INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.4
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This INTELLECTUAL PROPERTY SECURITY AGREEMENT (“IP Security Agreement”), dated as of June 24, 2024, is made by BIO-KEY INTERNATIONAL, INC., a Delaware corporation (“Debtor”), in favor of STREETERVILLE CAPITAL, LLC, a Utah limited liability company (the “Secured Party”).
|
A. |
Debtor issued to Secured Party a certain Secured Promissory Note of even date herewith, as may be amended from time to time (the “Note”), pursuant to a certain Note Purchase Agreement of even date herewith by and between Debtor and Secured Party (the “Purchase Agreement”). |
|
B. |
In order to induce Secured Party to extend the credit evidenced by the Note, Xxxxxx has agreed to enter into that certain Security Agreement of even date herewith by and between Debtor and Secured Party (the “Security Agreement”) and to grant Secured Party a security interest in certain “Collateral” as defined in the Security Agreement. |
|
C. |
Under the terms of the Security Agreement, Xxxxxx has granted to the Secured Party a security interest in, among other property, certain intellectual property of the Debtor, and has agreed to execute and deliver this IP Security Agreement for recording with governmental authorities, including, but not limited to, the United States Patent and Trademark Office. |
NOW THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties agree as follows:
1. Grant of Security. Debtor hereby pledges and grants to Secured Party a security interest in and to all of the right, title, and interest of such Debtor in, to, and under the following (the “IP Collateral”):
(a) the patents, patent applications and trademarks set forth on Schedule 1 hereto and all reissues, divisions, continuations, continuations-in-part, renewals, extensions, and reexaminations thereof, and amendments thereto;
(b) all rights of any kind whatsoever of Debtor accruing under any of the foregoing provided by applicable law of any jurisdiction, by international treaties and conventions and otherwise throughout the world;
(c) any and all royalties, fees, income, payments, and other proceeds now or hereafter due or payable with respect to any and all of the foregoing; and
(d) any and all claims and causes of action with respect to any of the foregoing, whether occurring before, on, or after the date hereof, including all rights to and claims for damages, restitution, and injunctive and other legal and equitable relief for past, present, and future infringement, dilution, misappropriation, violation, misuse, breach, or default, with the right but no obligation to sue for such legal and equitable relief and to collect, or otherwise recover, any such damages.
2. Recordation. Debtor authorizes the Commissioner for Patents and the Commissioner for Trademarks in the United States Patent and Trademark Office and the officials of corresponding entities or agencies in any applicable jurisdictions to record and register this IP Security Agreement upon request by the Secured Party.
3. Loan Documents. This IP Security Agreement has been entered into pursuant to and in conjunction with the Security Agreement, the Note Purchase Agreement, and the Note, which are hereby incorporated by reference. The provisions of the Security Agreement, the Note Purchase Agreement, and the Note shall supersede and control over any conflicting or inconsistent provision herein. The rights and remedies of the Secured Party with respect to the IP Collateral are as provided by the Security Agreement, the Note Purchase Agreement, and the Note, and related documents, and nothing in this IP Security Agreement shall be deemed to limit such rights and remedies.
4. Execution in Counterparts. This IP Security Agreement may be executed in counterparts (and by different parties hereto in different counterparts), each of which shall constitute an original, but all of which when taken together shall constitute a single contract. Delivery of an executed counterpart of a signature page to this IP Security Agreement by facsimile or in electronic (i.e., “pdf” or “tif”) format shall be effective as delivery of a manually executed counterpart of this IP Security Agreement.
5. Successors and Assigns. This IP Security Agreement will be binding on and shall inure to the benefit of the parties hereto and their respective successors and assigns.
6. Governing Law; Arbitration. This IP Security Agreement and any claim, controversy, dispute, or cause of action (whether in contract or tort or otherwise) based upon, arising out of, or relating to this IP Security Agreement and the transactions contemplated hereby and thereby shall be governed by, and construed in accordance with, the laws of the United States and the State of Utah, without giving effect to any choice or conflict of law provision or rule (whether of the State of Utah or any other jurisdiction), and will be subject to the Arbitration Provisions (as defined in the Purchase Agreement) attached as an exhibit to the Purchase Agreement.
SIGNATURE PAGE FOLLOWS
IN WITNESS WHEREOF, Xxxxxx has caused this IP Security Agreement to be duly executed and delivered by its officer thereunto duly authorized as of the date first above written.
|
BIO-KEY INTERNATIONAL, INC. |
|
|
By: /s/ Xxxxxxx X. Xxxxx Xxxxxxx X. Xxxxx, CFO
Address for Notices: 000 Xxxxxxxxx Xxxx, Xxxxx 0000 Xxxxxxx, Xxx Xxxxxx 00000 |
AGREED TO AND ACCEPTED:
|
STREETERVILLE CAPITAL, LLC |
|
|
By: /s/ Xxxx X. Xxxx Xxxx X. Xxxx, President
Address for Notices: 000 Xxxx Xxxxxx Xxxxx, Xxxxx 0000 |
SCHEDULE 1
PATENTS
Patents
|
Title |
Patent No. |
Issue Date |
Record Owner |
|
Image Processing Technology |
No. 7,155,040 |
December 26, 2006 |
BIO-key International, Inc. |
|
Image Enhancement and Data Core Extraction Algorithm Components |
No. 7,359,553 |
April 15, 2008 |
BIO-key International, Inc. |
|
“Match Template Protection within a Biometric Security System” Method |
No. 7,454,624 |
November 18, 2008 |
BIO-key International, Inc. |
|
Trusted Biometric Device |
No. 7,502,938 |
March 10, 2009 |
BIO-key International, Inc. |
|
“Generation of Directional Information in the Context of Image Processing” Method |
No. 8,055,027 |
November 8, 2011 |
BIO-key International, Inc. |
|
“Method For Retrofitting Password Enabled Computer Software with a Redirectional User Authentication Method” |
No. 8,196,193 |
June 5, 2012 |
PistolStar, Inc. |
|
“Client Side Authentication Redirection” |
No. 8,397,077 |
March 12, 2013 |
PistolStar, Inc. |
|
“Utilization of Biometric Data” Method |
No. 9,646,146 |
May 3, 2017 |
BIO-key International, Inc. |
|
“Utilization of Biometric Data” Method for a Mobile Device |
No. 10,002,244 |
June 19, 2018 |
BIO-key International, Inc. |
|
“Adaptive Short Lists and Acceleration of Biometric Database Search” Method |
No. 10,025,831 |
July 27, 2018 |
BIO-key International, Inc. |
|
“Fingerprint Lock” Lock Design Method |
No. 10,400,481 |
September 3, 2019 |
BIO-key International, Inc. |
|
“Fingerprint Lock Control method and Fingerprint Lock System” Method |
No. 10,410,040 |
September 10, 2019 |
BIO-key International, Inc. |
|
“Biometric Recognition for Uncontrolled Acquisition Environments” Method |
No. 10,984,085 |
April 20, 2021 |
BIO-key International, Inc. |
Patent Applications
|
Title |
Application/ Publication Number |
Filing Date |
Record Owner |
Trademarks
|
Title |
Trademark No. |
Registration Date |
Record Owner |
|
TRUE USER IDENTIFICATION |
No. 78328764 |
September 6, 2005 |
BIO-key International, Inc. |
|
PORTALGUARD |
No. 90836115 |
August 9, 2022 |
BIO-key International, Inc. |
|
TRUE USER IDENTIFICATION |
No. 85163934 |
April 17, 2012 |
BIO-key International, Inc. |
|
BIO-KEY |
No. 90836153 |
August 9, 2022 |
BIO-key International, Inc. |
|
SIDETOUCH |
No. 87096696 |
October 16, 2018 |
BIO-key International, Inc. |
|
WEB-KEY |
No. 78362839 |
November 1, 2005 |
BIO-key International, Inc. |
|
B BIO-KEY |
No. 86081366 |
December 16, 2014 |
BIO-key International, Inc. |
|
INTELLIGENT IMAGE INDEXING |
No. 77204687 |
January 1, 2009 |
BIO-key International, Inc. |
|
ECOID |
No. 87093755 |
September 12, 2017 |
BIO-key International, Inc. |
|
MOBILEAUTH |
No. 90850614 |
November 8, 2022 |
BIO-key International, Inc. |
|
SIDESWIPE |
No. 86434928 |
August 23, 2016 |
BIO-key International, Inc. |
|
SIDEPASS |
No. 87385033 |
May 22, 2018 |
BIO-key International, Inc. |
|
BIO-KEY |
No. 75443426 |
May 18, 1999 |
BIO-key International, Inc. |
|
PORTALGUARD |
No. 85213180 |
July 19, 2011 |
BIO-key International, Inc. |
|
PISTOLSTAR |
No. 76657969 |
January 23, 2007 |
BIO-key International, Inc. |
