INTELLECTUAL PROPERTY SECURITY AGREEMENT
This INTELLECTUAL PROPERTY SECURITY AGREEMENT ("Agreement"), dated as
of March 30, 2000, is entered into by and among BANK OF AMERICA, N.A. ("Agent")
and EFTC CORPORATION, a Colorado corporation ("EFTC"), in light of the
following:
A. EFTC, RM ELECTRONICS, INC., a New Hampshire corporation (doing
business as Personal Electronics, Inc.) ("PEI" and collectively with EFTC,
"Borrowers"), Agent and certain financial institutions signatory thereto
("Lenders") are, contemporaneously herewith, entering into that certain Loan and
Security Agreement ("Loan Agreement") and other instruments, documents and
agreements contemplated thereby or related thereto (collectively, together with
the Loan Agreement, the "Loan Documents");
B. EFTC is the owner of certain intellectual property, identified
below, in which EFTC is granting a security interest to Agent, for the ratable
benefit of Lenders, to secure the Obligations of Borrowers under the Loan
Agreement.
NOW, THEREFORE, in consideration of the mutual premises, covenants,
conditions, representations, and warranties hereinafter set forth and for other
good and valuable consideration, the parties hereto mutually agree as follows:
1. DEFINITIONS AND CONSTRUCTION.
1.1 Definitions. The following terms, as used in this
Agreement, have the following meanings:
"Code" means the California Uniform Commercial Code, as
amended and supplemented from time to time, and any successor statute.
"Collateral" means:
(i) Each of the trademarks and rights and interest
which are capable of being protected as trademarks (including
trademarks, service marks, designs, logos, indicia, tradenames,
corporate names, company names, business names, fictitious business
names, trade styles, and other source or business identifiers, and
applications pertaining thereto), which are presently, or in the future
may be, owned by EFTC, in whole or in part, and all trademark rights
owned by EFTC with respect thereto throughout the world, including all
proceeds thereof (including license royalties and proceeds of
infringement suits), and rights to renew and extend such trademarks and
trademark rights;
(ii) Each of the patents and patent applications
which are presently, or in the future may be owned by EFTC, in whole or
in part, and all patent rights owned by EFTC with respect thereto
throughout the world, including all proceeds thereof (including license
royalties and proceeds of infringement suits), foreign filing rights,
and rights to extend such patents and patent rights;
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(iii) Each of the copyrights and rights and interests
capable of being protected as copyrights, which are presently, or in
the future may be, owned by EFTC, in whole or in part, and all
copyright rights with respect thereto throughout the world, including
all proceeds thereof (including license royalties and proceeds of
infringement suits), and all tangible property embodying the copyrights
(including books, records, films, computer tapes or disks, photographs,
specification sheets, source codes, object codes, and other physical
manifestations of the foregoing);
(iv) All of EFTC's rights to the trademarks and
trademark registrations listed on Schedule A, attached hereto, as the
same may be updated hereafter from time to time;
(v) All of EFTC's rights, title, and interest, in
and to the patents and patent applications listed on Schedule B,
attached hereto, as the same may be updated hereafter from time to
time;
(vi) All of EFTC's rights, title, and interest, in
and to the copyrights and copyright registrations listed on Schedule C,
attached hereto, as the same may be updated hereafter from time to
time;
(vii) All of EFTC's rights, title, and interest to
register trademark claims under any state or federal trademark law or
regulation of any foreign country and to apply for, renew, and extend
the trademark registrations and trademark rights, the right (without
obligation) to xxx or bring opposition or cancellation proceedings in
the name of any EFTC or in the name of Agent for past, present, and
future infringements of the trademarks, registrations, or trademark
rights and all rights (but not obligations) corresponding thereto in
the United States and any foreign country, and the associated goodwill;
(viii) All of EFTC's rights, title, and interest in
all patentable inventions, and to file applications for patent under
federal patent law or regulation of any foreign country, and to request
reexamination and/or reissue of the patents, the right (without
obligation) to xxx or bring interference proceedings in the name of
EFTC or in the name of Agent for past, present, and future
infringements of the patents, and all rights (but not obligations)
corresponding thereto in the United States and any foreign country;
(ix) All of EFTC's rights to register copyright
claims under any federal copyright law or regulation of any foreign
country and to apply for registrations on original works, compilations,
derivative works, collective works, and works for hire, the right
(without obligation) to xxx in the name of EFTC or in the name of Agent
for past, present, and future infringements of the copyrights, and all
rights (but not obligations) corresponding thereto in the United States
and any foreign country;
(x) All general intangibles relating to the
foregoing; and
(xi) All proceeds of any and all of the foregoing
(including, without limitation, license royalties and proceeds of
infringement suits) and, to the extent not
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otherwise included, all payments under insurance, or any indemnity,
warranty, or guaranty payable by reason of loss or damage to or
otherwise with respect to the Collateral.
"Event of Default" means any "Event of Default" as
defined in the Loan Agreement.
"Obligations" has the meaning set forth in the Loan
Agreement and shall include costs and expenses described in Section 10.8 hereof.
1.2 Construction. Unless the context of this Agreement
clearly requires otherwise: (a) references to the plural include the singular
and references to the singular include the plural; (b) references to any gender
include the other gender; (c) the terms "include" and "including" are not
limiting; and (d) the term "or" has the inclusive meaning represented by the
phrase "and/or." The terms "hereof," "herein," "hereby," and "hereunder," and
other similar terms in this Agreement, refer to this Agreement as a whole and
not to any particular provision of this Agreement. References in this Agreement
to any "determination," or any matter being "determined," by Agent or any Lender
include good faith estimates (in the case of quantitative determinations), and
good faith beliefs (in the case of qualitative determinations) by Agent or such
Lender and mean that any such determination so made shall be conclusive absent
manifest error. Unless otherwise specified, section and subsection references
are to this Agreement. Any reference to any statute, law, or regulation shall
include all amendments thereto and revisions thereof. Any reference herein to
any of the Loan Documents includes any and all alterations, amendments,
extensions, modifications, renewals, or supplements thereto or thereof, as
applicable.
2. GRANT OF SECURITY INTEREST.
EFTC hereby grants to Agent for the ratable benefit of Lenders
a continuing security interest in all of EFTC's right, title, and interest in
and to the Collateral to secure the Obligations.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
EFTC hereby represents, warrants, and covenants that:
3.1 Trademarks; Service Marks; Patents; Copyrights.
(i) A true and complete schedule setting forth all
United States (federal and state) and foreign trademark and service
xxxx registrations owned or controlled by EFTC or licensed to EFTC,
together with a summary description and full information in respect of
the filing or issuance thereof and expiration dates is set forth on
Schedule A;
(ii) A true and complete schedule setting forth all
United States and foreign patent and patent applications owned or
controlled by EFTC or licensed to EFTC, together with a summary
description and full information in respect of the filing or issuance
thereof and expiration dates is set forth on Schedule B;
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(iii) A true and complete schedule setting forth all
federal copyright registrations owned or controlled by EFTC or licensed
to EFTC, together with a summary description and full information in
respect of the filing or issuance thereof and expiration dates is set
forth on Schedule C;
3.2 Validity; Enforceability. EFTC is not presently aware,
except as disclosed on Schedule 8.15 to the Loan Agreement, of any past,
present, or prospective claim by any third party that any of the patents,
service marks, trademarks, or copyrights is invalid or unenforceable, or that
the use of any patents, service marks, trademarks, or copyrights violates the
rights of any third person, or of any basis for any such claims;
3.3 Title. EFTC is the exclusive owner of the entire and
unencumbered right, title, and interest in and to each of the patents, patent
applications, service marks, service xxxx registrations, trademarks, trademark
registrations, and copyrights, and copyright registrations designated on
Schedules A or B, or C as owned by EFTC, free and clear of any liens, charges,
and encumbrances, including pledges, assignments, licenses (except as set forth
on Schedules A, B, or C and except as otherwise contemplated or permitted by the
Loan Documents), and covenants by EFTC not to xxx third persons;
3.4 Notice. EFTC has used and will continue to use proper
statutory notice in connection with its use of each of their owned patents,
service marks, trademarks and copyrights when deemed necessary by EFTC;
3.5 Quality. EFTC has used and will continue to use
consistent standards of high quality in the manufacture, sale, and delivery of
products and services sold or delivered under or in connection with their owned
service marks and trademarks, including, to the extent applicable, in the
operation and maintenance of their merchandising operations, and EFTC will
continue to maintain the validity of such service marks and trademarks.
4. AFTER-ACQUIRED PATENTS, SERVICE MARKS, TRADEMARK RIGHTS,
COPYRIGHTS.
If EFTC obtains ownership of any new copyrights, service marks,
trademarks, any new patentable inventions or become entitled to the benefit of
any patent application or patent for any reissue, division, or continuation of
any patent, then: (a) the provisions of this Agreement shall automatically apply
thereto; (b) EFTC shall give notice in writing to Agent with respect thereto at
least semi annually (on each September 1 and March 1) and shall at such time
provide Agent with an amended Schedule A, Schedule B, or Schedule C, as the case
may be; (c) Agent, for the ratable benefit of Lenders, is hereby authorized to
have an amendment to this Agreement recorded at the United States Patent and
Trademark Office to reflect Agent's and Lenders' security interest in such new
service marks, trademarks, or patents; and (d) all representations, warranties,
and covenants of EFTC hereunder shall be deemed to be remade and restated with
respect to all then existing Collateral. EFTC shall bear any expenses incurred
in connection with future patent applications or copyright, service xxxx or
trademark registrations.
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5. LITIGATION AND PROCEEDINGS.
EFTC shall commence and diligently prosecute in its own name,
as the real party in interest, for its own benefit, and its own expense, such
suits, administrative proceedings, or other action for infringement or other
damages as are in its reasonable business judgment necessary to protect the
Collateral. EFTC shall provide to Agent any information with respect thereto
requested by Agent. Agent shall provide at EFTC's expense all necessary
cooperation in connection with any such suits, proceedings, or action,
including, without limitation, joining as a necessary party. Following EFTC's
becoming aware thereof, EFTC shall notify Agent of the institution of, or any
adverse determination in, any proceeding in the United States Patent and
Trademark Office, the United States Copyright Office, or any United States,
state, or foreign court regarding EFTC's claim of ownership in any of the
patents, service marks or trademarks, their right to apply for the same, or
their right to keep and maintain such copyright, patent, service xxxx or
trademark rights.
6. POWER OF ATTORNEY.
EFTC grants Agent, for the ratable benefit of Lenders, power
of attorney, having the full authority, and in the place of EFTC and in the name
of EFTC, from time to time in Agent's discretion following an Event of Default,
to take any action and to execute any instrument which Agent may deem necessary
or advisable to accomplish the purposes of this Agreement, including, without
limitation, as may be subject to the provisions of this Agreement: to endorse
EFTC's name on all applications, documents, papers, and instruments necessary
for Agent to use or maintain the Collateral; to ask, demand, collect, xxx for,
recover, impound, receive, and give acquittance and receipts for money due or to
become due under or in respect of any of the Collateral; to file any claims or
take any action or institute any proceedings that Agent may deem necessary or
desirable for the collection of any of the Collateral or otherwise to enforce
Agent's and Lenders' rights with respect to any of the Collateral and to assign,
pledge, convey, or otherwise transfer title in or dispose of the Collateral to
any person.
7. RIGHT TO INSPECT.
EFTC grants to Agent for the ratable benefit of Lenders the
right to visit EFTC's plants and facilities which manufacture, inspect, or store
products sold under any of the Collateral, and to inspect the products and
quality control records relating thereto at reasonable times during regular
business hours.
8. SPECIFIC REMEDIES.
During the existence of any Event of Default, Agent shall
have, in addition to, other rights given by law or in this Agreement, the Loan
Agreement, or in any other Loan Document, all of the rights and remedies with
respect to the Collateral of a secured party under the Code, including the
following the right to notify licensees to make royalty payments on license
agreements directly to Agent.
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9. GOVERNING LAW, ETC.
Sections 15.3 and 15.4 of the Loan Agreement are incorporated
by reference herein, and made a part of this Agreement.
10. GENERAL PROVISIONS.
10.1 Effectiveness. This Agreement shall be binding and
deemed effective when executed by EFTC and Agent.
10.2 Binding Effect; Assignment. The provisions of this
Agreement shall be binding upon and inure to the benefit of the respective
representatives, successors, and assigns of the parties hereto; provided,
however, that no interest herein may be assigned by EFTC without the prior
written consent of Agent. The rights and benefits of Agent and Lenders hereunder
shall, if Agent so agrees, inure to any assignee of the Obligations or any part
thereof.
10.3 Cumulative Remedies; No Prior Recourse to Collateral.
The enumeration herein of Agent's and Lenders' rights and remedies is not
intended to be exclusive, and such rights and remedies are in addition to and
not by way of limitation of any other rights or remedies that a Secured Party
may have under the UCC or other applicable law. Agent shall have the right, in
its sole discretion, to determine which rights and remedies are to be exercised
and in which order. The exercise of one right or remedy shall not preclude the
exercise of any others, all of which shall be cumulative. Agent may, without
limitation, proceed directly against EFTC to collect the Obligations without any
prior recourse to the Collateral.
10.4 No Implied Waivers. No act, failure, or delay by Agent
or Lenders shall constitute a waiver of any of their rights and remedies. No
single or partial waiver by Agent or Lenders of any provision of this Agreement
or any other Loan Document, or of breach or default hereunder or thereunder, or
of any right or remedy which Agent or Lenders may have, shall operate as a
waiver of any other provision, breach, default, right, or remedy or of the same
provision, breach, default, right, or remedy on a future occasion. No waiver by
Agent or Lenders shall affect their rights to require strict performance of this
Agreement.
10.5 Captions. The captions contained in this Agreement are
for convenience only, are without substantive meaning and should not be
construed to modify, enlarge, or restrict any provision.
10.6 Ambiguities. To the extent permitted by applicable law,
neither this Agreement nor any uncertainty or ambiguity herein shall be
construed or resolved using any presumption against either EFTC or Agent,
whether under any rule of construction or otherwise. On the contrary, this
Agreement has been reviewed by each of EFTC and Agent, and their respective
counsel. To the extent permitted by applicable law, in case of any ambiguity or
uncertainty, this Agreement shall be construed and interpreted according to the
ordinary meaning of the words used to accomplish fairly the purposes and
intentions of all parties hereto.
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10.7 Severability. If any provision of this Agreement shall
be prohibited or invalid, under applicable law, it shall be ineffective only to
such extent, without invalidating the remainder of this Agreement.
10.8 Fees and Expenses. All costs and expenses that Agent
pays or incurs in connection with the negotiation, preparation, consummation,
administration, enforcement, and termination of this Agreement, including,
without limitation any taxes, fees and other charges for recording this
Agreement and any amendments hereof with the United States Patent and Trademark
Office or any other relevant filing office, filing financing statements and
continuations, and other actions to perfect, protect, and continue the security
interest granted hereunder, shall be paid in accordance with the terms of
Section 15.7 of the Loan Agreement.
10.9 Modification. This Agreement is intended by EFTC and
Agent to be the final, complete, and exclusive expression of the agreement
between them. This Agreement supersedes any and all prior oral or written
agreements relating to the subject matter hereof and may not be contradicted by
evidence of prior, contemporaneous or subsequent oral agreements of the parties.
There are no oral agreements between the parties. No modification, rescission,
waiver, release, or amendment of any provision of this Agreement shall be made,
except by a written agreement signed by EFTC and a duly authorized officer of
Agent as agent for Lenders.
10.10 Counterparts. This Agreement may be executed in any
number of counterparts, and by Agent and EFTC in separate counterparts, each of
which shall be an original, but all of which shall together constitute one and
the same agreement.
10.11 Notices. Except as otherwise provided herein, all
notices, demands, and requests that either party is required or elects to give
to the other shall be in writing, shall be delivered pursuant to Section 15.8 of
the Loan Agreement.
10.12 Termination By Agent. After termination of the Loan
Agreement and when Agent and Lenders have received payment and performance, in
full, of all Obligations, Agent shall execute and deliver to EFTC a termination
of all of the security interests granted by EFTC hereunder.
10.13 Integration. This Agreement, together with the other
Loan Documents, reflect the entire understanding of the parties with respect to
the transactions contemplated hereby
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and shall not be contradicted or qualified by any other agreement, oral or
written, before the date hereof.
IN WITNESS WHEREOF, the parties have executed this Agreement
on the date first written above.
"Agent"
BANK OF AMERICA, N.A.,
as Agent and Lender
By:/s/______________________________
Name:_______________________________
Title:______________________________
"EFTC"
EFTC CORPORATION,
a Colorado corporation
By:/s/______________________________
Name:_______________________________
Title:______________________________
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SCHEDULE A
(1) EFTC
Reg. No.: 2,262,509
Date of Registration: 7/20/99
Renewal Date: 7/20/2009
Description of Goods: Custom manufacturing in the field of electronics
equipment and components, in International
Class 40.
(2) APM and design
Reg. No.: 2,268,485
Date of Registration: 8/10/99
Renewal Date: 8/10/2009
Description of Goods: Custom manufacturing in the field of electronics
equipment and components, in International
Class 40.
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SCHEDULE B
None
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SCHEDULE C
None
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