EXHIBIT 10.15
PATENT COLLATERAL ASSIGNMENT AND SECURITY AGREEMENT
THIS AGREEMENT is made as of the 21st day of January, 2000 between
Medical Technology & Innovations, Inc., a Florida corporation, having a mailing
address at 0000 Xxxxxxxxxx Xxxx, Xxxxxxx Xxxxx, Xxxxxxx 00000 ("Assignor"), and
International Investment Partners, Ltd., a Delaware corporation, having a
mailing address at 00 Xxxxxxxxxx Xxxx, Xxxxxxxxx, Xxxxxxxxxxxx 00000 ("Lender").
WHEREAS, Assignor has executed and delivered its promissory note
dated January 21, 2000 (the "Note"), to the Lender in the aggregate principal
amount of One Million Dollars ($1,000,000), pursuant to a certain Loan Agreement
dated January 21, 2000 between Assignor and the Lender and various other loan
documents (the "Loan Documents"). To secure the complete and timely satisfaction
of all existing and future indebtedness and obligations of the Assignor to
Lender (the "Liabilities"), Assignor has agreed to assign to Lender certain
patent rights.
NOW, THEREFORE, in consideration of the premises, Assignor hereby
agrees with Lender as follows:
1. To secure the complete and timely satisfaction and performance of the
Liabilities, Assignor hereby grants, assigns and conveys to Lender Assignor's
entire right, title and interest in and to the patent applications and patents
listed in Schedule A hereto including without limitation all proceeds thereof
(such as, by way of example, license royalties and proceeds of infringement
suits), the right to xxx for past, present and future infringements and all
rights corresponding thereto throughout the world and all reissues, divisions,
continuations, renewals, extensions and continuations-in-part thereof and any
future reissue, division, continuation, renewal, extension, or
continuation-in-part of any Patent or any improvement on any Patent, as set
forth in Paragraph 4, infra., (collectively called the "Patents").
2. Assignor covenants and warrants that:
(a) The Patents are subsisting and have not been adjudged invalid or
unenforceable, in whole or in part;
(b) To the best of Assignor's knowledge, each of the Patents is valid
and enforceable and Assignor has notified Lender in writing of all prior
art (including public uses and sales) of which it is aware;
(c) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents, free
and clear of any liens, charges and encumbrances, including without
limitation pledges, assignments, licenses, registered user agreements and
covenants by Assignor not to xxx third persons;
(d) Assignor has the unqualified right to enter into this Agreement
and perform its terms and has entered and will enter into written
agreements with each of its present and future employees, agents and
consultants which will enable it to comply with the covenants herein
contained, including but not limited to agreements obligating them to
assign present and future inventions to the Assignor.
3. Assignor agrees that, until all of the Liabilities shall have been
satisfied in full, it will not enter into any license or any other agreement
which is inconsistent with Assignor's obligations under this Agreement, without
Lender's prior written consent.
4. If, before the Liabilities shall have been satisfied in full, Assignor
shall obtain rights to any new patentable inventions, or become entitled to the
benefit of any patent application or patent for any reissue, division,
continuation, renewal, extension, or continuation-in-part of any Patent or any
improvement on any Patent, the provisions of paragraph 1 shall automatically
apply thereto and Assignor shall give to Lender prompt notice thereof in
writing.
5. Assignor authorizes Lender to modify this Agreement by amending Schedule
A to include any future Patents and Patent applications which are Patents under
paragraph 1 or paragraph 4 hereof.
6. Assignor agrees to pay all maintenance fees for all Patents listed in
Schedule A in a timely manner.
7. Unless and until there shall have occurred and be continuing a default
hereunder or under any of the Loan Documents Lender hereby grants to Assignor
the exclusive, nontransferable right and license under the Patents to make, have
made for it, use and sell the inventions disclosed and claimed in the Patents
for Assignor's own benefit and account and for none other. Assignor agrees not
to sell the license, or grant any sublicense under, the license granted to
Assignor in this paragraph 6, without the prior written consent of Lender.
8. If any default shall have occurred and be continuing hereunder or any of
the Loan Documents, Assignor's license under the Patents as set forth in
paragraph 6, shall terminate thereupon, and the Lender shall have, in addition
to all other rights and remedies given it by this Agreement, those allowed by
law and the rights and remedies of a secured party under the Uniform Commercial
Code as entered in any jurisdiction in which the Patents may be located and,
without limiting the generality of the foregoing, the Lender may immediately,
without demand of performance and without other notice (except as set forth next
below) to Assignor, all of which are hereby expressly waived, and without
advertisement, sell at public or private sale or otherwise realize upon, in
Pennsylvania, or elsewhere, all or from time to time any of the Patents, or any
interest which the Assignor may have therein, and after deducting from the
proceeds of sale or other disposition of the Patents all expenses (including all
reasonable expenses for brokers' fees and legal services), shall apply the
residue of such proceeds toward the payment of the Liabilities. Any remainder of
the proceeds after payment in full of the Liabilities shall be paid over to the
Assignor. Notice of any sale or other disposition of the Patents shall be given
to Assignor at least five (5) days before the time of any intended public or
private sale or other disposition of the Patents is to be made, which Assignor
hereby agrees shall be reasonable notice of such sale or other disposition. At
any such sale or other disposition, any holder of the Note or Lender may, to the
extent permissible under applicable law, purchase the whole or any part of the
Patents sold, free from any right of redemption on the part of Assignor, which
right is hereby waived and released.
9. If any default shall have occurred and be continuing hereunder or under
any of the Loan Documents, Assignor hereby authorizes and empowers Lender to
make, constitute and appoint any officer or agent of Lender, as Lender may
select in its exclusive discretion, as Assignor's true and lawful
attorney-in-fact, with the power to endorse Assignor's name on all applications,
documents, papers and instruments necessary for Lender to use the Patents, or to
grant or issue any exclusive or non-exclusive license under the Patents to any
third person, or necessary for Lender to assign, pledge, convey or otherwise
transfer title in or dispose of the Patents to any third person. Assignor hereby
ratifies all that such attorney-in-fact shall lawfully do or cause to be done by
virtue hereof. This power of attorney shall be irrevocable for the life of this
Agreement.
10. At such time as Assignor shall completely satisfy all of the
Liabilities, this Agreement shall terminate and Lender shall execute and deliver
to Assignor all deeds, assignments and other instruments as may be necessary or
proper to re-vest in Assignor full title to the Patents, subject to any
disposition thereof which may have been made by Lender pursuant hereto.
11. Any and all reasonable fees, costs and expenses, of whatever kind or
nature, including attorneys' fees and legal expenses incurred by Lender in
connection with the enforcement of any of the provisions of this Agreement and
all other documents relating hereto and the consummation of the transaction
contemplated by the Loan Documents, the filing or recording of any documents
(including all taxes in connection therewith) in public offices, the payment or
discharge of any taxes, counsel fees, maintenance fees, encumbrances or
otherwise protecting, maintaining or preserving the Patents, or in defending or
prosecuting any actions or proceedings arising out of or related to the Patents,
shall be borne and paid by Assignor on demand by Lender and until so paid shall
be added to the principal amount of the Liabilities and shall bear interest at
the highest rate prescribed in the Note.
12. Assignor shall have the duty, through counsel acceptable to Lender, to
prosecute diligently any patent applications of the Patents pending as of the
date of this Agreement or thereafter until the Liabilities shall have been paid
in full, to make federal application on unpatented but patentable inventions and
to preserve and maintain all rights in patent applications and patents of the
Patents, including without limitation the payment of all maintenance fees. Any
expenses incurred in connection with the Patents shall be borne by Assignor. The
Assignor shall not abandon any right to file a patent application, or any
pending patent application or patent, without the consent of the Lender, which
consent shall not be unreasonably withheld.
13. Assignor shall have the right, with the consent of Lender, which will
not be unreasonably withheld, to bring suit in its own name, and to join Lender,
if necessary, as a party to such suit so long as Lender is satisfied that such
joinder will not subject it to any risk of liability, to enforce the Patents and
any licenses thereunder. Assignor shall promptly, upon demand, reimburse and
indemnify Lender for all damages, costs and expenses, including legal
fees,incurred by Lender pursuant to this paragraph 12.
14. If Assignor fails to comply with any of its material obligations
hereunder, Lender may do so in Assignor's name or in Lender's name, but at
Assignor's expense, and Assignor hereby agrees to reimburse Lender in full for
all expenses, including reasonable attorneys' fees incurred by Lender in
protecting, defending and maintaining the Patents.
15. No course of dealing between Assignor and Lender, nor any failure to
exercise, nor any delay in exercising, on the part of Lender, any right, power
or privilege hereunder or under the Loan Documents shall operate as a waiver
thereof; nor shall any single or partial exercise of any right, power or
privilege hereunder or thereunder preclude any other or further exercise thereof
or the exercise of any other right, power or privilege.
16. All of Lender's rights and remedies with respect to the Patents,
whether established hereby or by the Loan Documents, or by any other agreements
or by law shall be cumulative and may be exercised singularly or concurrently.
17. The provisions of this Agreement are severable, and if any clause or
provision shall be held invalid or unenforceable in whole or in part in any
jurisdiction, then such invalidity or unenforceability shall affect only such
clause or provision, or part thereof, in such jurisdiction, and shall not in any
manner affect such clause or provision in any other jurisdiction or any other
clause or provision of this Agreement in any jurisdiction.
18. This Agreement is subject to modification only by a writing signed by
the parties, except as provided in paragraph 5.
19. The benefits and burdens of this Agreement shall inure to the benefit
of and be binding upon the respective successors and permitted assigns of the
parties.
20. The validity and interpretation of this Agreement and the rights and
obligations of the parties shall be governed by the laws of the Commonwealth of
Pennsylvania.
WITNESS the execution hereof, under seal, as of the day and year first
above written.
ATTEST: ASSIGNOR:
MEDICAL TECHNOLOGY & INNOVATIONS, INC.
By /s/ Xxxxxxxx X. Xxxx By /s/ Xxxxxx X. XxxXxxxxxx
------------------------ -----------------------------------------
Name: Xxxxxxxx X. Xxxx Name: Xxxxxx X. XxxXxxxxxx
Title: Office Manager Title: Ex V.P. / COO
ATTEST: LENDER:
INTERNATIONAL INVESTMENT PARTNERS, LTD.
By /s/ Xxxxxxxx X. Xxxx By /s/ Xxxxx X Xxxxxx
------------------------ -----------------------------------------
Name: Xxxxxxxx X. Xxxx Name: Xxxxx X Xxxxxx
Title: Office Manager Title: Vice President
