INTELLECTUAL PROPERTY SECURITY AGREEMENT
INTELLECTUAL PROPERTY SECURITY AGREEMENT (this "Agreement"), dated as of
November 9, 2001, by and between The Immune Response Corporation, a Delaware
corporation (the "Borrower"), and Xxxxx Xxxxxxxxx Partners, L.P., a Delaware
limited partnership (the "Lender").
W I T N E S S E T H
WHEREAS, the Borrower and the Lender are parties to that certain Note
Purchase Agreement of even date herewith (as the same may be amended, restated,
supplemented or otherwise modified from time to time, the "Note Purchase
Agreement"); and
WHEREAS, the Lender is willing to loan money to the Borrower as provided
for in the Note Purchase Agreement, but only upon the condition, among others,
that the Borrower shall have executed and delivered this Agreement, in order to
secure the timely payment, performance and satisfaction of the obligations of
the Borrower under the Notes, the Warrants, the Note Purchase Agreement and this
Agreement (collectively, the "Obligations").
NOW, THEREFORE, in consideration of the premises and for other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereby agree as follows:
1. DEFINED TERMS.
(a) Capitalized terms used herein shall have the meanings ascribed
to such terms in the Note Purchase Agreement unless otherwise defined or limited
herein.
(b) The words "hereof," "herein" and "hereunder" and words of like
import when used in this Agreement shall refer to this Agreement as a whole and
not to any particular provision of this Agreement, and Section references are to
this Agreement unless otherwise specified.
(c) All terms defined in this Agreement in the singular shall have
comparable meanings when used in the plural, and vice versa, unless otherwise
specified herein.
(d) Any reference to the word "Borrower" in Sections 4, 5, 6 and 9
hereof shall be deemed to include any affiliate or subsidiary of the Borrower.
2. INCORPORATION OF PREMISES. The premises set forth above are
incorporated into this Agreement by this reference thereto and are made a part
hereof.
3. INCORPORATION OF THE NOTE PURCHASE AGREEMENT. The Note Purchase
Agreement and the terms and provisions thereof are hereby incorporated herein in
their entirety by this reference thereto.
4. GRANT OF SECURITY INTEREST IN TRADEMARKS. To secure the complete and
timely payment, performance and satisfaction of all of the Obligations, the
Borrower hereby grants to the Lender a security interest in, as and by way of a
first mortgage and security interest having priority over all other security
interests, with power of sale to the fullest extent permitted by applicable law,
all of the Borrower's now owned or otherwise existing and hereafter acquired or
arising: (i) trademarks, trade names, registered trademarks, trademark
applications, service marks, registered service marks and service xxxx
applications, including, without limitation, the trademarks, trade names,
registered trademarks, trademark applications, service marks, registered service
marks and service xxxx applications listed on Schedule 4.8 attached to the Note
Purchase Agreement and made a part hereof ("SCHEDULE 4.8"), and (a) all renewals
thereof, (b) all income, royalties, damages and payments now and hereafter due
and/or payable under and with respect thereto, including, without limitation,
payments under all licenses entered into in connection therewith and damages and
payments for past or future infringements or dilutions thereof, (c) the right to
xxx for past, present and future infringements and dilutions thereof, (d) the
goodwill of the Borrower's business symbolized by the foregoing and connected
therewith and (e) all of the Borrower's rights corresponding thereto throughout
the world (all of the foregoing trademarks, trade names, registered trademarks
and trademark applications, service marks, registered service marks and service
xxxx applications, together with the items described in clauses (a)-(e) in this
Section 4, are hereinafter individually and/or collectively referred to as the
"Trademarks"); and (ii) all proceeds of any and all of the foregoing, including,
without limitation, license royalties and proceeds of infringement suits.
5. GRANT OF SECURITY INTEREST IN PATENTS. To secure the complete and
timely payment, performance and satisfaction of all of the Obligations, the
Borrower hereby grants to the Lender a security interest, as and by way of a
first mortgage and security interest having priority over all other security
interests, with power of sale to the fullest extent permitted by applicable law,
in all of the Borrower's right, title and interest in and to the Borrower's now
owned or otherwise existing and hereafter acquired or arising: (i) patents and
patent applications, including, without limitation, the patents and patent
applications listed on SCHEDULE 4.8, and (a) all renewals, continuances and
modifications thereof, (b) all income, royalties, damages and payments now and
hereafter due and/or payable under and with respect thereto, including, without
limitation, payments under all licenses entered into in connection therewith and
damages and payments for past or future infringements, (c) the right to xxx for
past, present and future infringements, (d) the goodwill of the Borrower's
business symbolized by the foregoing and connected therewith and (e) all of the
Borrower's rights corresponding thereto throughout the world (all of the
foregoing patents and patent applications, together with the items described in
clauses (a)-(e) in this Section 5, are hereinafter individually and/or
collectively referred to
as the "Patents"); and (ii) all proceeds of any and all of the foregoing,
including, without limitation, license royalties and proceeds of infringement
suits.
6. GRANT OF SECURITY INTEREST IN TRADEMARK AND PATENT LICENSES. To secure
the complete and timely payment, performance and satisfaction of all of the
Obligations, the Borrower hereby grants to the Lender a security interest, as
and by way of a first mortgage and security interest having priority over all
other security interests, with power of sale to the fullest extent permitted by
applicable law, in all of the Borrower's right, title and interest in and to the
Borrower's now owned or otherwise existing and hereafter acquired or arising
rights under or interest in any license agreements with any other party, whether
the Borrower is a licensee or licensor under any such license agreement,
including, without limitation, license agreements listed on SCHEDULE 4.8, and
the right to use the foregoing in connection with the enforcement of the
Lender's rights under the Note Purchase Agreement, including, without
limitation, the right to prepare for sale and sell any and all inventory now or
hereafter owned by the Borrower and now or hereafter covered by such licenses
(all of the foregoing are hereinafter referred to collectively as the
"Licenses"). Notwithstanding the foregoing provisions of this Section 6, the
Licenses shall not include any license agreement in effect as of the date hereof
that by its terms expressly prohibits the grant of the security contemplated by
this Agreement; PROVIDED, HOWEVER, that upon the termination of such
prohibitions for any reason whatsoever, the provisions of this Section 6 shall
be deemed to apply thereto automatically.
7. POWER AND AUTHORITY. The Borrower has the requisite corporate power and
authority to execute and deliver this Agreement and to perform its obligations
hereunder. The execution, delivery and performance of this Agreement have been
duly authorized by all necessary corporate action on the part of the Borrower.
This Agreement has been duly executed and delivered by the Borrower and is the
valid and binding obligation of the Borrower, enforceable against the Borrower
in accordance with its terms, except as such enforceability may be limited by
applicable bankruptcy, moratorium, insolvency, reorganization or other similar
laws now or hereafter in effect generally affecting the enforcement of
creditors' rights, specific performance, injunctive or other equitable remedies.
8. TITLE; OTHER LIENS. Except for the security interests granted to the
Lender pursuant to this Agreement, the Borrower owns each of the Trademarks,
Patents and Licenses free and clear of any and all liens, claims or security or
adverse interests thereon. No security agreement, financing statement or other
public notice with respect to all or any of the Trademarks, Patents and Licenses
is on file or of record in any public office, except as such as have been filed
in favor of the Lender pursuant to this Agreement and the Note Purchase
Agreement.
9. NEW TRADEMARKS, PATENTS AND LICENSES. The Borrower represents warrants
that (a) the Trademarks listed on SCHEDULE 4.8 hereto include all of the
trademarks, trade names, registered trademarks, trademark applications, service
marks, registered service marks and service xxxx applications now owned or held
by the Borrower, (b) the Patents listed on SCHEDULE 4.8 hereto include all of
the patents and
patent applications now owned or held by the Borrower, (c) the Licenses listed
on SCHEDULE 4.8 hereto include all of the license agreements under which the
Borrower is the licensee or licensor and (d) no liens, claims or security or
adverse interests in such Trademarks, Patents or Licenses have been granted by
the Borrower to any person or entity other than the Lender. If, prior to the
termination of this Agreement, the Borrower shall (i) obtain rights to or become
entitled to the benefit of any new trademarks, trade names, registered
trademarks, trademark applications, service marks, registered service marks or
service xxxx applications, (ii) obtain rights to or become entitled to the
benefit of any patent or patent application or any reissue, division,
continuation, renewal, extension or continuation-in-part of any Patent or any
improvement on any Patent, (iii) obtain rights to or become entitled to the
benefit of any new license agreements, whether as licensee or licensor, or
license renewals or (iv) enter into any new or amended license agreement, the
provisions of Sections 4, 5 and 6 above shall automatically apply thereto (to
the extent permitted by licensors under agreements in connection with the
granting of such licenses). The Borrower shall give to the Lender prompt written
notice of events described in clauses (i), (ii), (iii) and (iv) of the preceding
sentence, and in any event within thirty (30) days, after the occurrence
thereof. The Borrower hereby authorizes the Lender to modify this Agreement
unilaterally (i) by amending SCHEDULE 4.8 hereto to include any future
trademarks, trade names, registered trademarks, trademark applications, service
marks, registered service marks and service xxxx applications that are
Trademarks under Section 4 above or under this Section 9, (ii) by amending
SCHEDULE 4.8 hereto to include any future patents and patent applications, that
are Patents under Section above or under this Section 9, (iii) by amending
SCHEDULE 4.8 hereto to include any future license agreements that are Licenses
under Section 6 above or under this Section 9 and (iv) by filing, in addition to
and not in substitution for this Agreement, a duplicate original of this
Agreement containing on SCHEDULE 4.8 thereto, as the case may be, such future
trademarks, tradenames, registered trademarks, trademark applications, service
marks, registered service marks and service xxxx applications and containing on
SCHEDULE 4.8 thereto, as the case may be, such future patents and patent
applications and containing on SCHEDULE 4.8 thereto, as the case may be, such
future license agreements.
10. RESTRICTIONS ON FUTURE AGREEMENTS. The Borrower will not enter into
any agreement, including, without limitation, any license agreement, that is
inconsistent with this Agreement or that would be reasonably likely to have a
material adverse effect on the security interests held by the Lender pursuant to
this Agreement, and the Borrower further agrees that it will not take any
action, and will use its best efforts not to permit any action to be taken by
others subject to its control, including, without limitation, licensees, or fail
to take any action, that could be reasonably expected to, in any material
respect, affect the validity or enforcement of the rights transferred to the
Lender under this Agreement or the rights associated with the Trademarks, the
Patents or the License.
11. ROYALTIES. The Borrower hereby agrees that the use by the Lender of
the Trademarks, Patents and Licenses as authorized hereunder in connection with
the Lender's exercise of its rights and remedies under Section 20 hereof or
pursuant to the
Note Purchase Agreement or any of the documents contemplated thereby
(collectively, the "Loan Documents") shall be coextensive with the Borrower's
rights thereunder and with respect thereto and without any liability for
royalties or other related charges from the Lender to the Borrower.
12. RIGHT TO INSPECT; FURTHER ASSIGNMENTS AND SECURITY INTEREST; FUTURE
INDEBTEDNESS. The Lender may from time to time hereafter (at the Borrower's
expense, but not more than once per calendar year absent an Event of Default or
Nonpayment of Maintenance Fees (as defined in Section 14 hereof)) have access
to, examine, audit, make copies and extracts from and inspect the Borrower's
premises and examine the Borrower's books, records and operations relating to
the Trademarks, Patents and Licenses. The Borrower agrees (i) not to sell or
assign any of its interests in, or grant any license under the Trademarks or the
Patents without the prior and express written consent of the Lender and/or (ii)
not to sell or assign its respective interests in the Licenses without the prior
and express written consent of the Lender. Without the prior and express written
consent of the Lender, which consent shall not be unreasonably withheld, the
Borrower hereby agrees that it shall not, while any of the Obligations are
outstanding, incur, create or assume any indebtedness that is senior to the
indebtedness evidenced by any of the Notes or grant any further security
interest in the Trademarks, Patents and Licenses, and any modifications thereto
pursuant to Section 9 hereof (the "Collateral"), even if such interest shall be
junior to that of the Lender.
13. NATURE AND CONTINUATION OF THE LENDER'S SECURITY INTEREST; TERMINATION
OF THE LENDER'S SECURITY INTEREST. This Agreement is made for collateral
security purposes only. This Agreement shall create a continuing security
interest in the Trademarks, Patents and Licenses and shall terminate only when
the Obligations have been paid or performed in full and the Note Purchase
Agreement has been terminated in accordance with its terms. When this Agreement
has terminated, the Lender shall promptly execute and deliver to the Borrower,
at the Borrower's expense, all termination statements and other instruments as
may be necessary or proper to terminate the Lender's security interest in the
Trademarks, Patents and Licenses, subject to any disposition thereof that may
have been made by the Lender pursuant to this Agreement.
14. DUTIES OF THE BORROWER. The Borrower shall (a) prosecute diligently
any trademark application or service xxxx application that is part of the
Trademarks pending as of the date hereof or hereafter until the termination of
this Agreement, (b) prosecute diligently any patent application that is part of
the Patents pending as of the date hereof or hereafter until the termination of
this Agreement and (c) take all reasonable and necessary action to preserve and
maintain all of the Borrower's rights in the Trademarks, the Patents and the
Licenses, including, without limitation, the commencement of legal action for
any infringement thereof by a third party that materially impairs the value of
the Collateral; PROVIDED, HOWEVER, that the Borrower shall not be obligated to
take any of the foregoing actions unless the failure to take such actions would
be reasonably likely to have a material adverse effect on either (x) the
business, operations or condition of the Borrower or (y) the security interests
of the Lender held pursuant to this Agreement. The
Borrower further agrees (i) not to abandon any Trademark, Patent or License
without the prior written consent of the Lender and (ii) to use its best efforts
to maintain in full force and effect the Trademarks, Patents and Licenses,
including, without limitation, the timely payment of any maintenance fees for
the Patents and/or the Trademarks; PROVIDED, HOWEVER, that the Borrower shall
not be obligated to take any of the foregoing actions unless the failure to take
such actions would be reasonably likely to have a material adverse effect on
either (x) the business, operations or condition of the Borrower or (y) the
security interests of the Lender held pursuant to this Agreement.. Any expenses
incurred in connection with the foregoing shall be borne by the Borrower. The
Lender shall not have any duty with respect to the Trademarks, the Patents or
the Licenses. Without limiting the generality of the foregoing, the Lender shall
not be under any obligation to take any steps necessary to preserve rights in
the Trademarks, the Patents or the Licenses against any other parties, but the
Lender may do so, at its option, (x) if the Lender does not receive written
confirmation of the payment of maintenance fees for the Patents and/or the
Trademarks at least twenty (20) days prior to the due date for such payments, in
which event the Lender may pay such fees ("Nonpayment of Maintenance Fees") or
(y) from and after the occurrence and during the continuance of an Event of
Default, and all expenses incurred in connection with clauses (x) and (y) of
this Section 14 (including, without limitation, reasonable fees and expenses,
including legal fees, of the Lender) shall be for the sole account of the
Borrower and shall be added to the Obligations secured hereby.
15. INDEMNIFICATION BY THE BORROWER. The Borrower hereby agrees to
indemnify and hold harmless and pay or reimburse the Lender for any and all
liabilities, obligations, losses, damages, penalties, actions, judgments, suits,
costs, expenses or disbursements (including reasonable attorneys' fees) of any
kind whatsoever that may be imposed on, incurred by or asserted against the
Lender in connection with, or in any way arising out of, any suits, proceedings
or other actions, relating to any or all of the Trademarks, the Patents or the
Licenses (including, without limitation, whether brought by the Borrower or any
other Person, suits, proceedings or other actions in which an allegation of
liability, strict or otherwise, is or may be made by any Person who alleges or
may allege having suffered damages as a consequence of alleged improper,
imprudent, reckless, negligent, willful, faulty, defective or substandard
design, testing, specification, manufacturing supervision, manufacturing defect,
manufacturing deficiency, publicity or advertisement or improper use, howsoever
arising or by whomsoever caused, of any inventions disclosed and claimed in the
Patents or any of them); unless with respect to any of the above, the Lender is
judicially determined to have acted or failed to act with gross negligence or
willful misconduct. The indemnification provisions in this Section 15 shall
survive the termination of this Agreement.
16. THE LENDER'S RIGHT TO XXX. From and after the occurrence and during
the continuance of an Event of Default, the Lender shall have the right, but
shall not be obligated, to bring suit in its own name to enforce the Trademarks,
the Patents and the Licenses and, if the Lender shall commence any such suit,
the Borrower shall, at the request of the Lender, do any and all lawful acts and
execute any and all proper
documents reasonably required by the Lender in aid of such enforcement. The
Borrower shall, upon demand, promptly reimburse the Lender for all costs and
expenses incurred by the Lender in the exercise of its rights under this Section
16 (including, without limitation, reasonable fees and expenses, including legal
fees, of the Lender).
17. WAIVERS. The Lender's failure, at any time or times hereafter, to
require strict performance by the Borrower of any provision of this Agreement
shall not waive, affect or diminish any right of the Lender thereafter to demand
strict compliance and performance therewith nor shall any course of dealing
between the Borrower and the Lender have such effect. No single or partial
exercise of any right hereunder shall preclude any other or further exercise
thereof or the exercise of any other right. None of the undertakings,
agreements, warranties, covenants and representations of the Borrower contained
in this Agreement shall be deemed to have been suspended or waived by the Lender
unless such suspension or waiver is in writing signed by an officer of the
Lender and directed to the Borrower and specifying such suspension or waiver.
18. SEVERABILITY. Whenever possible, each provision of this Agreement
shall be interpreted in such manner as to be effective and valid under
applicable law, but the provisions of this Agreement are severable and, if any
clause or provision shall be held invalid and unenforceable in whole or in part
in any jurisdiction, then such invalidity or unenforceability shall affect only
such clause or provision, or part hereof, 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.
19. MODIFICATION. Neither this Agreement nor any provision hereof may be
altered, amended or modified in any way, except as specifically provided in
Section 9 hereof or in a written instrument signed by the parties hereto.
20. POWER OF ATTORNEY; CUMULATIVE REMEDIES.
(a) The Borrower hereby irrevocably designates, constitutes and
appoints the Lender (and all officers and agents of the Lender designated by the
Lender in its sole and absolute discretion) as the Borrower's true and lawful
attorney-in-fact, and authorizes the Lender and any of the Lender's designees,
in the Borrower's or the Lender's name, upon the occurrence and during the
continuation of an Event of Default to take any action and execute any
instrument necessary or reasonably advisable to accomplish the purposes of this
Agreement, including, without limitation, to (i) endorse the Borrower's name on
all applications, documents, papers and instruments necessary or desirable for
the Lender in the use of the Trademarks, the Patents or the Licenses, (ii)
assign, pledge, convey or otherwise transfer title in or dispose of the
Trademarks, the Patents or the Licenses to anyone, (iii) grant or issue any
exclusive or nonexclusive license or sublicense under the Trademarks, the
Patents or the Licenses to anyone and (iv) take any other actions with respect
to the Trademarks, the Patents or the Licenses as the Lender deems in its best
interest for the payment of the Obligations. The Borrower hereby ratifies all
that such attorney shall lawfully do or cause to be done by virtue hereof. This
power of attorney is coupled with an interest and shall be irrevocable until
this Agreement is terminated. The Borrower acknowledges and agrees that this
Agreement is not intended to limit or restrict in any way the rights and
remedies of the Lender under the Note Purchase Agreement or any of the other
Loan Documents, but rather is intended to facilitate the exercise of such rights
and remedies.
(b) The Lender shall have, in addition to all other rights and
remedies given it by the terms of this Agreement, all rights and remedies
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code ("UCC") as enacted in any jurisdiction in which the Trademarks,
the Patents or the Licenses may be located or deemed located. Upon the
occurrence and during the continuance of an Event of Default and the election by
the Lender to exercise any of its remedies under Section 9-504 or Section 9-505
of the UCC, or the equivalent remedy provisions under revised Article 9 of the
UCC, as enacted in the governing jurisdiction, with respect to the Trademarks,
the Patents or the Licenses, the Borrower agrees to assign, convey and otherwise
transfer title in and to the Trademarks, the Patents and the Licenses, to the
Lender or any transferee of the Lender and to execute and deliver to the Lender
or any such transferee all such agreements, documents and instruments as may be
necessary, in the Lender's sole discretion, to effect such assignment,
conveyance and transfer. All of the Lender's rights and remedies with respect to
the Trademarks, the Patents and the Licenses, whether established hereby, by the
Note Purchase Agreement or by any other agreements or by law, shall be
cumulative and may be exercised separately or concurrently. Notwithstanding
anything set forth herein to the contrary, it is hereby expressly agreed that
upon the occurrence and during the continuance of an Event of Default, the
Lender may exercise any of the rights and remedies provided in this Agreement,
the Note Purchase Agreement or any of the other Loan Documents. To the extent
permitted by applicable law, the Borrower agrees that any notification of
intended disposition of any of the Trademarks, the Patents or the Licenses
required by law shall be deemed reasonably and properly given if given at least
ten (10) days, if such notice is given by facsimile or twelve (12) days, if such
notice is given by mail, before such disposition; PROVIDED, HOWEVER, that the
Lender may give any shorter notice that is commercially reasonable under the
circumstances.
21. SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon the
Borrower and its successors and permitted assigns, and shall inure to the
benefit of the Lender and its nominees, successors and assigns. The Borrower's
successors and assigns shall include, without limitation, a receiver or a
trustee of the Borrower; PROVIDED, HOWEVER, that the Borrower shall not
voluntarily assign or transfer its rights or obligations hereunder without the
Lender's prior written consent.
22. GOVERNING LAW. This Agreement shall be construed in accordance with
and governed by the internal laws of the State of New York applicable to
agreements made and to be wholly performed in New York.
23. NOTICES. All notices or other communications hereunder shall be given
in the manner and to the addresses set forth in the Note Purchase Agreement.
24. SECTION HEADINGS. The section headings herein are for convenience of
reference only, and shall not affect in any way the interpretation of any of the
provisions hereof.
25. MERGER. This Agreement, together with the other Loan Documents,
represents the final agreement of the Borrower and the Lender with respect to
the matters contained herein and may not be contradicted by evidence of prior or
contemporaneous agreements, or subsequent oral agreements between the Borrower
and the Lender.
26. EFFECTIVENESS. This Agreement shall become effective on the date of
the Note Purchase Agreement.
[SIGNATURE PAGE FOLLOWS]
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement
as of the day and year first above written.
THE IMMUNE RESPONSE CORPORATION,
a Delaware corporation
By: /s/ Xxxxxx Xxxxxxx
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Name: Xxxxxx Xxxxxxx
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Title: VP, Finance
CFO, Treasurer
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XXXXX XXXXXXXXX PARTNERS, L.P.,
a Delaware limited partnership
By: KKP Management LLC, General Partner
By: /s/ Xxxxx Xxxxxxxxx
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Name: Xxxxx Xxxxxxxxx
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Title: Managing Member
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