EXHIBIT 10.3
COLLATERAL ASSIGNMENT OF PATENTS AND TRADEMARKS
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AND SECURITY AGREEMENT
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This Assignment is made this 29th day of April, 2003, by and between
International Dispensing Corporation, a Delaware corporation with its principal
place of business at 0000 Xxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxxxxxxxx, Xxxxxxxx
00000 ("Assignor") and the lenders identified on the attached Exhibit A
(collectively referred to herein as the "Secured Party").
BACKGROUND
The Secured Party shall lend to the Debtor the aggregate principal amount
of Six Hundred Fifty Thousand Dollars and 00/100 Dollars ($650,000) (the
"Loan"), pursuant to the terms of that certain Loan Agreement which Loan shall
be evidenced by a Secured Term Promissory Note(s) (collectively, the "Note"). In
order to induce Lender make the loan to be evidenced by the Note, the Debtor has
agreed to deliver this Collateral Assignment of Patents and Trademarks and
Security Agreement and enter into a certain Security Agreement granting the
Lender a security interest in all of the Assignor's assets.
NOW, THEREFORE, in consideration of the premises and mutual covenants and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the parties hereto agree as follows:
1. To secure the complete and timely satisfaction of all Obligations
(such term, as used herein, shall have the same meaning as provided in the Note
and the Security Agreement) of the Assignor to the Lender, Assignor hereby
assigns, pledges and grants to the Lender a continuing security interest in and
to the Assignor's right, title and interest in and to the patent applications,
patents, trademarks and trademark applications listed in Exhibit B hereto,
including without limitation all proceeds thereof (such as, by way of example,
license royalties and proceeds of infringement suits), the right to xxx for
past, present and future infringements, all rights corresponding thereto
throughout the world and all re-issues, divisions, continuations, renewals,
extensions and continuations-in-part thereof (collectively, the "Patents and
Trademarks").
2. Assignor covenants and warrants that:
(a) The Patents and Trademarks are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part;
(b) Each of the Patents and Trademarks is valid and enforceable and
Assignor has notified Lender in writing of all prior art (including public uses
and sales) of which it is aware;
(c) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents and
Trademarks, free and clear of any liens, charges and encumbrances, including
without limitation licenses, shop rights and covenants by Assignor not to xxx
third persons;
(d) Assignor has the unqualified right to enter into this Assignment
and perform its terms and has entered and will enter into written agreements
with each of its present and future employees, agents and consultants which will
enable it to comply with the covenants herein contained; and
(e) EXHIBIT B sets forth each Patent and Trademark owned by the
Assignor.
3. Assignor agrees that, until all of the Obligations shall have been
satisfied in full, it will not enter into any agreement (for example, a license
agreement) which is inconsistent with Assignor's obligations under this
Assignment, without Lender's prior written consent.
4. If, before the Obligations shall have been satisfied in full, Assignor
shall obtain rights to any new patentable inventions, or become entitled to the
benefit of any patent application, patent, trademark or trademark applications
for any reissue, division, continuation, renewal, extension or
continuation-in-part of any Patent and Trademark or any improvement on any
Patent
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and Trademark, the provisions of paragraph 1 shall automatically apply thereto
and Assignor shall give to Lender prompt notice thereof in writing.
5. Assignor authorizes Lender to modify this Assignment by amending
Exhibit B to include any future patents and patent applications, trademarks and
trademark applications which are Patents and Trademarks under paragraph 1 or
paragraph 4 hereof.
6. Unless and until there shall have occurred and be continuing an Event
of Default (as such term is used in the Note and/or the Security Agreement),
Lender hereby grants to Assignor the exclusive, non-transferable right and
license to make, have made, use and sell the inventions disclosed and claimed in
the Patents and Trademarks for Assignor's own benefit and account and for none
other. Assignor agrees not to sell or assign its interest in, or grant any
sublicense under, the license granted to Assignor in this paragraph 6, without
the prior written consent of Lender.
7. If any Event of Default shall have occurred and be continuing,
Assignor's license under the Patents and Trademarks as set forth in paragraph 6,
shall terminate forthwith, and Lender shall have, in addition to all other
rights and remedies given it by this Assignment, those allowed by law and the
rights and remedies of a secured party under the Uniform Commercial Code as
enacted in any jurisdiction in which the Patents and Trademarks may be located
and, without limiting the generality of the foregoing, Lender may immediately,
without demand of performance and without other notice (except as set forth
below) or demand whatsoever to Assignor, all of which are hereby expressly
waived, and without advertisement, sell at public or private sale or otherwise
realize upon, the whole or from time to time any part of the Patents and
Trademarks, or any interest which Assignor may have therein, and after deducting
from the proceeds of sale or other disposition of the Patents and Trademarks all
expenses (including all reasonable expenses for brokers' fees and legal
services), shall apply the residue of such proceeds toward the payment of the
Obligations. Any remainder of the proceeds after payment in full of the
Obligations shall be paid over to Assignor. Notice of any sale or other
disposition of the Patents and Trademarks shall be given to Assignor at least
five (5) days before the time of any intended public or private sale or other
disposition of the Patents and Trademarks is to be made, which Assignor hereby
agrees shall be reasonable notice of such sale or other disposition. At any such
sale or other disposition, any holder of any of the Note or Lender may, to the
extent permissible under applicable law, purchase the whole or any part of the
Patents and Trademarks sold, free from any right of redemption on the part of
Assignor, which right is hereby waived and released.
8. At such time as Assignor shall completely satisfy all of the
Obligations, Lender shall execute and deliver to Assignor all deeds, assignments
and other instruments as may be necessary or proper to re-vest in Assignor full
title to the Patents and Trademarks, subject to any disposition thereof which
may have been made by Lender pursuant hereto.
9. Any and all fees, costs and expenses, of whatever kind or nature,
including reasonable attorneys' fees and legal expenses, incurred by Lender in
connection with the preparation of this Assignment and all other documents
relating hereto and the consummation of this transaction, the filing or
recording of any documents (including all taxes in connection therewith) in
public offices, the payment or discharge of any taxes, counsel fees, maintenance
fees, encumbrances or otherwise protecting, maintaining, preserving the Patents
and Trademarks, or in defending or prosecuting any actions or proceedings
arising out of or related to the Patents and Trademarks, shall be borne and paid
by Assignor on demand by Lender and until so paid shall be added to the
principal amount of the Obligations and shall bear interest at the rate
prescribed in the Note.
10. Assignor shall have the duty, through counsel acceptable to Lender, to
prosecute diligently any patent application of the Patents and Trademarks
pending as of the date of this Assignment or thereafter until the Obligations
shall have been paid in full, to make application on unpatented but patentable
inventions and to preserve and maintain all rights in patent applications and
patents of the Patents and Trademarks. Any expenses incurred in connection with
such an application shall be borne by Assignor. Assignor shall not abandon any
right to file a patent application, or any pending patent application or patent
without the consent of Lender, which consent shall not be unreasonably withheld.
11. Lender shall have the right but shall in no way be obligated to bring
suit in its own name to enforce the Patents and Trademarks and any license
thereunder, in which event Assignor shall at the request of Lender do any and
all lawful acts and execute any and all proper documents required by Lender in
aid of such enforcement and Assignor shall promptly, upon demand, reimburse and
indemnify Lender for all costs and expenses incurred by Lender in the exercise
of its rights under this paragraph 11.
12. No course of dealing between Assignor and Lender, nor any failure to
exercise, nor any delay in exercising, on the part of Lender, any right, power
or privilege hereunder or under the Loan Documents shall operate as a waiver
thereof; nor
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shall any single or partial exercise of any right, power or privilege hereunder
or thereunder preclude any other or further exercise thereof or the exercise of
any other right, power or privilege.
13. All of Lender's rights and remedies with respect to the Patents and
Trademarks, whether established hereby or by the any of Loan Documents, or by
any other agreements or by law shall be cumulative and may be exercised
singularly or concurrently.
14. The provisions of this Assignment 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 thereof, 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 Assignment in any jurisdiction.
15. This Assignment is subject to modification only by a writing signed by
the parties, except as provided in paragraph 5.
16. The benefits and burdens of this Assignment shall inure to the benefit
of and be binding upon the respective successors and permitted assigns of the
parties.
17. The validity and interpretation of this Assignment and the rights and
obligations of the parties shall be governed by the laws of the State of New
York.
IN WITNESS WHEREOF, the parties hereto have caused this Assignment to be
executed under seal as of the date first-above written.
INTERNATIONAL DISPENSING CORPORATION
/s/ Xxxxx X. Xxxxx By: /s/ Xxxx Xxxxxxxx
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Witness Title: President
Xxxxx X. Xxxxx
SECURED PARTY
By their Authorized Agent
/s/ Xxxxx Xxxxxxx /s/ Xxxxxxx Xxxxxx
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Witness Xxxxxxx Xxxxxx
Xxxxx Xxxxxxx
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In Millersville, on this 29th day of April, 2003, personally appeared before me
Xxxx Xxxxxxxx, the President of International Dispensing Corporation, known to
me and known by me to be the party executing the foregoing instrument, and he
acknowledged said instrument by him subscribed to be his free act and deed and
the free act and deed of International Dispensing Corporation.
/s/Xxxxxxxxx X. Xxxxxxxx
Notary Public
My Commission Expires: August 1, 2003
STATE OF Maryland
COUNTY OF Xxxx Arundel
In New York City , on this 29th day of April, 2003, personally appeared before
me Xxxxxxx Xxxxxx, known to me and known by me to be the party executing the
foregoing instrument, and he acknowledged said instrument by him subscribed to
be his free act.
/s/ Xxxxx X. Xxxxxxx
Notary Public
My Commission Expires: May 18, 0000
XXXXX XX Xxx Xxxx
XXXXXX XX Xxxxxx Xxxxxx
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EXHIBIT A
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Xxxxxxx Xxxxxx $250,000
Xxxxxx Xxxxxx Marital Trust $125,000
Juliet Shield $ 25,000
Xxxxxxx Xxxxx $125,000
Xxxxxxx Community Trust $125,000
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EXHIBIT B
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TRADEMARK SERIAL NO./REGISTRATION NO.
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FAST CLICK 76362841
PATENT APPLICATION NO./REGISTRATION NO.
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STORAGE AND DISPENSING CARAFE D469,018
DISPOSABLE STORAGE AND
DISPENSING CARAFE 6,375,040
DISPENSING VALVE FOR FLUIDS 6,491,189
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