplement shall be recorded with the CIPO.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 16, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Canadian Intellectual Property Collateral in which such Grantor has rights wherever Office and any other governmental authorities necessary to register, file or record the same may be located, including, without limitation, security interest hereunder in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 and for no other purposeIntellectual Property.
Appears in 1 contract
As to Intellectual Property Collateral. (a) With Except as could not reasonably be expected to have a Material Adverse Effect, with respect to each item of its Registered Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, each Grantor agrees to take, at its expense, all commercially reasonable steps, including, without limitation, in the CIPO USPTO and any other Canadian federal governmental authorityUSCO, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO or other Canadian federal governmental authoritiesUSPTO and USCO, the filing of applications for renewal or extension, the filing of affidavitsaffidavits under Sections 8 and 15 of the U.S. Trademark Act, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to the extent failure to do so could not reasonably be expected to cause a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse Effect, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered with, issued by, or applied for with the CIPO USPTO or USCO that is material to the business of each Grantor the Borrower and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any of its Registered Intellectual Property Collateral registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domain.
(c) Except where failure to do so could not reasonably be expected to cause a Material Adverse Effect, each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO, including, without limitation, maintaining the quality of any and all products or services used or provided in connection with any of the Trade-marks, consistent with the quality of the products and services as of the date hereof, and taking all steps necessary to ensure that all licensed users of any of the Trade-marks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to and (cb) of this Section 9 with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, allowing to lapse, failing to defend defend, renew, maintain or maintain enforce or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(ed) With respect to its Registered Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPOCollateral, each Grantor agrees to execute or otherwise authenticate an a patent, trademark, or copyright security agreement, as applicable, in substantially the form set forth in Exhibit B hereto (an “Intellectual Property IP Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Registered Intellectual Property Collateral with the CIPO USPTO and any other Canadian federal governmental authorities necessary to perfect or protect in Canada the security interest granted hereunder in such Intellectual Property CollateralUSCO, as applicable.
(fe) Without limiting Section 1, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m1(p) that is not, as of the date hereofClosing Date, a part of the Intellectual Property Collateral Collateral, including for the avoidance of doubt, by filing a Statement of Use or an Amendment to Allege Use with respect to any “intent-to-use” Trademark application of such Grantor which is accepted by the USPTO, (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marksTrademarks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall shall, to the extent required pursuant to Section 6.12 of the Credit Agreement, execute and deliver to the Collateral Agent, or otherwise authenticate, an agreement substantially in the form of Exhibit C hereto (an “IP Security Agreement Supplement”) Supplement covering such After-Acquired Intellectual Property, Property which IP Security Agreement Supplement shall be recorded with the CIPOUSPTO and USCO.
(gf) At Solely at such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 1614, each Grantor grants to the Collateral Agent an irrevocableirrevocable (during the continuance of such Event of Default), non-exclusive and assignable license (exercisable without payment of royalty or other compensation to such Grantor) subject, (i) to any restrictions in contracts with third parties, (ii) in the case of Trademarks, to sufficient rights to quality control and inspection in favor of such Grantor to avoid the risk of invalidation of such Trademarks, and (iii) in the case of trade secrets, to reasonable efforts to maintain the confidentiality and security of such trade secrets, to use, assign or sublicense any Intellectual Property Collateral intellectual property in which such Grantor has rights wherever the same may be located, including, without limitation, in such license access to (ix) all media in which any of the licensed items may be recorded or stored, and (iiy) all software and computer programs used for compilation or print-outout of same. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 14 and for no other purpose.
Appears in 1 contract
Samples: Credit Agreement (PPD, Inc.)
As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with material to the CIPObusiness of the Grantors, each Grantor agrees to take, at its expense, all commercially reasonable stepssteps as determined in Grantor's reasonable discretion, including, without limitation, in the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance (in accordance with the exercise of such Grantor's reasonable business discretion) of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO Canadian Intellectual Property Office or other Canadian federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavits, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, exceptproceedings initiated by third parties, in each case, to case except where the extent failure to do so could file, register, maintain or participate is not reasonably likely to have a Material Adverse Effect. No Grantor shall, without the written consent of the Agent, which shall not be expected unreasonably withheld or delayed, discontinue use of or otherwise abandon any such material Intellectual Property Collateral, or abandon any right to cause file an application for patent, trademark, or copyright, unless such Grantor shall have reasonably determined that such use or the pursuit or maintenance of such Intellectual Property Collateral is no longer reasonably necessary or desirable in the conduct of such Grantor's business and that the loss thereof would not be reasonably likely to have a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse EffectUntil the termination of the Credit Agreement, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered withagrees to provide, issued by, or applied for with the CIPO that is material annually to the business of each Grantor and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any Agent an updated Schedule of its Intellectual Property Collateral Patents, Trademarks and registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domainCopyrights.
(c) Except where failure In the event that any Grantor becomes aware that any item of the Intellectual Property Collateral is being infringed, misappropriated or otherwise violated by a third party in any material respect, such Grantor shall take such commercially reasonable actions determined in its reasonable discretion, at its expense, to do so could not reasonably be expected to cause a Material Adverse Effectprotect or enforce such Intellectual Property Collateral, each including, without limitation, suing for infringement, misappropriation or other violation and for an injunction against such infringement, misappropriation or other violation.
(d) Each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its material Trademarks included in the Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, including, without limitation, maintaining taking all reasonable steps which it deems appropriate under the circumstances to maintain substantially the quality of any and all products or services used or provided in connection with any of the Trade-marksTrademarks, consistent with the general quality of the products and services as of the date hereof, and taking all reasonable steps necessary which it deems appropriate under the circumstances to ensure that all licensed users of any of the Trade-marks Trademarks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPOCollateral, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B A hereto or otherwise in form and substance satisfactory to the Agent (an “"Intellectual Property Security Agreement”"), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authorities necessary to perfect register, file or protect in Canada record the security interest granted hereunder in such Intellectual Property Collateral.
(f) Without limiting Section 1, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(mEach entity which executes a Canadian Security Agreement Supplement (as hereinafter defined) that is not, as of the date hereof, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall execute and deliver to the Collateral AgentAgent with such written notice, or otherwise authenticate, an agreement substantially in the form of Exhibit C B hereto or otherwise in form and substance satisfactory to the Agent (an “"IP Security Agreement Supplement”") covering identifying the Intellectual Property Collateral pledged by such After-Acquired Intellectual PropertyGrantor, which IP Security Agreement Supplement shall be recorded with the CIPO.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 16, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Canadian Intellectual Property Collateral in which such Grantor has rights wherever Office and any other governmental authorities necessary to register, file or record the same may be located, including, without limitation, security interest hereunder in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 and for no other purposeIntellectual Property Collateral.
Appears in 1 contract
As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO, each Grantor agrees to take, at its expense, all commercially reasonable steps, including, without limitation, in the CIPO and any other Canadian federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each patent, industrial design, Trade-xxxx, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO or other Canadian federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavits, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to the extent failure to do so could not reasonably be expected to cause a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse Effect, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered with, issued by, or applied for with the CIPO that is material to the business of each Grantor and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domain.
(c) Except where failure to do so could not reasonably be expected to cause a Material Adverse Effect, each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO, including, without limitation, maintaining the quality of any and all products or services used or provided in connection with any of the Trade-marks, consistent with the quality of the products and services as of the date hereof, and taking all steps necessary to ensure that all licensed users of any of the Trade-marks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, USPTO or USCO and the CIPO, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B hereto or otherwise in form and substance satisfactory to the Collateral Agent (an “Intellectual Property Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO and any other Canadian federal governmental authorities necessary to perfect or protect in Canada the security interest granted hereunder in such Intellectual Property Collateral.
(f) Without limiting Section 1, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m) that is not, as of the date hereof, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall shall, as required pursuant to Section 6.12 of the Credit Agreement, execute and deliver to the Collateral Agent, or otherwise authenticate, an agreement substantially in the form of Exhibit C hereto or otherwise in form and substance satisfactory to the Collateral Agent (an “IP Security Agreement Supplement”) covering such After-Acquired Intellectual Property, which IP Security Agreement Supplement shall be recorded with the CIPO.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 1615, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Intellectual Property Collateral in which such Grantor has rights wherever the same may be located, including, without limitation, in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 15 and for no other purpose.
Appears in 1 contract
As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with material to the CIPObusiness of the Grantors, each Grantor agrees to take, at its expense, all commercially reasonable stepssteps as determined in Grantor's reasonable discretion, including, without limitation, in the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance (in accordance with the exercise of such Grantor's reasonable business discretion) of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO Canadian Intellectual Property Office or other Canadian federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavits, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, exceptproceedings initiated by third parties, in each case, to case except where the extent failure to do so could file, register, maintain or participate is not reasonably likely to have a Material Adverse Effect. No Grantor shall, without the written consent of the Agent, which shall not be expected unreasonably withheld or delayed, discontinue use of or otherwise abandon any such material Intellectual Property Collateral, or abandon any right to cause file an application for patent, trademark, or copyright, unless such Grantor shall have reasonably determined that such use or the pursuit or maintenance of such Intellectual Property Collateral is no longer reasonably necessary or desirable in the conduct of such Grantor's business and that the loss thereof would not be reasonably likely to have a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse EffectUntil the termination of the Credit Agreement, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered withagrees to provide, issued by, or applied for with the CIPO that is material annually to the business of each Grantor and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any Agent an updated Schedule of its Intellectual Property Collateral Patents, Trademarks and registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domainCopyrights.
(c) Except where failure In the event that any Grantor becomes aware that any item of the Intellectual Property Collateral is being infringed, misappropriated or otherwise violated by a third party in any material respect, such Grantor shall take such commercially reasonable actions determined in its reasonable discretion, at its expense, to do so could not reasonably be expected to cause a Material Adverse Effectprotect or enforce such Intellectual Property Collateral, each including, without limitation, suing for infringement, misappropriation or other violation and for an injunction against such infringement, misappropriation or other violation.
(d) Each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its material Trademarks included in the Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, including, without limitation, maintaining taking all reasonable steps which it deems appropriate under the circumstances to maintain substantially the quality of any and all products or services used or provided in connection with any of the Trade-marksTrademarks, consistent with the general quality of the products and services as of the date hereof, and taking all reasonable steps necessary which it deems appropriate under the circumstances to ensure that all licensed users of any of the Trade-marks Trademarks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPOCollateral, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B A hereto or otherwise in form and substance satisfactory to the Agent (an “Intellectual Property Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authorities necessary to perfect register, file or protect in Canada record the security interest granted hereunder in such Intellectual Property Collateral.
(f) Without limiting Section 1, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(mEach entity which executes a Canadian Security Agreement Supplement (as hereinafter defined) that is not, as of the date hereof, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall execute and deliver to the Collateral AgentAgent with such written notice, or otherwise authenticate, an agreement substantially in the form of Exhibit C B hereto or otherwise in form and substance satisfactory to the Agent (an “IP Security Agreement Supplement”) covering identifying the Intellectual Property Collateral pledged by such After-Acquired Intellectual PropertyGrantor, which IP Security Agreement Supplement shall be recorded with the CIPO.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 16, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Canadian Intellectual Property Collateral in which such Grantor has rights wherever Office and any other governmental authorities necessary to register, file or record the same may be located, including, without limitation, security interest hereunder in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 and for no other purposeIntellectual Property Collateral.
Appears in 1 contract
Samples: Debt Agreement (Eastman Kodak Co)
As to Intellectual Property Collateral. (a) With Except with respect to any Intellectual Property Collateral that a Grantor, in its reasonable discretion, determines is no longer worth maintaining, with respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPOowned by a Grantor, each Grantor agrees to take, at its expense, all commercially reasonable stepssteps in the United States, including, without limitation, in the CIPO United States Patent and Trademark Office, the United States Copyright Office and any other Canadian federal domestic governmental authority, as applicable, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration (to the extent registrable) and maintenance of each patentapplication and registration for any Patent, industrial design, Trade-xxxx, Trademark or copyright registration or applicationCopyright owned by such Grantor, now or hereafter included in such Intellectual Property Collateral of such GrantorCollateral, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO or United States Patent and Trademark Office, the United States Copyright Office and any other Canadian federal domestic governmental authoritiesauthority, as applicable, the filing of applications for renewal or extension, the filing of affidavitsaffidavits under Sections 8 and 15 of the U.S. Trademark Act, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, (A) as permitted by the Loan Documents or (B) to the extent failure to do so could not reasonably be expected to cause to, individually, or in the aggregate, have a Material Adverse Effect.
(b) Except as where failure to do so could not reasonably be expected to to, individually, or in the aggregate, have a Material Adverse EffectEffect or where permitted by the Loan Documents, each Grantor shall use proper statutory notice in connection with its use of owned Intellectual Property Collateral registered with, issued by, or applied for with the CIPO that is material to the business of each Grantor Parent, the Borrower and its Restricted their respective Subsidiaries. Except as could not be reasonably expected to to, individually, or in the aggregate, have a Material Adverse EffectEffect or where permitted by the Loan Documents, no Grantor shall do or permit any act or knowingly omit to do any act whereby any of its owned Intellectual Property Collateral registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domain.
(c) Except where failure to do so could not reasonably be expected to cause to, individually, or in the aggregate, have a Material Adverse Effect, but subject to pre-existing rights and licenses, each Grantor shall take all commercially reasonable steps in the United States which it (or the Collateral Administrative Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPOowned by such Grantor, including, without limitation, maintaining the quality of any and all products or services used or provided in connection with any of the Trade-marksTrademarks owned by such Grantor, consistent with such that it will not be materially inferior to the quality of the such products and or services provided by such Grantor under such Trademarks as of the date hereof, hereof and taking all commercially reasonable steps necessary to ensure that all licensed users of any of the Trade-marks such Trademarks use such consistent standards of quality, except as permitted by the Loan Documents.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with With respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation owned by abandoningeach Grantor, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPO, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B hereto or otherwise in form and substance reasonably satisfactory to the Administrative Agent (an “Intellectual Property Security Agreement”), for recording the security interest granted hereunder to the Collateral Administrative Agent in such Intellectual Property Collateral with the CIPO United States Patent and Trademark Office, the United States Copyright Office or any other Canadian federal domestic governmental authorities necessary to perfect or protect in Canada the security interest granted hereunder in such any registered or applied-for United States Intellectual Property Collateral, as applicable.
(fe) Without limiting Section 12, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m2(q) that is not, as of the date hereofClosing Date, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-markstrademarks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall shall, concurrently with the delivery of financial statements under Section 6.01(a) and (b) of the Credit Agreement (or such later date as agreed to by the Administrative Agent in its reasonable discretion), execute and deliver to the Collateral Administrative Agent, or otherwise authenticate, an agreement substantially in the form of Exhibit C hereto or otherwise in form and substance reasonably satisfactory to the Administrative Agent (an “IP Security Agreement Supplement”) covering such After-Acquired Intellectual Property, which such IP Security Agreement Supplement shall be recorded with (or, at the CIPO.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 16, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Intellectual Property Collateral in which such Grantor has rights wherever the same may be located, including, without limitation, in such license access to (i) all media in which any option of the licensed items may Administrative Agent, the Administrative Agent shall be recorded authorized to record with) the United States Patent and Trademark Office or storedthe United States Copyright Office to perfect the security interest granted hereunder in any registered or applied-for United States After-Acquired Intellectual Property, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 and for no other purposeas applicable.
Appears in 1 contract
As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with material to the CIPObusiness of the Borrower and its Subsidiaries, each Grantor agrees to take, at its expense, all commercially reasonable stepssteps as determined in Grantor’s reasonable discretion, including, without limitation, in the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance (in accordance with the exercise of such Grantor’s reasonable business discretion) of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO Canadian Intellectual Property Office or other Canadian federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavits, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to case except where the extent failure to do so could file, register or maintain is not reasonably likely to have a Material Adverse Effect. No Grantor shall, without the written consent of the Agent, which shall not be expected unreasonably withheld or delayed, discontinue use of or otherwise abandon any such material Intellectual Property Collateral, or abandon any right to cause file an application for patent, trademark, or copyright, unless such Grantor shall have determined that such use or the pursuit or maintenance of such Intellectual Property Collateral is no longer necessary or desirable in the conduct of such Grantor’s business and that the loss thereof would not be reasonably likely to have a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse EffectUntil the termination of the Credit Agreement, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered withagrees to provide, issued by, or applied for with the CIPO that is material annually to the business of each Grantor and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any Agent an updated Schedule of its Intellectual Property Collateral Patents, Trademarks and registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domainCopyrights.
(c) Except where failure In the event that any Grantor becomes aware that any item of the Intellectual Property Collateral is being infringed or misappropriated by a third party, such Grantor shall take such commercially reasonable actions determined in its reasonable discretion, at its expense, to do so could not reasonably be expected to cause a Material Adverse Effectprotect or enforce such Intellectual Property Collateral, each including, without limitation, suing for infringement or misappropriation and for an injunction against such infringement or misappropriation.
(d) Each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its material Trademarks included in the Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, including, without limitation, maintaining substantially the quality of any and all products or services used or provided in connection with any of the Trade-marksTrademarks, consistent with the general quality of the products and services as of the date hereof, and taking all steps reasonably necessary to ensure that all licensed users of any of the Trade-marks Trademarks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered withCollateral, issued by, or applied for with upon the USPTO, or USCO reasonable request of Agent made upon the occurrence and during the CIPOcontinuance of an Event of Default, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B A hereto or otherwise in form and substance satisfactory to the Agent (an “Intellectual Property Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authorities necessary to perfect register, file or protect in Canada record the security interest granted hereunder in such Intellectual Property Collateral.
(f) Without limiting Section 1Upon the occurrence and during the continuance of an Event of Default, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m) that is not, as of the date hereof, and each entity which executes a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Canadian Security Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor Supplement shall execute and deliver to the Collateral AgentAgent with such written notice, or otherwise authenticate, an agreement substantially in the form of Exhibit C B hereto or otherwise in form and substance satisfactory to the Agent (an “IP Security Agreement Supplement”) covering such After-Acquired Intellectual Property, which IP Security Agreement Supplement shall be recorded with the CIPO.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 16, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Canadian Intellectual Property Collateral in which such Grantor has rights wherever Office and any other governmental authorities necessary to register, file or record the same may be located, including, without limitation, security interest hereunder in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 and for no other purposeIntellectual Property.
Appears in 1 contract
As to Intellectual Property Collateral. (a) With Except as could not reasonably be expected to have a Material Adverse Effect, with respect to each item of its Registered Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, each Grantor agrees to take, at its expense, all commercially reasonable steps, including, without limitation, in the CIPO USPTO and any other Canadian federal governmental authorityUSCO, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO or other Canadian federal governmental authoritiesUSPTO and USCO, the filing of applications for renewal or extension, the filing of affidavitsaffidavits under Sections 8 and 15 of the U.S. Trademark Act, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to the extent failure to do so could not reasonably be expected to cause a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse Effect, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered with, issued by, or applied for with the CIPO USPTO or USCO that is material to the business of each Grantor the Parent Borrower and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any of its Registered Intellectual Property Collateral registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domain.
(c) Except where failure to do so could not reasonably be expected to cause a Material Adverse Effect, each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO, including, without limitation, maintaining the quality of any and all products or services used or provided in connection with any of the Trade-marks, consistent with the quality of the products and services as of the date hereof, and taking all steps necessary to ensure that all licensed users of any of the Trade-marks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to and (cb) of this Section 9 with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(ed) With respect to its Registered Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPOCollateral, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B hereto (an “Intellectual Property IP Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Registered Intellectual Property Collateral with the CIPO USPTO and any other Canadian federal governmental authorities necessary to perfect or protect in Canada the security interest granted hereunder in such Intellectual Property CollateralUSCO.
(fe) Without limiting Section 1, each Grantor (other than Holdings) agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m1(p) that is not, as of the date hereofClosing Date, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-markstrademarks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall shall, to the extent required pursuant to Section 6.12 of the Credit Agreement, execute and deliver to the Collateral Agent, or otherwise authenticate, an agreement substantially in the form of Exhibit C hereto (an “IP Security Agreement Supplement”) Supplement covering such After-Acquired Intellectual Property, Property which IP Security Agreement Supplement shall be recorded with the CIPOUSPTO and USCO.
(gf) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 1614, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) subject, in the case of Trademarks, to sufficient rights to quality control and inspection in favor of such Grantor to avoid the risk of invalidation of such Trademarks, to use, assign or sublicense any Intellectual Property Collateral in which such Grantor has rights wherever the same may be located, including, without limitation, in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 14 and for no other purpose.
Appears in 1 contract
Samples: Security Agreement (PPD, Inc.)
As to Intellectual Property Collateral. (a) With respect to each item of its Intellectual Property Collateral registered with, issued by, or applied for with material to the CIPObusiness of the Grantors, each Grantor agrees to take, at its expense, all commercially reasonable stepssteps as determined in Grantor's reasonable discretion, including, without limitation, in the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authority, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance (in accordance with the exercise of such Grantor's reasonable business discretion) of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO Canadian Intellectual Property Office or other Canadian federal governmental authorities, the filing of applications for renewal or extension, the filing of affidavits, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, exceptproceedings initiated by third parties, in each case, to case except where the extent failure to do so could file, register, maintain or participate is not reasonably likely to have a Material Adverse Effect. No Grantor shall, without the written consent of the Agent, which shall not be expected unreasonably withheld or delayed, discontinue use of or otherwise abandon any such material Intellectual Property Collateral, or abandon any right to cause file an application for patent, trademark, or copyright, unless such Grantor shall have reasonably determined that such use or the pursuit or maintenance of such Intellectual Property Collateral is no longer resonably necessary or desirable in the conduct of such Grantor's business and that the loss thereof would not be reasonably likely to have a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse EffectUntil the termination of the Credit Agreement, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered withagrees to provide, issued by, or applied for with the CIPO that is material annually to the business of each Grantor and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any Agent an updated Schedule of its Intellectual Property Collateral Patents, Trademarks and registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domainCopyrights.
(c) Except where failure In the event that any Grantor becomes aware that any item of the Intellectual Property Collateral is being infringed, misappropriated or otherwise violated by a third party in any material respect, such Grantor shall take such commercially reasonable actions determined in its reasonable discretion, at its expense, to do so could not reasonably be expected to cause a Material Adverse Effectprotect or enforce such Intellectual Property Collateral, each including, without limitation, suing for infringement, misappropriation or other violation and for an injunction against such infringement, misappropriation or other violation.
(d) Each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its material Trademarks included in the Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, including, without limitation, maintaining taking all reasonable steps which it deems appropriate under the circumstances to maintain substantially the quality of any and all products or services used or provided in connection with any of the Trade-marksTrademarks, consistent with the general quality of the products and services as of the date hereof, and taking all reasonable steps necessary which it deems appropriate under the circumstances to ensure that all licensed users of any of the Trade-marks Trademarks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to (c) with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to its business or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(e) With respect to its Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPOCollateral, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B A hereto or otherwise in form and substance satisfactory to the Agent (an “Intellectual Property Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Intellectual Property Collateral with the CIPO Canadian Intellectual Property Office and any other Canadian federal governmental authorities necessary to perfect register, file or protect in Canada record the security interest granted hereunder in such Intellectual Property Collateral.
(f) Without limiting Section 1, each Grantor agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(mEach entity which executes a Canadian Security Agreement Supplement (as hereinafter defined) that is not, as of the date hereof, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-marks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall execute and deliver to the Collateral AgentAgent with such written notice, or otherwise authenticate, an agreement substantially in the form of Exhibit C B hereto or otherwise in form and substance satisfactory to the Agent (an “IP Security Agreement Supplement”) covering identifying the Intellectual Property Collateral pledged by such After-Acquired Intellectual PropertyGrantor, which IP Security Agreement Supplement shall be recorded with the CIPO.
(g) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 16, each Grantor grants to the Collateral Agent an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign or sublicense any Canadian Intellectual Property Collateral in which such Grantor has rights wherever Office and any other governmental authorities necessary to register, file or record the same may be located, including, without limitation, security interest hereunder in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 and for no other purposeIntellectual Property Collateral.
Appears in 1 contract
Samples: Debt Agreement (Eastman Kodak Co)
As to Intellectual Property Collateral. (a) With Except as could not reasonably be expected to have a Material Adverse Effect, with respect to each item of its Registered Intellectual Property Collateral registered with, issued by, or applied for with the CIPOCollateral, each Grantor agrees to take, at its expense, all commercially reasonable steps, including, without limitation, in the CIPO USPTO and any other Canadian federal governmental authorityUSCO, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each patent, industrial design, Trade-xxxxtrademark, or copyright registration or application, now or hereafter included in such Intellectual Property Collateral of such Grantor, including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the CIPO or other Canadian federal governmental authoritiesUSPTO and USCO, the filing of applications for renewal or extension, the filing of affidavitsaffidavits under Sections 8 and 15 of the U.S. Trademark Act, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings, except, in each case, to the extent failure to do so could not reasonably be expected to cause a Material Adverse Effect.
(b) Except as could not reasonably be expected to have a Material Adverse Effect, each Grantor shall use proper statutory notice in connection with its use of Intellectual Property Collateral registered with, issued by, or applied for with the CIPO USPTO or USCO that is material to the business of each Grantor the Borrower and its Restricted Subsidiaries. Except as could not be reasonably expected to have a Material Adverse Effect, no Grantor shall do or permit any act or knowingly omit to do any act whereby any of its Registered Intellectual Property Collateral registered with, issued by, or applied for with the CIPO may lapse or become invalid or unenforceable or placed in the public domain.
(c) Except where failure to do so could not reasonably be expected to cause a Material Adverse Effect, each Grantor shall take all commercially reasonable steps which it or the Collateral Agent (during the continuation of an Event of Default) deems reasonable and appropriate under the circumstances to preserve and protect each item of its Intellectual Property Collateral registered with, issued by, or applied for with the CIPO, including, without limitation, maintaining the quality of any and all products or services used or provided in connection with any of the Trade-marks, consistent with the quality of the products and services as of the date hereof, and taking all steps necessary to ensure that all licensed users of any of the Trade-marks use such consistent standards of quality.
(d) Notwithstanding the foregoing, each Grantor may refrain from taking, or shall be permitted to take, as the case may be, any actions otherwise prohibited or required by the foregoing Section 10 clauses (a) to and (cb) of this Section 9 with respect to Intellectual Property Collateral which it determines in its good faith commercially reasonable business judgment not to be useful to the business of the Borrower and its business Restricted Subsidiaries or worth protecting or maintaining (including without limitation by abandoning, failing to defend or maintain or causing any such Intellectual Property Collateral to become unenforceable, abandoned, invalidated or publicly available).
(ed) With respect to its Registered Intellectual Property Collateral registered with, issued by, or applied for with the USPTO, or USCO and the CIPOCollateral, each Grantor agrees to execute or otherwise authenticate an agreement, in substantially the form set forth in Exhibit B hereto (an “Intellectual Property IP Security Agreement”), for recording the security interest granted hereunder to the Collateral Agent in such Registered Intellectual Property Collateral with the CIPO USPTO and any other Canadian federal governmental authorities necessary to perfect or protect in Canada the security interest granted hereunder in such Intellectual Property CollateralUSCO.
(fe) Without limiting Section 1, each Grantor (other than Holdings) agrees that should it obtain an ownership interest in any item of the type set forth in Section 1(m1(p) that is not, as of the date hereofClosing Date, a part of the Intellectual Property Collateral (“After-Acquired Intellectual Property”)
(i) the provisions of this Agreement shall automatically apply thereto, and (ii) any such After-Acquired Intellectual Property and, in the case of Trade-markstrademarks, the goodwill symbolized thereby, shall automatically become part of the Intellectual Property Collateral subject to the terms and conditions of this Agreement with respect thereto. Each Grantor shall shall, to the extent required pursuant to Section 6.12 of the Credit Agreement, execute and deliver to the Collateral Agent, or otherwise authenticate, an agreement substantially in the form of Exhibit C hereto (an “IP Security Agreement Supplement”) Supplement covering such After-Acquired Intellectual Property, Property which IP Security Agreement Supplement shall be recorded promptly by such Grantor with the CIPOUSPTO and USCO.
(gf) At such time as the Collateral Agent is lawfully entitled to exercise its rights and remedies under Section 1614, each Grantor grants to the Collateral Agent an irrevocable, non-non- exclusive license (exercisable without payment of royalty or other compensation to such Grantor) subject, in the case of Trademarks, to sufficient rights to quality control and inspection in favor of such Grantor to avoid the risk of invalidation of such Trademarks, to use, assign or sublicense any Intellectual Property Collateral in which such Grantor has rights wherever the same may be located, including, without limitation, in such license access to (i) all media in which any of the licensed items may be recorded or stored, and (ii) all software and computer programs used for compilation or print-out. The license granted under this Section is to enable the Collateral Agent to exercise its rights and remedies under Section 16 14 and for no other purpose.
Appears in 1 contract
Samples: First Lien Security Agreement (ZoomInfo Technologies Inc.)
