EXHIBIT 4.10
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT (the "Agreement"), dated
as of September ___, 2005, is made by NORTH TEXAS STEEL COMPANY, INC., a Texas
corporation ("NTSCO"), OMAHA HOLDINGS CORP., a Delaware corporation ("Omaha"),
and AMERICAN TECHNOLOGIES GROUP, INC., a Nevada corporation ("ATG" together with
NTSCO and Omaha, each a "Grantor" and collectively, the "Grantors"), in favor of
LAURUS MASTER FUND, LTD. ("Laurus").
WHEREAS, pursuant to that certain Security and Purchase Agreement dated
as of the date hereof by and among Grantors and Laurus (as from time to time
amended, restated, supplemented or otherwise modified, the "Security
Agreement"), Laurus has agreed to make the Loans for the benefit of Grantors;
and
WHEREAS, Laurus is willing to make the Loans as provided for in the
Security Agreement, but only upon the condition, among others, that Grantors
shall have executed and delivered to Laurus this Agreement;
NOW, THEREFORE, in consideration of the premises and mutual covenants
herein contained and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, each Grantor hereby agrees as
follows:
Section 1. DEFINED TERMS. All capitalized terms used but not otherwise
defined herein have the meanings given to them in the Security Agreement.
Section 2. GRANT OF SECURITY INTEREST IN INTELLECTUAL PROPERTY
COLLATERAL. To secure the complete and timely payment of all the Obligations of
Grantors now or hereafter existing from time to time, each Grantor hereby grants
to Laurus a continuing first priority security interest in all of such Grantor's
right, title and interest in, to and under the following, whether presently
existing or hereafter created or acquired (collectively, the "Collateral"):
(a) all of its Patents and Patent Licenses to which
it is a party including those referred to on Schedule I
hereto;
(b) all of its Trademarks and Trademark Licenses to
which it is a party including those referred to on Schedule II
hereto;
(c) all of its Copyrights and Copyright Licenses to
which it is a party including those referred to on Schedule
III hereto;
(d) all reissues, continuations or extensions of the
foregoing;
(e) all goodwill of the business connected with the
use of, and symbolized by, each Patent, each Patent License,
each Trademark, each Trademark License, each Copyright and
each Copyright License; and
(f) all products and proceeds of the foregoing,
including, without limitation, any claim by such Grantor
against third parties for past, present or future (i)
infringement or dilution of any Patent or Patent licensed
under any Patent License, (ii) injury to the goodwill
associated with any Patent or any Patent licensed under any
Patent License, (iii) infringement or dilution of any
Trademark or Trademark licensed under any Trademark License,
(iv) injury to the goodwill associated with any Trademark or
any Trademark licensed under any Trademark License, (v)
infringement or dilution of any Copyright or Copyright
licensed under any Copyright License, and (vi) injury to the
goodwill associated with any Copyright or any Copyright
licensed under any Copyright License.
Section 3. REPRESENTATIONS AND WARRANTIES. Each Grantor represents and
warrants that such Grantor does not have any interest in, or title to, any
Patent, Trademark or Copyright except as set forth in Schedule I, Schedule II
and Schedule III, respectively, hereto. Each Grantor's Patents, Trademarks and
Copyrights are valid and enforceable, are solely owned by a Grantor and there is
no claim that the use of any of them violates the rights of any third person.
This Agreement is effective to create a valid and continuing Lien on and
perfected security interests in favor of Laurus in all of each Grantor's
Patents, Trademarks and Copyrights and such perfected security interests are
enforceable as such as against any and all creditors of, and purchasers from,
each Grantor. Upon filing of this Intellectual Property Security Agreement with
the United States Patent and Trademark Office and the United States Copyright
Office and the filing of appropriate financing statements, all action necessary
or desirable to protect and perfect Laurus' Lien on each Grantor's Patents,
Trademarks and Copyrights shall have been duly taken.
Section 4. COVENANTS. Each Grantor covenants and agrees with Laurus
that from and after the date of this Agreement and until the expiration of the
Term:
(a) Such Grantor shall notify Laurus immediately if
it knows or has reason to know that any application or
registration relating to any Patent, Trademark or Copyright
(now or hereafter existing) may become abandoned or dedicated,
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, the United States Copyright Office or any court)
regarding such Grantor's ownership of any Patent, Trademark or
Copyright, its right to register the same, or to keep and
maintain the same.
(b) In no event shall such Grantor, either directly
or through any agent, employee, licensee or designee, file an
application for the registration of any Patent, Trademark or
Copyright with the United States Patent and Trademark Office,
the United States Copyright Office or any similar office or
agency without giving Laurus prior written notice thereof,
and, upon request of Laurus, such Grantor shall execute and
deliver a supplement hereto (in form and substance
satisfactory to Laurus) to evidence Laurus' Lien on such
Patent, Trademark or Copyright, and the General Intangibles of
such Grantor relating thereto or represented thereby.
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(c) Such Grantor shall take all actions necessary or
requested by Laurus to maintain and pursue each application,
to obtain the relevant registration and to maintain the
registration of each of the Patents or Trademarks (now or
hereafter existing), including the filing of applications for
renewal, affidavits of use, affidavits of noncontestability
and opposition and interference and cancellation proceedings.
(d) In the event that any of the Collateral is
infringed upon, or misappropriated or diluted by a third
party, such Grantor shall notify Laurus promptly after such
Grantor learns thereof. Such Grantor shall, unless it shall
reasonably determine that such Collateral is in no way
material to the conduct of its business or operations,
promptly xxx for infringement, misappropriation or dilution
and to recover any and all damages for such infringement,
misappropriation or dilution, and shall take such other
actions as Laurus shall deem appropriate under the
circumstances to protect such Collateral.
Section 5. SECURITY AGREEMENT. The security interests granted pursuant
to this Agreement are granted in conjunction with the security interests granted
to Laurus pursuant to the Security Agreement. Each Grantor hereby acknowledges
and affirms that the rights and remedies of Laurus with respect to the security
interest in the Collateral made and granted hereby are more fully set forth in
the Security Agreement, the terms and provisions of which are incorporated by
reference herein as if fully set forth herein.
Section 6. REINSTATEMENT. This Agreement shall remain in full force and
effect and continue to be effective should any petition be filed by or against
any Grantor for liquidation or reorganization, should any Grantor become
insolvent or make an assignment for the benefit of any creditor or creditors or
should a receiver or trustee be appointed for all or any significant part of any
Grantor's assets, and shall continue to be effective or be reinstated, as the
case may be, if at any time payment and performance of the Obligations, or any
part thereof, is, pursuant to applicable law, rescinded or reduced in amount, or
must otherwise be restored or returned by any obligee of the Obligations,
whether as a "voidable preference," "fraudulent conveyance," or otherwise, all
as though such payment or performance had not been made. In the event that any
payment, or any part thereof, is rescinded, reduced, restored or returned, the
Obligations shall be reinstated and deemed reduced only by such amount paid and
not so rescinded, reduced, restored or returned.
Section 7. INDEMNIFICATION. (A) Each Grantor assumes all responsibility
and liability arising from the use of the Patents, Trademarks and/or Copyrights
and each Grantor hereby indemnifies and holds Laurus harmless from and against
any claim, suit, loss, damage or expense (including reasonable attorneys' fees)
arising out of such Grantor's operations of its business from the use of the
Patents, Trademarks and/or Copyrights. (B) In any suit, proceeding or action
brought by Laurus under any Patent License, Trademark License or Copyright
License for any sum owing thereunder, or to enforce any provisions of such
license, Grantors will indemnify and keep Laurus harmless from and against all
expense, loss or damage suffered by reason of any defense, set off,
counterclaim, recoupment or reduction or liability whatsoever of the obligee
thereunder, arising out of a breach of the applicable Grantor of any obligation
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thereunder or arising out of any other agreement, indebtedness or liability at
any time owing to or in favor of such obligee or its successors from such
Grantor, and all such obligations of such Grantor shall be and remain
enforceable against and only against such Grantor and shall not be enforceable
against Laurus.
Section 8. NOTICES. Whenever it is provided herein that any notice,
demand, request, consent, approval, declaration or other communication shall or
may be given to or served upon any of the parties by any other party, or
whenever any of the parties desires to give and serve upon any other party any
communication with respect to this Agreement, each such notice, demand, request,
consent, approval, declaration or other communication shall be in writing and
shall be given in the manner, and deemed received, as provided for in the
Security Agreement.
Section 9. TERMINATION OF THIS AGREEMENT. Subject to Section 6 hereof,
this Agreement shall terminate upon payment in full in cash of all Obligations
and irrevocable termination of the Security Agreement.
[Signature Page to Follow]
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IN WITNESS WHEREOF, each 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.
NORTH TEXAS STEEL COMPANY, INC.
By:
-----------------------------------
Name:
Title:
OMAHA HOLDINGS CORP.
By:
-----------------------------------
Name:
Title:
AMERICAN TECHNOLOGIES GROUP, INC.
By:
-----------------------------------
Name:
Title:
ACCEPTED and ACKNOWLEDGED by:
LAURUS MASTER FUND, LTD.
By:
----------------------------------
Name:
Title:
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SCHEDULE I
TO
INTELLECTUAL PROPERTY SECURITY AGREEMENT
I. PATENT REGISTRATIONS
Patent Reg. No. Date
------ -------- ----
II. PATENT APPLICATIONS
Patent Reg. No. Date
------ -------- ----
III. PATENT LICENSES
Patent Reg. No. Date
------ -------- ----
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SCHEDULE II
TO
INTELLECTUAL PROPERTY SECURITY AGREEMENT
I. TRADEMARK REGISTRATIONS
REG. NO. XXXX COUNTRY REG. DATE
-------- ---- ------- ---------
II. TRADEMARK APPLICATIONS
REG. NO. XXXX COUNTRY REG. DATE
-------- ---- ------- ---------
III. TRADEMARK LICENSES
REG. NO. XXXX COUNTRY REG. DATE
-------- ---- ------- ---------
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SCHEDULE III
TO
INTELLECTUAL PROPERTY SECURITY AGREEMENT
I. COPYRIGHT REGISTRATIONS
Copyright Reg. No. Date
--------- -------- ----
None
II. COPYRIGHT APPLICATIONS
Copyright Reg. No. Date
--------- -------- ----
None
III. COPYRIGHT LICENSES
Copyright Reg. No. Date
--------- -------- ----
None
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