INTELLECTUAL PROPERTY SECURITY AGREEMENT
Execution Copy
Exhibit 10.32
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This INTELLECTUAL PROPERTY SECURITY AGREEMENT (this “Agreement”), dated as of April 30, 2010, is made by PACIRA PHARMACEUTICALS, INC., a California corporation (“Grantor”), in favor of GENERAL ELECTRIC CAPITAL CORPORATION, a Delaware corporation, in its capacity as agent (in such capacity, together with any successors, endorsees and assigns, the “Agent”) for itself and the lenders from time to time party to the Loan Agreement hereinafter defined (collectively, the “Lenders”).
W I T N E S S E T H:
WHEREAS, Grantor, Agent and Lenders are parties to the Loan and Security Agreement, dated as of the date hereof (as the same may be amended, restated, replaced, supplemented or otherwise modified from time to time, the “Loan Agreement”), pursuant to which Lenders have agreed to provide to Grantor certain loans and other extensions of credit in accordance with the terms and conditions thereof; and
WHEREAS, pursuant to the Loan Agreement, Grantor is required to execute and deliver this Agreement.
NOW, THEREFORE, in consideration of the premises and mutual covenants herein contained and to induce Agent and Lenders to enter into the Loan Agreement and to induce the Lenders to make their respective extensions of credit to the Borrower thereunder, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Grantor hereby agrees with the Agent as follows:
Section 1. Defined Terms. Capitalized terms used herein without definition are used as defined in the Loan Agreement.
Section 2. Grant of Security Interest in Intellectual Property Collateral. Grantor, as collateral security for the prompt and complete payment and performance when due (whether at stated maturity, by acceleration or otherwise) of the Obligations hereby mortgages, pledges and hypothecates to Agent, for the benefit of itself and Lenders, and grants to Agent, for the benefit of itself and Lenders, a Lien on and security interest in, all of its right, title and interest in, to and under the following Collateral of Grantor (the “Intellectual Property Collateral”):
(a) all of its trade secrets and rights under any written agreement granting any right to use trade secrets;
(b) all of its copyrights and rights under any written agreement granting any right to use copyrights, including, without limitation, those referred to on Schedule 1 hereto, together with all renewals, reversions and extensions of the foregoing;
(c) all of its trademarks and rights under any written agreement granting any right to use trademarks, including, without limitation, those referred to on Schedule 2 hereto, together with all renewals, reversions and extensions of the foregoing;
(d) all goodwill of the business connected with the use of, and symbolized by, each such trademark covered by clause (c) above;
(e) all of its US patents and rights under any written agreement granting any right to use US patents, including, without limitation, those owned by Grantor referred to on Schedule 3 hereto, together with all reissues, reexaminations, continuations, continuations-in-part, divisionals, renewals and extensions of the foregoing;
(f) all of its US patent applications and rights under any written agreement granting any right to use US patent applications, including, without limitation, those owned by Grantor referred to on Schedule 4 hereto, together with all reissues, reexaminations, continuations, continuations-in-part, divisionals, renewals and extensions of the foregoing;
(g) all of its PCT patent applications and rights under any written agreement granting any right to use PCT patent applications, together with all reissues, reexaminations, continuations, continuations-in-part, divisionals, renewals and extensions of the foregoing;
(h) all of its foreign patents and patent applications, and rights under any written agreement granting any right to use foreign patents and patent applications, together with all reissues, reexaminations, continuations, continuations-in-part, divisionals, renewals and extensions of the foregoing;
(i) all applications, registrations, claims, products, awards, judgments, amendments, improvements and insurance claims related thereto now or hereafter owned or licensed by Grantor, or any claims for damages by way of any past, present, or future infringement of any of the foregoing, together with all accessions and additions thereto, proceeds and products thereof (including, without limitation, any proceeds resulting under insurance policies); provided, further, that the Intellectual Property Collateral shall include, without limitation, all cash, royalty fees, other proceeds, accounts and general intangibles that consist of rights of payment to or on behalf of Grantor or proceeds from the sale, licensing or other disposition of all or any part of, or rights in, the Intellectual Property Collateral by or on behalf of Grantor; and
(j) all income, royalties, proceeds and liabilities at any time due or payable or asserted under and with respect to any of the foregoing, including, without limitation, all rights to xxx and recover at law or in equity for any past, present and future infringement, misappropriation, dilution, violation or other impairment thereof.
Notwithstanding the foregoing the term “Intellectual Property Collateral” shall not include and shall exclude all Excluded Assets.
Section 3. Loan Agreement. The security interest granted pursuant to this Agreement is granted in conjunction with, and is in no way limiting, the security interest granted to Agent, for the benefit of itself and Lenders, pursuant to the Loan Agreement, and Grantor hereby acknowledges and agrees that the rights and remedies of Agent and Lenders with respect to the security interest in the Intellectual Property Collateral made and granted hereby are more fully set forth in the Loan Agreement, the terms and provisions of each of which are incorporated by reference herein as if fully set forth herein.
Section 4. Grantor Remains Liable. Grantor hereby agrees that, anything herein to the contrary notwithstanding, Grantor shall retain full and complete responsibility for the prosecution, defense, enforcement or any other necessary or desirable actions in connection with their Intellectual Property subject to a security interest hereunder.
Section 5. Counterparts. This Agreement may be executed in any number of counterparts and by different parties in separate counterparts, each of which when so executed shall be deemed to be an original and all of which taken together shall constitute one and the same agreement. Signature pages may be detached from multiple separate counterparts and attached to a single counterpart.
Section 6. Governing Law. This Agreement and the rights and obligations of the parties hereto shall be governed by, and construed and interpreted in accordance with, the law of the State of New York.
[Signature Pages Follow]
In witness whereof, Grantor has caused this Intellectual Property Security Agreement to be executed and delivered by its duly authorized officer as of the date first set forth above.
| GRANTOR: | ||
| PACIRA PHARMACEUTICALS, INC. | ||
| By: |
/s/ Xxxxx Xxxxxxxx | |
| Name: |
Xxxxx Xxxxxxxx | |
| Title: |
Chief Financial Officer | |
ACCEPTED AND AGREED
as of the date first above written:
GENERAL ELECTRIC CAPITAL CORPORATION,
as Agent,
| By: | /s/ X. Xxxxx Whiteley | |
| Name: | X. Xxxxx Xxxxxxxx | |
| Title: | Duly Authorized Signatory |
5
Schedule 1
to
Intellectual Property Security Agreement
None.
Schedule 2
to
Intellectual Property Security Agreement
US Trademarks – Registered or Applications Pending
| Xxxx |
Country | Class | App # | Filing Date | Reg # | Reg Date | Status | |||||||||||||||
| DEPOBUPIVACAINE |
United States | 5 | 3335843 | 11/13/07 | Section 8 Affidavit due 11/13/13 | |||||||||||||||||
| DEPOCYT |
United States | 5 | 2390316 | 09/26/00 | Renewal due 09/26/10 | |||||||||||||||||
| DEODUR |
United States | 5 | 2983713 | 08/09/05 | Section 8 Affidavit due 08/09/11 | |||||||||||||||||
| DEPODUR and design [GRAPHIC APPEARS HERE] |
United States | 5 | 3252733 | 06/19/07 | Section 8 Affidavit due 06/19/13 | |||||||||||||||||
| DEPODUR and design [GRAPHIC APPEARS HERE] |
United States | 16 | 3127414 | 08/08/06 | Section 8 Affidavit due 08/08/12 | |||||||||||||||||
| DEPOFOAM |
United States | 5 | 3325579 | 10/30/07 | Section 8 Affidavit due 10/30/13 | |||||||||||||||||
| DEPOFOAM |
United States | 40, 42 | 2443719 | 04/17/01 | Renewal due 04/17/11 | |||||||||||||||||
| PACIRA |
United States | 5 | 3648129 | 06/30/09 | Section 8 Affidavit due 06/30/15 | |||||||||||||||||
| PACIRA |
United States | 42 | 3651782 | 07/07/09 | Section 8 Affidavit due 07/07/15 | |||||||||||||||||
Schedule 3
to
Intellectual Property Security Agreement
US Patents – Registered
| Method for Treating Neurological Disorders | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.006A | NEW | 05/14/1993 | 08/062,799 | 10/03/1995 | 5,455,044 | 05/14/2013 | ISSUED | |||||||||
| XXXXXX XXXXXX |
000000.XXX0 | PCIRA.006DVI | DIV | 06/07/1995 | 08/484,501 | 11/19/1996 | 5,576,018 | 11/19/2013 | ISSUED | |||||||||
| Uniform Spherical Multilamellar Liposomes of Defined and Adjustable Size Distribution | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.7CP1CP1 | NEW | 04/25/1990 | 07/514,665 | 12/22/1992 | 5,173,219 | 12/22/2009 | ISSUED | |||||||||
| Heterovesicular Liposomes (to 020001) | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.9CP1CP1 | NEW | 06/16/1993 | 08/078,701 | 06/06/1995 | 5,422,120 | 06/16/2013 | ISSUED | |||||||||
| Preparation of Multivesicular Liposomes for Controlled release of Biologically Active Xxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.012A | NEW | 09/13/1994 | 08/305,158 | 11/30/1999 | 5,993,850 | 11/30/2016 | ISSUED | |||||||||
| Heterovesicular Xxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.9CPCPCP | CIP | 02/23/1995 | 08/393,724 | 11/19/1996 | 5,576,017 | 06/06/2012 | ISSUED | |||||||||
| Epidural Administration of Therapeutic Compounds with Sustained Rate of Xxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.013A | NEW | 07/14/1995 | 08/502,569 | 08/03/1999 | 5,931,809 | 07/14/2015 | ISSUED | |||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.013C1 | CON | 09/16/1997 | 08/931,867 | 08/06/2002 | 6,428,529 | 07/14/2015 | ISSUED | |||||||||
| Multivesicular Liposomes for Controlled Release of Encapsulated Biologically Active Substances | ||||||||||||||||||
| XXXXXX XXXXXX |
000000.XXX0 | PCIRA.5CPCDV1 | DIV | 03/20/1998 | 09/045,236 | 10/17/2000 | 6,132,766 | 11/16/2013 | ISSUED | |||||||||
| Multivesicular Liposomes for Controlled Release of Encapsulated Biologically Active Substances | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.005CP2C1 | R62 | 05/23/1997 | 08/862,589 | 06/16/1998 | 5,766,627 | 11/16/2013 | ISSUED | |||||||||
| Multivesicular Liposomes Having a Biologically Active Substance Encapsulated Therein in the Presence of a Xxxxxxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.8PPCPCCP | CIP | 06/06/1995 | 08/473,019 | 09/15/1998 | 5,807,572 | 09/15/2015 | ISSUED | |||||||||
| Multivesicular Liposomes Having a Biologically Active Substance Encapsulated Therein in the Presence of a Xxxxxxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.8CPPCPCCP | CIP | 06/06/1995 | 08/472,126 | 03/03/1998 | 5,723,147 | 03/03/2015 | ISSUED | |||||||||
| Cyclodextrin Liposomes Encapsulating Pharmacologic Compounds and Methods for Their Use | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.010NP | CIP | 12/21/1995 | 08/535,256 | 06/02/1998 | 5,759,573 | 04/22/2014 | ISSUED | |||||||||
| Method for Producing Liposomes with Increased Percent of Compound Encapsulated | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.018A | NEW | 10/01/1996 | 08/723,583 | 12/07/1999 | 5,997,899 | 10/01/2016 | ISSUED | |||||||||
| XXXXXX XXXXXX |
000000.XXX0 | PCIRA.018DV3 | DIV | 11/01/1999 | 09/431,525 | 01/09/2001 | 6,171,613 | 10/01/2016 | ISSUED | |||||||||
| XXXXXX XXXXXX |
000000.XXX0 | PCIRA.018DV1 | DIV | 11/01/1999 | 09/431,523 | 02/27/2001 | 6,193,998 | 10/01/2016 | ISSUED | |||||||||
| UNITED STATES |
030005.CON1 | PCIRA.018C1 | CON | 12/06/1999 | 09/454,521 | 06/05/2001 | 6,241,999 | 16/01/2016 | ISSUED | |||||||||
| Method for Utilizing Neutral Lipids to Modify In Vivo Release from Multivesicular Xxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.021A | NEW | 01/31/1997 | 08/792,566 | 04/06/1999 | 5,891,467 | 01/31/2017 | ISSUED | |||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.021DV1 | DIV | 11/19/1997 | 08/974,296 | 10/05/1999 | 5,962,016 | 01/31/2017 | ISSUED | |||||||||
| Modulation of Drug Loading in Multivesicular Xxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.015A | NEW | 09/08/1997 | 08/925,532 | 08/22/2000 | 6,106,858 | 09/08/2017 | ISSUED | |||||||||
| Sustained Release Liposomal Xxxxxxxxxx Xxxxxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000XX0 | PCIRA.014A | FCA | 09/18/1998 | 09/156,214 | 04/04/2000 | 6,045,824 | 09/18/2018 | ISSUED | |||||||||
| Biodegradable Compositions for the Controlled Release of Encapsulated Substances | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.020A | FCA | 07/16/1999 | 09/356,218 | 08/21/2001 | 6,277,413 | 07/16/2019 | ISSUED | |||||||||
| XXXXXX XXXXXX |
000000.XXX0 | PCIRA.020DV1 | DIV | 05/17/2001 | 09/859,847 | 09/21/2004 | 6,793,938 | 08/14/2019 | ISSUED | |||||||||
Schedule 4
to
Intellectual Property Security Agreement
US Patents: Pending
| Sustained Release Liposomal Anesthetic Compositions | ||||||||||||||||||
| UNITED STATES |
041002.CONWO | PCIRA.014C1 | DCA | 04/01/2005 | 11/097,756 | PENDING | ||||||||||||
| Production of Multivesicular Xxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.019C1 | FCA | 02/25/2007 | 11/678,615 | PENDING | ||||||||||||
| Encapsulation of Nanosuspensions in Liposomes and Xxxxxxxxxxxx | ||||||||||||||||||
| XXXXXX XXXXXX |
000000 | PCIRA.017A | FCA | 05/31/2002 | 10/161,969 | PENDING | ||||||||||||
| Process for Manufacturing Multivesicular Liposomes | ||||||||||||||||||
| UNITED STATES |
096PO1 | NEW | PROPOSED | |||||||||||||||
| Hyaluronidase As An Adjuvant For Increasing The Injection Volume And Dispersion Of Large Diameter Synthetic Membrane Vesicles Containing A Therapeutic Agent | ||||||||||||||||||
| UNITED STATES |
032PR | PCIRA.032PR | PRO | 05/29/2009 | 61/182367 | PENDING | ||||||||||||
