Certain Covenants and Provisions Regarding Patent, Trademark and Copyright Collateral. (a) Each Grantor agrees that it will not, nor will it permit any of its licensees to, do any act, or omit to do any act, whereby any Patent owned by such Grantor which is material to the conduct of such Grantor’s business may become invalidated, unenforceable, or dedicated to the public, and agrees that it shall use commercially reasonable efforts to continue to mxxx any products covered by a Patent with the relevant patent number as necessary and sufficient to establish and preserve its rights under applicable patent laws; provided, however, that nothing in this Section 4.10(a) shall prevent such Grantor from discontinuing the prosecution or maintenance of such Patent if, in the reasonable business judgment of such Grantor, such Patent is no longer necessary or desirable in the conduct of its business. (b) Each Grantor (either itself or through its licensees or its sublicenses) will, for each Trademark material to the conduct of such Grantor’s business, use its commercially reasonable efforts to (i) maintain each such registered Trademark in full force free from any claim of abandonment or invalidity for nonuse, (ii) maintain the quality of products and services offered under such Trademark, (iii) display such Trademark with notice of Federal or foreign registration to the extent necessary and sufficient to establish and preserve its rights under applicable law and (iv) not knowingly use or knowingly permit the use of such Trademark in violation of any third party rights; provided, however, that nothing in this Section 4.10(b) shall prevent such Grantor from discontinuing the use, prosecution, or maintenance of such Trademark, if such discontinuance is, in the reasonable business judgment of such Grantor, no longer necessary or desirable in the conduct of its business; provided, further, that nothing in this Section 4.10(b) shall require providing notice in connection with office actions for pending Patent, Trademark or Copyright applications.
Appears in 2 contracts
Samples: Security Agreement (Solutia Inc), Security Agreement (Solutia Inc)
Certain Covenants and Provisions Regarding Patent, Trademark and Copyright Collateral. (a) Each Grantor agrees that it will not, nor will it permit any of its licensees to, do any act, or omit to do any act, whereby any Patent owned by such Grantor which is material to the conduct con- duct of such Grantor’s business may become invalidated, unenforceable, invalidated or dedicated to the public, and agrees that it shall use commercially reasonable efforts to continue to mxxx xxxx any products covered by a Patent with the relevant patent number as necessary and sufficient to establish and preserve its maximum rights under applicable patent laws; provided, however, that nothing in this Section 4.10(a) shall prevent such Grantor from discontinuing the prosecution or maintenance of such Patent if, in the reasonable business judgment of such Grantor, such Patent is no longer necessary or desirable in the conduct of its business.
(b) Each Grantor (either itself or through its licensees or its sublicenses) will, for each Trademark material to the conduct of such Grantor’s business, use its commercially reasonable efforts to (i) maintain each such registered Trademark in full force free from any claim of abandonment or invalidity for nonusenon-use, (ii) maintain the quality of products and services offered under such Trademark, (iii) display such Trademark with notice of Federal or foreign registration to the extent necessary and sufficient to establish and preserve its rights under applicable law and (iv) not knowingly use or knowingly permit the use of such Trademark in violation of any third party rights; provided.
(c) Each Grantor (either itself or through licensees) will, howeverfor each work covered by a material Copyright, publish, reproduce, display, adopt and distribute such work with such appropriate copyright notice as necessary and sufficient to establish and preserve its maximum rights under applicable copyright laws.
(d) Each Grantor shall notify the Collateral Agent as soon as practicable if it knows or has reason to know that nothing in this Section 4.10(b) shall prevent such Grantor from discontinuing the use, prosecution, or maintenance of such Trademark, if such discontinuance is, in the reasonable business judgment of such Grantor, no longer necessary or desirable in the conduct of its business; provided, further, that nothing in this Section 4.10(b) shall require providing notice in connection with office actions for pending any Patent, Trademark or Copyright applicationsmaterial to the conduct of its business may become abandoned, lost or dedicated to the public, or of any adverse determination or development including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, United States Copyright Office or any court or similar office of any country regarding such Grantor’s ownership of any Patent, Trademark or Copyright, its right to register the same, or to keep and maintain the same. Notwithstanding the foregoing, the Grantors shall not be obligated to notify the Collateral Agent of any determinations or developments regarding any Patent, Trademark or Copyright in any ex-parte proceeding with respect to the prosecution of any application in the United States Patent and Trademark Office, United States Copyright Office or similar office in any other jurisdiction.
(e) At the end of each fiscal quarter, each Grantor shall promptly provide the Collateral Agent with a document listing any new application or registration for any Patent, Trademark or Copyright that was filed by or on behalf of such Grantor since the last such document was provided to the Collateral Agent by such Grantor, and, shall execute and deliver any and all agreements, instruments, documents and papers as the Collateral Agent may reasonably request to evidence the Collateral Agent’s security interest in such Patent, Trademark or Copyright, and each Grantor hereby appoints the Collateral Agent as its attorney-in-fact to execute and file such writings solely for the foregoing purposes, all acts of such attor- ney being hereby ratified and confirmed; such power, being coupled with an interest, is irrevocable.
(f) Each Grantor will take all necessary steps that are consistent with its reasonable business judgment and the practice in any proceeding before the United States Patent and Trademark Office, United States Copyright Office or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof, to maintain and pursue each material application relating to the Patents, Trademarks and/or Copyrights (and to obtain the relevant grant or registration) and to maintain each issued Patent and each registration of the Trademarks and Copyrights that is material to the conduct of any Grantor’s business, including timely filings of applications for renewal, affidavits of use, affidavits of incontestability and payment of maintenance fees, and, if consistent with its reasonable business judgment, to initiate opposition, interference and cancellation proceedings against third parties.
(g) In the event that any Grantor has reason to believe that any Collateral consisting of a Patent, Trademark or Copyright has been or is about to be infringed, misappropriated or diluted by a third party, and such infringement, misappropriation or dilution is expected to have a material adverse effect on such Grantor’s business, such Grantor promptly shall notify the Collateral Agent and shall, if consistent with its reasonable business judgment, promptly xxx for infringement, misappropriation or dilution and to recover any and all damages for such infringement, misappropriation or dilution, and take such other actions as are appropriate and consistent with its reasonable business judgment under the circumstances to protect such Collateral.
(h) To each Grantor’s knowledge, on and as of the date hereof, (i) except as set forth in Schedule V annexed hereto, there is no material violation by others of any right of such Grantor with respect to any Copyright, Patent or Trademark listed in Schedules 15(a) and 15(b) of the Perfection Certificate, respectively, pledged by it under the name of such Grantor, (ii) such Grantor is not infringing upon any Copyright, Patent or Trademark of any other Person other than such infringement that would not (or could not reasonably be expected to) result in a Collateral Material Adverse Effect with respect to the Intellectual Property and (iii) no proceedings are currently pending against such Grantor, alleging any such violation, except as may be set forth in Schedule V.
(i) Upon and during the continuance of an Event of Default, each Grantor shall use its commercially reasonable efforts to obtain all requisite consents or approvals by the licensor of each Copyright License, Patent License or Trademark License to effect the assignment of all of such Grantor’s right, title and interest thereunder to the Collateral Agent or its designee.
Appears in 2 contracts
Samples: Security Agreement (Constar International Inc), Security Agreement (Constar Inc)
Certain Covenants and Provisions Regarding Patent, Trademark and Copyright Collateral. (a) Each Other than Patents determined by the Grantor, in the exercise of its reasonable business judgment, to be no longer material to the conduct of the business, each Grantor agrees that it will not, nor will it permit any of its licensees to, do any act, or omit to do any act, whereby any Patent owned by such Grantor which is material to the conduct of such Grantor’s 's business may become invalidated, unenforceable, invalidated or dedicated to the public, and agrees that it shall use commercially reasonable efforts to continue to mxxx mark any products covered by a Patent with the relevant patent number as xx necessary and sufficient to establish and preserve its maximum rights under applicable patent laws; provided, however, that nothing in this Section 4.10(a) shall prevent such Grantor from discontinuing the prosecution or maintenance of such Patent if, in the reasonable business judgment of such Grantor, such Patent is no longer necessary or desirable in the conduct of its business.
(b) Each Other than Trademarks determined by the Grantor, in the exercise of its reasonable business judgment, to be no longer material to the conduct of the business, each Grantor (either itself or through its licensees or its sublicenses) will, for each Trademark material to the conduct of such Grantor’s 's business, use its commercially reasonable efforts to (i) maintain each such registered Trademark in full force free from any claim of abandonment or invalidity for nonuse, (ii) maintain the quality of products and services offered under such Trademark, (iii) display such Trademark with notice of Federal or foreign registration to the extent necessary and sufficient to establish and preserve its rights under applicable law and (iv) not knowingly use or knowingly permit the use of such Trademark in violation of any third party rights; provided, however, that nothing in this Section 4.10(b.
(c) shall prevent such Grantor from discontinuing Other than Copyrights determined by the use, prosecution, or maintenance of such Trademark, if such discontinuance isGrantor, in the exercise of its reasonable business judgment of such Grantorjudgment, to be no longer necessary or desirable in material to the conduct of the business, each Grantor (either itself or through licensees) will, for each work covered by a material Copyright, publish, reproduce, display, adopt and distribute such work with such appropriate copyright notice as necessary and sufficient to establish and preserve its business; provided, further, maximum rights under applicable copyright laws.
(d) Each Grantor shall notify the Collateral Agent as soon as practicable if it knows or has reason to know that nothing in this Section 4.10(b) shall require providing notice in connection with office actions for pending any Patent, Trademark or Copyright applicationsmaterial to the conduct of its business may become abandoned, lost or dedicated to the public, or of any adverse determination or development including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office or United States Copyright Office (or any court or similar office of any country) regarding such Grantor's ownership of any Patent, Trademark or Copyright, or its right to register the same, or to keep and maintain the same.
(e) Where any Grantor, either itself or through any agent, employee, licensee or designee, files an application for any Patent, Trademark or Copyright (or for the registration of any Trademark or Copyright) with the United States Patent and Trademark Office, United States Copyright Office, or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof, such Grantor shall within 30 days of receipt of any certificate of issuance of registration, inform the Collateral Agent of such filing, and upon the request of the Collateral Agent, execute and deliver any and all agreements, instruments, documents and papers as the Collateral Agent may reasonably request to evidence the Collateral Agent's security interest in such Patent, Trademark or Copyright or application therefor, and each Grantor hereby appoints the Collateral Agent as its attorney-in-fact to execute and file such writings solely for the foregoing purposes, all acts of such attorney being hereby ratified and confirmed; such power, being coupled with an interest, is irrevocable.
(f) Each Grantor will take all necessary steps that are consistent with its reasonable business judgment and the practice in any proceeding before the United States Patent and Trademark Office, United States Copyright Office or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof, to maintain and pursue each material application relating to the Patents, Trademarks, and/or Copyrights (and to obtain the relevant grant or registration) and to maintain each issued Patent and each registration of the Trademarks or Copyrights that is material to the conduct of any Grantor's business, including timely filings of applications for renewal, affidavits of use, affidavits of incontestability and payment of maintenance fees, and, if consistent with commercially reasonable business judgment, to initiate opposition, interference and cancellation proceedings against third parties.
(g) In the event that any Grantor has reason to believe that any Collateral consisting of a Patent, Trademark or Copyright that is material to the conduct of the business has been or is about to be infringed, misappropriated or diluted by a third party, such Grantor promptly shall notify the Collateral Agent and shall, if consistent with reasonable business judgment, promptly sue for infringement, misappropriation or dilution and to recover any xxd all damages for such infringement, misappropriation or dilution, and take such other actions as are reasonably appropriate under the circumstances to protect such Collateral.
(h) To each Grantor's knowledge, on and as of the date hereof, there is no material violation by others of any right of such Grantor with respect to any Copyright, Patent or Trademark listed in Schedules 14(a) and 14(b) of the Perfection Certificate, respectively, pledged by it under the name of such Grantor, (ii) such Grantor is not infringing upon any Copyright, Patent or Trademark of any other Person other than such infringement that, individually or in the aggregate, would not (or would not reasonably be expected to) result in a material adverse effect on the value or utility of the Collateral consisting of Intellectual Property or any portion thereof material to the use and operation of the Collateral and (iii) no proceedings have been instituted or are pending against such Grantor or, to such Grantor's knowledge, threatened, and no claim against such Grantor has been received by such Grantor, alleging any such violation.
(i) Upon and during the continuance of an Event of Default, each Grantor shall upon the written request of the Collateral Agent use its commercially reasonable efforts to obtain all requisite consents or approvals by the licensor of each Copyright License, Patent License or Trademark License to effect the assignment of all of such Grantor's right, title and interest thereunder to the Collateral Agent or its designee. Notwithstanding anything herein to the contrary, any Grantor may, for (i) commercially reasonable cause, or (ii) in the exercise of its reasonable judgment, abandon or allow to become lost or dedicated to the public any Patent, Trademark or Copyright.
Appears in 1 contract
Samples: Security Agreement (Consolidated Communications Texas Holdings, Inc.)
Certain Covenants and Provisions Regarding Patent, Trademark and Copyright Collateral. (a) Each Grantor agrees that it will not, nor will it permit any of its licensees to, do any act, or omit to do any act, whereby any Patent owned by such Grantor which is material to the conduct of such Grantor’s business may become invalidated, unenforceable, or dedicated to the publicpublic (other than at the end of its statutory term), and agrees that it shall use commercially reasonable efforts to continue to mxxx any products covered by a Patent with the relevant patent number as necessary and sufficient to establish and preserve its rights under applicable patent laws; provided, however, that nothing in this Section 4.10(a) shall prevent such Grantor from discontinuing the prosecution or maintenance of such Patent if, in the reasonable business judgment of such Grantor, such Patent is no longer necessary or desirable in the conduct of its business.
(b) Each Grantor (either itself or through its licensees or its sublicenses) will, for each Trademark owned by such Grantor which is material to the conduct of such Grantor’s business, use its commercially reasonable efforts to (i) maintain each such registered Trademark in full force free from any claim of abandonment or invalidity for nonuse, (ii) maintain substantially the same (or higher) quality of products and services offered under such TrademarkTrademark as are currently maintained, (iii) display such Trademark with notice of Federal or foreign registration to the extent necessary and sufficient to establish and preserve its rights under applicable law and (iv) not knowingly use or knowingly permit the use of such Trademark in violation of any third party rights; provided, however, that nothing in this Section 4.10(b) shall prevent such Grantor from discontinuing the use, prosecution, or maintenance of such Trademark, if such discontinuance is, in the reasonable business judgment of such Grantor, no longer necessary or desirable in the conduct of its business.
(c) Each Grantor shall promptly notify the Collateral Agent upon such Grantor obtaining knowledge of any Patent, Trademark or Copyright owned by such Grantor and material to the conduct of its business which may become abandoned, lost, unenforceable, invalidated, or dedicated to the public (other than at the end of such item’s statutory term), or of any materially adverse determination or development including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office or United States Copyright Office (or any court or similar office of any country) regarding such Grantor’s ownership of any Patent, Trademark or Copyright material to the conduct of its business, or its right to register the same, or to keep and maintain the same; provided, further, that nothing in this Section 4.10(b4.10(c) shall require providing notice in connection with office officer actions for pending Patent, Trademark or Copyright Copyrights applications.
(d) If any Grantor shall at any time after the date hereof (i) obtain any ownership or other rights in and/or to any additional Intellectual Property (including any Trademark applications filed by such Grantor on an “intent-to-use” basis for which evidence of the use of such Trademarks in interstate commerce has been submitted to and duly accepted by the United States Patent and Trademark Office pursuant to 15 U.S.C. Section 1060(a) (or a successor provision)) or (ii) become entitled to the benefit of any additional Collateral consisting of Intellectual Property or any renewal or extension thereof, including any reissue, division, continuation, or continuation-in-part of any Collateral consisting of Intellectual Property, or any improvement on any Collateral consisting of Intellectual Property, the provisions of this Agreement shall automatically apply thereto and any such item described in the preceding clause (i) or (ii) (other than any Excluded Property) shall automatically constitute Collateral as if such would have constituted Collateral at the time of execution hereof and such Collateral consisting of Intellectual Property (other than any Excluded Property) shall be subject to the Lien and security interest created by this Agreement without further action by any party. Each Grantor shall within thirty (30) days with respect to Copyrights and within ninety (90) days with respect to Patents and Trademarks provide to the Collateral Agent written notice of any of the foregoing Collateral consisting of Intellectual Property owned by such Grantor which is the subject of a registration or application in the United States and confirm the attachment of the Lien and security interest created by this Agreement to any rights described in clauses (i) and (ii) above by execution and delivery, within ten (10) days of providing such notice or such longer period as may be determined by the Collateral Agent in its sole discretion of the acquisition by such Grantor of such Intellectual Property, of an instrument in form and substance reasonably acceptable to the Collateral Agent and the filing of any instruments or statements as shall be reasonably necessary or requested by the Collateral Agent to create, record, preserve, protect or perfect the Collateral Agent’s lien and security interest in such Intellectual Property.
(e) Each Grantor will take all necessary steps in any proceeding before the United States Patent and Trademark Office or United States Copyright Office, or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof, to maintain and pursue each material application relating to the Patents, Trademarks and/or Copyrights (and to obtain the relevant grant or registration) and to maintain each issued Patent and each registration of the Trademarks or Copyrights owned by such Grantor that is material to the conduct of any Grantor’s business, including timely filings of applications for renewal, affidavits of use, affidavits of incontestability and payment of maintenance fees, and, if consistent with such Grantor’s commercially reasonable business judgment, to initiate opposition, interference and cancellation proceedings against third parties; provided, however, that nothing in this Section 4.10(f) shall prevent such Grantor from failing to maintain or pursue any such Trademark or Patent if, in the reasonable business judgment of such Grantor, the likely costs of such maintenance or pursuit are likely to outweigh the likely benefits of such maintenance or pursuit and such failure could not reasonably be expected to have a Material Adverse Effect.
(f) In the event that any Grantor has actual knowledge that any Collateral consisting of a material Patent, Trademark or Copyright owned or exclusively licensed by such Grantor has been or is about to be infringed, misappropriated or diluted by a third party, such Grantor promptly shall notify the Collateral Agent and, if within such Grantor’s good faith business judgment, the likely benefits outweigh the likely costs, shall promptly sxx for infringement, misappropriation or dilution and to recover any and all damages for such infringement, misappropriation or dilution, and shall take such actions as are deemed by such Grantor in its reasonable business judgment to be reasonably appropriate under the circumstances to protect such Collateral.
(g) For the purpose of enabling the Collateral Agent, during the continuance of an Event of Default, to exercise rights and remedies under Article V hereof at such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, and for no other purpose, each Grantor hereby grants to the Collateral Agent an irrevocable, non-exclusive license and, to the extent permitted under Intellectual Property Licenses granting such Grantor rights in Intellectual Property, sublicense (in each case, exercisable without payment of royalties or other compensation to such Grantor) to use, license or sublicense any of the Intellectual Property included in the Collateral, wherever the same may be located (excluding, for the avoidance of doubt, any rights under any Intellectual Property License that are prohibited by the terms of such License from being so licensed or to the extent that the grant of such license would otherwise breach the terms of any agreement to which such Grantor as a party). Such license shall include access to all media in which any of the licensed items may be recorded or stored and to all computer programs used for the compilation or printout hereof, to the extent permitted under license agreements governing use of such computer programs. With respect to Trademarks owned by such Grantor, the license granted hereunder shall be subject to sufficient rights of quality control and inspection in favor of such Grantor to avoid the risk of invalidation of such Trademarks.
(h) Unless there shall occur and be continuing any Event of Default, each Grantor shall have the right to commence and prosecute in its own name, as the party in interest, for its own benefit and at the sole cost and expense of the Grantors, such applications for protection of the Intellectual Property owned by such Grantor and suits, proceedings or other actions to prevent the infringement, misappropriation, counterfeiting, unfair competition, dilution, diminution in value or other damage as are necessary to protect the Intellectual Property owned and/or exclusively licensed by such Grantors. Upon the occurrence and during the continuance of any Event of Default, upon notice to the applicable Grantor, the Collateral Agent shall have the right but shall in no way be obligated to file applications for protection of the Intellectual Property owned by any Grantor and/or bring suit in the name of any Grantor, the Collateral Agent or the Secured Parties to enforce such Intellectual Property and any license thereunder. In the event of such suit filed in the name of any Grantor by the Collateral Agent or the Secured Parties upon the occurrence and during the continuance of any Event of Default, each Grantor shall, at the reasonable request of the Collateral Agent, do any and all lawful acts and execute any and all documents requested by the Collateral Agent in aid of such enforcement and the Grantors shall promptly reimburse and indemnify the Collateral Agent for all costs and expenses incurred by the Collateral Agent in the exercise of its rights under this Section 4.10(i) in accordance with Section 9.05 of the Credit Agreement. In the event that the Collateral Agent shall elect not to bring suit to enforce the Intellectual Property owned and/or exclusively licensed by any Grantor, each Grantor agrees, at the reasonable request of the Collateral Agent, to take all commercially reasonable actions necessary, whether by suit, proceeding or other action, to prevent the infringement, counterfeiting, unfair competition, dilution, diminution in value of or other damage to any of the Intellectual Property by any Person.
Appears in 1 contract
Samples: Security Agreement (Solutia Inc)
Certain Covenants and Provisions Regarding Patent, Trademark and Copyright Collateral. (a) Each Grantor agrees that it will not, nor will it permit any of its licensees to, do any act, or omit to do any act, whereby any Patent owned by such Grantor which is material to the conduct of such Grantor’s business may become invalidated, unenforceable, invalidated or dedicated to the public, and agrees that it shall use commercially reasonable efforts to continue to mxxx xxxx any products covered by a Patent with the relevant patent number as necessary and sufficient to establish and preserve its maximum rights under applicable patent laws; provided, however, that nothing in this Section 4.10(a) shall prevent such Grantor from discontinuing the prosecution or maintenance of such Patent if, in the reasonable business judgment of such Grantor, such Patent is no longer necessary or desirable in the conduct of its business.
(b) Each Grantor (either itself or through its licensees or its sublicenses) will, for each Trademark material to the conduct of such Grantor’s business, use its commercially reasonable efforts to (i) maintain each such registered Trademark in full force free from any claim of abandonment or invalidity for nonusenon- use, (ii) maintain the quality of products and services offered under such Trademark, (iii) display such Trademark with notice of Federal or foreign registration to the extent necessary and sufficient to establish and preserve its rights under applicable law and (iv) not knowingly use or knowingly permit the use of such Trademark in violation of any third party rights; provided.
(c) Each Grantor (either itself or through licensees) will, howeverfor each work covered by a material Copyright, publish, reproduce, display, adopt and distribute such work with such appropriate copyright notice as necessary and sufficient to establish and preserve its maximum rights under applicable copyright laws.
(d) Each Grantor shall notify the Collateral Agent as soon as practicable if it knows or has reason to know that nothing in this Section 4.10(b) shall prevent such Grantor from discontinuing the use, prosecution, or maintenance of such Trademark, if such discontinuance is, in the reasonable business judgment of such Grantor, no longer necessary or desirable in the conduct of its business; provided, further, that nothing in this Section 4.10(b) shall require providing notice in connection with office actions for pending any Patent, Trademark or Copyright applicationsmaterial to the conduct of its business may become abandoned, lost or dedicated to the public, or of any adverse determination or development including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, United States Copyright Office or any court or similar office of any country regarding such Grantor’s ownership of any Patent, Trademark or Copyright, its right to register the same, or to keep and maintain the same. Notwithstanding the foregoing, the Grantors shall not be obligated to notify the Collateral Agent of any determinations or developments regarding any Patent, Trademark or Copyright in any ex-parte proceeding with respect to the prosecution of any application in the United States Patent and Trademark Office, United States Copyright Office or similar office in any other jurisdiction.
(e) At the end of each fiscal quarter, each Grantor shall promptly provide the Collateral Agent with a document listing any new application or registration for any Patent, Trademark or Copyright that was filed by or on behalf of such Grantor with the United States Patent and Trademark Office, United States Copyright Office or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof since the last such document was provided to the Collateral Agent by such Grantor, and shall execute and deliver any and all agreements, instruments, documents and papers as the Collateral Agent may reasonably request to evidence the Collateral Agent’s security interest in such Patent, Trademark or Copyright, and each Grantor hereby appoints the Collateral Agent as its attorney-in-fact to execute and file such writings solely for the foregoing purposes, all acts of such attorney being hereby ratified and confirmed; such power, being coupled with an interest, is irrevocable.
(f) Each Grantor will take all necessary steps that are consistent with its reasonable business judgment and the practice in any proceeding before the United States Patent and Trademark Office, United States Copyright Office or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof, to maintain and pursue each material application relating to the Patents, Trademarks and/or Copyrights (and to obtain the relevant grant or registration) and to maintain each issued Patent and each registration of the Trademarks and Copyrights that is material to the conduct of any Grantor’s business, including timely filings of applications for renewal, affidavits of use, affidavits of incontestability and payment of maintenance fees, and, if consistent with its reasonable business judgment, to initiate opposition, interference and cancellation proceedings against third parties.
(g) In the event that any Grantor has reason to believe that any Collateral consisting of a Patent, Trademark or Copyright has been or is about to be infringed, misappropriated or diluted by a third party, and such infringement, misappropriation or dilution is expected to have a material adverse effect on such Grantor’s business, such Grantor promptly shall notify the Collateral Agent and shall, if consistent with its reasonable business judgment, promptly xxx for infringement, misappropriation or dilution and to recover any and all damages for such infringement, misappropriation or dilution, and take such other actions as are appropriate and consistent with its reasonable business judgment under the circumstances to protect such Collateral.
(h) To each Grantor’s knowledge, on and as of the Original Effective Date and the date hereof, (i) except as set forth in Schedule V annexed hereto, there is no material violation by others of any right of such Grantor with respect to any Copyright, Patent or Trademark listed in Schedules 15(a) and 15(b) of the Perfection Certificate, respectively, pledged by it under the name of such Grantor, (ii) such Grantor is not infringing upon any Copyright, Patent or Trademark of any other Person other than such infringement that would not (or could not reasonably be expected to) result in a Collateral Material Adverse Effect with respect to Intellectual Property and (iii) no proceedings are currently pending against such Grantor alleging any such violation, except as may be set forth in Schedule V.
(i) Upon and during the continuance of an Event of Default, each Grantor shall use its commercially reasonable efforts to obtain all requisite consents or approvals by the licensor of each Copyright License, Patent License or Trademark License to effect the assignment of all of such Grantor’s right, title and interest thereunder to the Collateral Agent or its designee.
Appears in 1 contract
Certain Covenants and Provisions Regarding Patent, Trademark and Copyright Collateral. (a) Each Grantor agrees that it will not, nor will it permit any of its licensees to, do any act, or omit to do any act, whereby any Patent owned by such Grantor which is material to the conduct of such Grantor’s business may become invalidated, unenforceable, or dedicated to the publicpublic (other than at the end of its statutory term), and agrees that it shall use commercially reasonable efforts to continue to mxxx xxxx any products covered by a Patent with the relevant patent number as necessary and sufficient to establish and preserve its rights under applicable patent laws; provided, however, that nothing in this Section 4.10(a) shall prevent such Grantor from discontinuing the prosecution or maintenance of such Patent if, in the reasonable business judgment of such Grantor, such Patent is no longer necessary or desirable in the conduct of its business.
(b) Each Grantor (either itself or through its licensees or its sublicenses) will, for each Trademark owned by such Grantor which is material to the conduct of such Grantor’s business, use its commercially reasonable efforts to (i) maintain each such registered Trademark in full force free from any claim of abandonment or invalidity for nonuse, (ii) maintain substantially the same (or higher) quality of products and services offered under such TrademarkTrademark as are currently maintained, (iii) display such Trademark with notice of Federal or foreign registration to the extent necessary and sufficient to establish and preserve its rights under applicable law and (iv) not knowingly use or knowingly permit the use of such Trademark in violation of any third party rights; provided, however, that nothing in this Section 4.10(b) shall prevent such Grantor from discontinuing the use, prosecution, or maintenance of such Trademark, if such discontinuance is, in the reasonable business judgment of such Grantor, no longer necessary or desirable in the conduct of its business.
(c) Each Grantor shall promptly notify the Collateral Agent upon such Grantor obtaining knowledge of any Patent, Trademark or Copyright owned by such Grantor and material to the conduct of its business which may become abandoned, lost, unenforceable, invalidated, or dedicated to the public (other than at the end of such item’s statutory term), or of any materially adverse determination or development including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office or United States Copyright Office (or any court or similar office of any country) regarding such Grantor’s ownership of any Patent, Trademark or Copyright material to the conduct of its business, or its right to register the same, or to keep and maintain the same; provided, further, that nothing in this Section 4.10(b4.10(c) shall require providing notice in connection with office officer actions for pending Patent, Trademark or Copyright Copyrights applications.
(d) If any Grantor shall at any time after the date hereof (i) obtain any ownership or other rights in and/or to any additional Intellectual Property (including any Trademark applications filed by such Grantor on an “intent-to-use” basis for which evidence of the use of such Trademarks in interstate commerce has been submitted to and duly accepted by the United States Patent and Trademark Office pursuant to 15 U.S.C. Section 1060(a) (or a successor provision)) or (ii) become entitled to the benefit of any additional Collateral consisting of Intellectual Property or any renewal or extension thereof, including any reissue, division, continuation, or continuation-in-part of any Collateral consisting of Intellectual Property, or any improvement on any Collateral consisting of Intellectual Property, the provisions of this Agreement shall automatically apply thereto and any such item described in the preceding clause (i) or (ii) (other than any Excluded Property) shall automatically constitute Collateral as if such would have constituted Collateral at the time of execution hereof and such Collateral consisting of Intellectual Property (other than any Excluded Property) shall be subject to the Lien and security interest created by this Agreement without further action by any party. Each Grantor shall within thirty (30) days with respect to Copyrights and within ninety (90) days with respect to Patents and Trademarks provide to the Collateral Agent written notice of any of the foregoing Collateral consisting of Intellectual Property owned by such Grantor which is the subject of a registration or application in the United States and confirm the attachment of the Lien and security interest created by this Agreement to any rights described in clauses (i) and (ii) above by execution and delivery, within ten (10) days of providing such notice or such longer period as may be determined by the Collateral Agent in its sole discretion of the acquisition by such Grantor of such Intellectual Property, of an instrument in form and substance reasonably acceptable to the Collateral Agent and the filing of any instruments or statements as shall be reasonably necessary or requested by the Collateral Agent to create, record, preserve, protect or perfect the Collateral Agent’s lien and security interest in such Intellectual Property.
(e) Each Grantor will take all necessary steps in any proceeding before the United States Patent and Trademark Office or United States Copyright Office, or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof, to maintain and pursue each material application relating to the Patents, Trademarks and/or Copyrights (and to obtain the relevant grant or registration) and to maintain each issued Patent and each registration of the Trademarks or Copyrights owned by such Grantor that is material to the conduct of any Grantor’s business, including timely filings of applications for renewal, affidavits of use, affidavits of incontestability and payment of maintenance fees, and, if consistent with such Grantor’s commercially reasonable business judgment, to initiate opposition, interference and cancellation proceedings against third parties; provided, however, that nothing in this Section 4.10(f) shall prevent such Grantor from failing to maintain or pursue any such Trademark or Patent if, in the reasonable business judgment of such Grantor, the likely costs of such maintenance or pursuit are likely to outweigh the likely benefits of such maintenance or pursuit and such failure could not reasonably be expected to have a Material Adverse Effect.
(f) In the event that any Grantor has actual knowledge that any Collateral consisting of a material Patent, Trademark or Copyright owned or exclusively licensed by such Grantor has been or is about to be infringed, misappropriated or diluted by a third party, such Grantor promptly shall notify the Collateral Agent and, if within such Grantor’s good faith business judgment, the likely benefits outweigh the likely costs, shall promptly xxx for infringement, misappropriation or dilution and to recover any and all damages for such infringement, misappropriation or dilution, and shall take such actions as are deemed by such Grantor in its reasonable business judgment to be reasonably appropriate under the circumstances to protect such Collateral.
(g) For the purpose of enabling the Collateral Agent, during the continuance of an Event of Default, to exercise rights and remedies under Article V hereof at such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, and for no other purpose, each Grantor hereby grants to the Collateral Agent an irrevocable, non-exclusive license and, to the extent permitted under Intellectual Property Licenses granting such Grantor rights in Intellectual Property, sublicense (in each case, exercisable without payment of royalties or other compensation to such Grantor) to use, license or sublicense any of the Intellectual Property included in the Collateral, wherever the same may be located (excluding, for the avoidance of doubt, any rights under any Intellectual Property License that are prohibited by the terms of such License from being so licensed or to the extent that the grant of such license would otherwise breach the terms of any agreement to which such Grantor as a party). Such license shall include access to all media in which any of the licensed items may be recorded or stored and to all computer programs used for the compilation or printout hereof, to the extent permitted under license agreements governing use of such computer programs. With respect to Trademarks owned by such Grantor, the license granted hereunder shall be subject to sufficient rights of quality control and inspection in favor of such Grantor to avoid the risk of invalidation of such Trademarks.
(h) Unless there shall occur and be continuing any Event of Default, each Grantor shall have the right to commence and prosecute in its own name, as the party in interest, for its own benefit and at the sole cost and expense of the Grantors, such applications for protection of the Intellectual Property owned by such Grantor and suits, proceedings or other actions to prevent the infringement, misappropriation, counterfeiting, unfair competition, dilution, diminution in value or other damage as are necessary to protect the Intellectual Property owned and/or exclusively licensed by such Grantors. Upon the occurrence and during the continuance of any Event of Default, upon notice to the applicable Grantor, the Collateral Agent shall have the right but shall in no way be obligated to file applications for protection of the Intellectual Property owned by any Grantor and/or bring suit in the name of any Grantor, the Collateral Agent or the Secured Parties to enforce such Intellectual Property and any license thereunder. In the event of such suit filed in the name of any Grantor by the Collateral Agent or the Secured Parties upon the occurrence and during the continuance of any Event of Default, each Grantor shall, at the reasonable request of the Collateral Agent, do any and all lawful acts and execute any and all documents requested by the Collateral Agent in aid of such enforcement and the Grantors shall promptly reimburse and indemnify the Collateral Agent for all costs and expenses incurred by the Collateral Agent in the exercise of its rights under this Section 4.10(i) in accordance with Section 9.05 of the Credit Agreement. In the event that the Collateral Agent shall elect not to bring suit to enforce the Intellectual Property owned and/or exclusively licensed by any Grantor, each Grantor agrees, at the reasonable request of the Collateral Agent, to take all commercially reasonable actions necessary, whether by suit, proceeding or other action, to prevent the infringement, counterfeiting, unfair competition, dilution, diminution in value of or other damage to any of the Intellectual Property by any Person.
Appears in 1 contract
Samples: Security Agreement (Solutia Inc)
