ASSIGNMENT, SECURITY AGREEMENT AND MORTGAGE -
TRADEMARKS AND PATENTS
---------------------
THIS AGREEMENT is made this ___ day of __________,
1997, between XXXXXXX PHARMACEUTICALS, INC., a New Jersey
corporation ("Debtor") having an office at 000 Xxxxx 00 Xxxx,
Xxxxxxxxx, Xxx Xxxxxx 00000, and The CIT Group/Credit Finance,
Inc. a Delaware corporation (the "Secured Party"), having an
office at 00 Xxxxx XxXxxxx Xxxxxx, Xxxxxxx, Xxxxxxxx 00000.
WHEREAS, Debtor has adopted the terms and designs
described in Schedule A annexed hereto and made a part hereof;
WHEREAS, Debtor is the owner and holder of the patents
listed on Schedule B hereto and made a part hereof; and
WHEREAS, as a condition to the Secured Party making any
loans or advances to Debtor, Xxxx Dermatologics, Inc., Xxxxxxx
Pharmaceuticals (Canada), Inc. And Xxxxxxx Pharmaceuticals
Overseas, Inc. (collectively "Borrowers") pursuant to a Loan and
Security Agreement, dated as of the date hereof (the "Loan
Agreement") between Borrowers and the Secured Party, the Secured
Party has required the execution and delivery of this Agreement
by Debtor;
NOW, THEREFORE, IT IS AGREED that, for and in
consideration of the loans and advances to be made in the
discretion of Secured Party under the Loan Agreement, and other
good and valuable consideration, the receipt of which is hereby
acknowledged, and as collateral security for the full and prompt
payment and performance of all Obligations, as hereinafter
defined, Debtor does hereby mortgage to and pledge with the
Secured Party, and grant to the Secured Party a security interest
in, and all of its right, title and interest in and to, and
assigns to Secured Party (i) each of the Trademarks (as
hereinafter defined), the goodwill of the business symbolized by
each of the Trademarks, all customer lists and other records of
Debtor relating to the distribution of products bearing the
Trademarks and each of the registrations described in Schedule A,
and any formulas of Debtor used or usable in connection with the
Trademarks; (ii) each of the Patents, as hereinafter defined, on
Schedule B hereto; and (iii) any and all proceeds of the
foregoing, including, without limitation, any claims by Debtor
against third parties for past, present and future infringement
of the Trademarks or the Patents (collectively, the
"Collateral").
1. Terms defined in the Loan Agreement and not
otherwise defined herein, shall have the meaning set forth in the
Loan Agreement. As used in this Agreement, unless the context
otherwise requires:
"Trademarks" shall mean (i) all trademarks, trade
names, trade styles, service marks, prints and labels on which
said trademarks, trade names, trade styles and service marks have
appeared or appear, designs and general intangibles of like
nature, now existing or hereafter adopted or acquired, all right,
title and interest therein and thereto acquired under common law
or statute, and whether by use or registration, and all
registrations and recordings thereof, and applications therefor,
including, without limitation, applications, registrations and
recordings in the United States Patent and Trademark Office or in
any similar office or agency of the United States, any State
thereof, or any other country or any political subdivision
thereof, all whether now owned or hereafter acquired by Debtor,
including, but not limited to, those described in Schedule A
annexed hereto and made a part hereof, and (ii) all reissues,
amendments, extensions or renewals thereof and all licenses
thereof.
"Patents" shall mean (i) all letters patent of the
United States or any other country, all right, title and interest
therein and thereto, and all registrations and recordings
thereof, and applications therefor, including, without
limitation, applications, registrations and recordings in the
United States Patent and Trademark Office or in any similar
office or agency of the United States, any State thereof or any
other country or any political subdivision thereof, all whether
now owned or hereafter acquired by Debtor, including, but not
limited to, those described in Schedule B annexed hereto and made
a part hereof, and (ii) all reissues, divisions, continuations,
continuations-in-part or extensions thereof and all licenses
thereof.
"Obligations" shall mean all indebtedness, obligations,
liabilities and agreements of any kind of Debtor to Secured
Party, including without limitation the Loan Agreement, now
existing or hereafter arising, direct or indirect (including
participations or any interest of Secured Party in obligations of
Debtor to others), acquired outright, conditionally, or as
collateral security from another, absolute or contingent, joint
or several, secured or unsecured, due or not, contractual or
tortious, liquidated or unliquidated, arising by operation of law
or otherwise, and all loan agreements, documents and instruments
evidencing any of the foregoing obligations or under which any of
the foregoing obligations may have been issued, created, assumed
or guaranteed, and all extensions, renewals, refundings,
replacements and modifications of the foregoing.
2. Debtor hereby represents, warrants, covenants and
agrees as follows:
(a) Debtor has the sole, full and clear title to
the Trademarks in the United States and all other countries
for the goods and services on which they are used by Debtor,
and the registrations thereof are valid and subsisting and
in full force and effect.
(b) Debtor will perform all acts and execute all
documents, including, without limitation, assignments for
security in form suitable for filing with the United States
Patent and Trademark Office and state and local governments
in the United States and in other countries, substantially
in the forms of Exhibits 1 and 2 hereof, respectively,
requested by the Secured Party at any time to evidence,
perfect, maintain, record and enforce the Secured Party's
interest in the Collateral or otherwise in furtherance of
the provisions of this Agreement, and Debtor hereby
authorizes the Secured Party to execute and file one or more
financing statements (and similar documents) or copies
thereof or of this Security Agreement with respect to the
Collateral signed only by the Secured Party.
(c) Except to the extent that the Secured Party,
upon prior written notice to Debtor, shall consent, Debtor
(either itself or through licensees) will continue to use
the Trademarks on all services and goods applicable to its
current line as reflected in its current catalogs, brochures
and price lists in order to maintain the Trademarks and
their registrations in full force free from any claim of
abandonment for nonuse and Debtor will not (and will not
permit any licensee thereof to) do any act or knowingly omit
to do any act whereby any Trademark or its registration may
become invalidated.
(d) Debtor has the sole, full and clear title to
each of the Patents shown on Schedule B hereto, subject to
the Assignment, and the same are valid and subsisting and in
full force and effect. None of the Patents has been
abandoned, disclaimed or dedicated in whole or in part, and,
except to the extent that the Secured Party, upon prior
written notice by Debtor, shall consent, Debtor will not do
any act, or omit to do any act, whereby the Patents may
become so abandoned, disclaimed or dedicated and shall
notify the Secured Party immediately if it knows of any
reason or has reason to know that any such Patent or
application may become so abandoned, disclaimed or
dedicated.
(e) Debtor will promptly pay the Secured Party
for any and all sums, costs, and expenses which the Secured
Party may pay or incur pursuant to the provisions of this
Agreement or in enforcing the Obligations, the Collateral or
the security interest granted hereunder, including, but not
limited to, all filing or recording fees, court costs,
collection charges, travel, and reasonable attorneys' fees,
all of which together with interest at the highest rate then
payable on the Obligations shall be part of the Obligations
and be payable on demand.
(f) In no event shall Debtor, either itself or
through any agent, employee, licensee or designee, file an
application for any Patent or Trademark registration with
the United States Patent and Trademark Office or any similar
office or agency in any state of the United States, or in
any other country or any political subdivision thereof,
unless it will promptly inform the Secured Party, and, upon
request of the Secured Party, execute and deliver any and
all assignments, agreements, instruments, documents and
papers as the Secured Party may request to evidence the
Secured Party's interest in such Patent or Trademark and the
goodwill and general intangibles of Debtor relating thereto
or represented thereby and Debtor hereby constitutes the
Secured Party its attorney-in-fact to execute and file all
such writings for the foregoing purposes, all acts of such
attorney being hereby ratified and confirmed; such power
being coupled with an interest is irrevocable until the
Obligations are paid in full.
(g) Debtor has the right and power to make the
assignment and to grant the security interest herein
granted; and the Collateral is not now, and at all times
will not be, subject to any liens, mortgages, assignments,
security interests or encumbrances of any nature whatsoever,
except for the Assignment, and except in favor of the
Secured Party and to the best knowledge of Debtor none of
the Collateral is subject to any claim.
(h) Except to the extent that the Secured Party,
upon prior written notice of Debtor, shall consent, Debtor
will not assign, sell, mortgage, lease, transfer, pledge,
hypothecate, grant a security interest in or lien upon,
encumber, grant an exclusive or non-exclusive license, or
otherwise dispose of any of the Collateral, and nothing in
this Agreement shall be deemed a consent by the Secured
Party to any such action except as expressly permitted
herein.
(i) As of the date hereof Debtor has no Patent or
Trademark registrations in, or the subject of pending
applications in, the United States Patent and Trademark
Office or any similar office or agency in any state of the
United States, or in any other country or any political
subdivision thereof other than those described in
Schedules A and B hereto.
(j) Debtor will take all necessary steps in any
proceeding before the United States Patent and Trademark
Office or any similar office or agency in any other country
or any political subdivision thereof, to maintain each
Patent and each application and registration of the
Trademarks and Patents, including, without limitation, if
applicable, paying of maintenance fees, applications for
reissues or extensions, filing of renewals, affidavits of
use, affidavits of incontestability and opposition,
interference and cancellation proceedings (except to the
extent that dedication, abandonment or invalidation is
permitted under paragraphs 2(c) and 2(d) hereof).
3. Upon the occurrence of an Event of Default (as
defined in the Loan Agreement) (whenever used herein, the term
"Event of Default" having such meaning), in addition to all other
rights and remedies of the Secured Party, whether under law, the
Loan Agreement or otherwise, all such rights and remedies being
cumulative, not exclusive and enforceable alternatively,
successively or concurrently, without (except as provided herein)
notice to, or consent by, Debtor, the Secured Party shall have
the following rights and remedies: (a) Debtor shall not make any
use of the Patents or the inventions to which they pertain or the
Trademarks or any xxxx similar thereto for any purpose; (b) the
Secured Party may, at any time and from time to time, upon ten
(10) days' prior notice to Debtor, license, whether on an
exclusive or nonexclusive basis, any of the Patents or
Trademarks, anywhere in the world for such term or terms, on such
conditions, and in such manner, as the Secured Party shall in its
sole discretion determine; (c) the Secured Party may (without
assuming any obligations or liability thereunder), at any time,
enforce (and shall have the exclusive right to enforce) against
any licensee or sublicensee all rights and remedies of Debtor in,
to and under any one or more license agreements with respect to
the Collateral, and take or refrain from taking any action under
any thereof, and Debtor hereby releases the Secured Party from,
and agrees to hold the Secured Party free and harmless from and
against any claims arising out of, any action taken or omitted to
be taken with respect to any such license agreement; (d) the
Secured Party may, at any time and from time to time, upon ten
(10) days' prior notice to Debtor, assign, sell, buy, or
otherwise dispose of, the Collateral or any of it, either with or
without special or other conditions or stipulations, and with
power also to execute assurances, and do all other acts and
things for completing the assignment, sale or disposition which
the Secured Party shall, in its sole discretion, deem appropriate
or proper; and (e) in addition to the foregoing, in order to
implement the assignment, sale or other disposal of any of the
Collateral pursuant to subparagraph 3(d) hereof, the Secured
Party may, at any time, pursuant to the authority granted in the
Power(s) of Attorney described in paragraph 4 hereof (such
authority becoming effective on the occurrence or continuation as
hereinabove provided of an Event of Default), execute and deliver
on behalf of Debtor, one or more instruments of assignment of the
Patents or Trademarks, in form suitable for filing, recording or
registration in any country. Debtor agrees to pay when due all
reasonable costs incurred in any such transfer of the Patents or
Trademarks, including any taxes, fees and reasonable attorneys'
fees, and all such costs shall be added to the Obligations. The
Secured Party may apply the proceeds actually received from any
such license, assignment, sale or other disposition to the
reasonable costs and expenses thereof, including, without
limitation, reasonable attorneys' fees and all legal, travel and
other expenses which may be incurred by the Secured Party, and
then to the Obligations, in such order as to principal or
interest as the Secured Party may desire; and Debtor shall remain
liable and will pay the Secured Party on demand any deficiency
remaining, together with interest thereon at a rate equal to the
highest rate then payable on the Obligations and the balance of
any expenses unpaid. Nothing herein contained shall be construed
as requiring the Secured Party to take any such action at any
time. In the event of any such license, assignment, sale or
other disposition of the Collateral, or any of it, after the
occurrence or continuation as hereinabove provided of an Event of
Default, Debtor shall supply its tooling, know-how and expertise
relating to the manufacture and sale of the products covered by
the Trademarks or Patents, and its customer lists and other
records relating to the Trademarks or Patents and to the
distribution of said products, to the Secured Party or its
designee.
4. Concurrently with the execution and delivery
hereof, Debtor is executing and delivering to the Secured Party,
in the form of Exhibit 3 hereto, _____________ originals of a
Power of Attorney, coupled with an interest, for the
implementation of the assignment, sale or other disposal of the
Trademarks and Patents pursuant to paragraphs 3(d) and (e) hereof
and Debtor hereby releases the Secured Party from any claims,
causes of action and demands at any time arising out of or with
respect to any actions taken or omitted to be taken by the
Secured Party, under the powers of attorney granted herein other
than actions taken or omitted to be taken through the gross
negligence or willful misconduct of the Secured Party.
5. No provision hereof shall be modified, altered or
limited except by a written instrument expressly referring to
this Agreement and executed by the party to be charged. The
execution and delivery of this Agreement has been authorized by
the Board of Directors of Debtor and by any necessary vote or
consent of stockholders thereof. This Agreement shall be binding
upon the successors, assigns or other legal representatives of
Debtor, and shall, together with the rights and remedies of the
Secured Party hereunder, inure to the benefit of the Secured
Party, its successors, assigns or other legal representatives.
This Agreement, the Obligations and the Collateral shall be
governed in all respects by the laws of the United States and the
laws of the State of Illinois. Debtor hereby submits to the
nonexclusive jurisdiction of the state courts of the State of
Illinois and the federal courts of the United States of America
located in such State in any action or proceeding arising under
this Security Agreement. If any term of this Agreement shall be
held to be invalid, illegal or unenforceable, the validity of all
other terms hereof shall in no way be affected thereby.
6. Secured Party shall reassign without warranties
all of the Collateral to Debtor upon the repayment of the
Obligations and the termination of the Loan Agreement.
IN WITNESS WHEREOF, Debtor and the Secured Party have
caused this Agreement to be executed by their respective officers
thereunto duly authorized as of the day and year first above
written.
ATTEST: XXXXXXX PHARMACEUTICALS, INC.
By:__________________________ By:_______________________
Name: Name:
Title: Title:
(CORPORATE SEAL)
THE CIT GROUP/CREDIT FINANCE, INC.
By:_______________________
Name:
Title:
SCHEDULE A TO SECURITY AGREEMENT
---------------------------------
TRADEMARKS
----------
XXXXXXX PHARMACEUTICALS, INC.
Registered Trademarks (1)
Registration Description Date of State or
Number of Xxxx Registration Country
------------ ----------- ------------ -------
TRADEMARK APPLICATIONS
---------------------
Registration Description Date of State or
Number of Xxxx Registration Country
------------ ----------- ------------ -------
(1) All trademarks owned by Xxxxxxx Pharmaceuticals, Inc.
and registered in the United States, the states of the
United States, and/or foreign countries.
SCHEDULE B TO SECURITY AGREEMENT
-------------------------------
PATENTS
-------
Patent Date Patent
Number Title of Patent Issued Country
------- --------------- ----------- -------
PATENT APPLICATIONS
------------------
Serial Title of Filing
Number Patent Date Country Inventor
------ -------- ------ ------- --------
Exhibit 1 to
Security Agreement
ASSIGNMENT FOR SECURITY
----------------------
(PATENTS)
WHEREAS, Xxxxxxx Pharmaceuticals, Inc., a New Jersey
corporation (herein referred to as "Assignor"), owns the letters
patent, and/or applications for letters patent, of the United
States, more particularly described on Schedule 1-A annexed
hereto as part hereof (the "Patents");
WHEREAS, Assignor is obligated to The CIT Group/ Credit
Finance, Inc., a_____________________ corporation (herein
referred to as "Assignee"), and has entered into an Assignment,
Security Agreement and Mortgage-Trademarks and Patents dated the
date hereof (the "Agreement") in favor of Assignee; and
WHEREAS, pursuant to the Agreement, Assignor has
assigned to Assignee, and granted to Assignee a security interest
in, and mortgage on, all right, title and interest of Assignor in
and to the Patents, and all proceeds thereof, including, without
limitation, any and all causes of action which may exist by
reason of infringement thereof for the full term of the Patents,
to secure the prompt payment, performance and observance of the
Obligations, as defined in the Agreement;
NOW, THEREFORE, for good and valuable consideration,
receipt of which is hereby acknowledged, Assignor does hereby
further assign unto Assignee and grant to Assignee a security
interest in, and mortgage on, the Patents to secure the prompt
payment, performance and observance of the Obligations.
Assignor does hereby further acknowledge and affirm
that the rights and remedies of Assignee with respect to the
assignment of, security interest in and mortgage on the Patents
made and granted hereby are more fully set forth in the
Agreement, the terms and provisions of which are hereby
incorporated herein by reference as if fully set forth herein.
IN WITNESS WHEREOF, Assignor has caused this Assignment
to be duly executed by its officer thereunto duly authorized as
of the ____ day of ___________________, 1997.
ATTEST: XXXXXXX PHARMACEUTICALS, INC.,
a New Jersey corporation
By:__________________________ By:_______________________
Name: Name:
Title: Title:
(CORPORATE SEAL)
STATE OF NEW JERSEY )
) ss.
COUNTY OF __________ )
On this _____ day of ____________________, 1997, before
me personally appeared _________________________ and
__________________________, to me known, who, being by me duly
sworn, did depose and say that they are the _________________
and ____________________________ of Xxxxxxx Pharmaceuticals,
Inc., the corporation described in and which executed the
foregoing instrument; that they know the seal of said
corporation; that the seal affixed to said instrument is such
corporate seal; that it was affixed by order of the Board of
Directors of said corporation, and that they signed their names
thereto by like order.
_______________________________
Notary Public
My commission expires:
_______________________________
SCHEDULE 1-A TO ASSIGNMENT FOR SECURITY
-----------------------------------------
PATENTS
-------
Patent Date Patent
Number Title of Patent Issued Country
------ --------------- ----------- -------
PATENT APPLICATIONS
-----------------
Serial Title of Filing
Number Patent Date Country Inventor
------ -------- ------ ------- --------
Exhibit 2 to
Security Agreement
ASSIGNMENT FOR SECURITY
---------------------
(TRADEMARKS)
WHEREAS, Xxxxxxx Pharmaceuticals, Inc., a New Jersey
corporation (herein referred to as "Assignor"), has adopted, used
and is using the trademarks listed on the annexed Schedule 2-A,
which trademarks are registered in the United States Patent and
Trademark Office (the "Trademarks");
WHEREAS, Assignor is obligated to The CIT Group/Credit
Finance, Inc., a Delaware corporation (herein referred to as
"Assignee"), and has entered into an Assignment, Security
Agreement and Mortgage-Trademarks and Patents (the "Agreement")
in favor of Assignee; and
WHEREAS, pursuant to the Agreement, Assignor has
assigned to Assignee and granted to Assignee a security interest
in, and mortgage on, all right, title and interest of Assignor in
and to the Trademarks, together with the goodwill of the business
symbolized by the Trademarks and all proceeds thereof, including,
without limitation, any and all causes of action which may exist
by reason of infringement thereof, to secure the payment,
performance and observance of the Obligations, as defined in the
Agreement;
NOW, THEREFORE, for good and valuable consideration,
receipt of which is hereby acknowledged, Assignor does hereby
further assign unto Assignee and grant to Assignee a security
interest in, and mortgage on, the Trademarks to secure the prompt
payment, performance and observance of the Obligations.
Assignor does hereby further acknowledge and affirm
that the rights and remedies of Assignee with respect to the
assignment of, security interest in and mortgage on the
Trademarks made and granted hereby are more fully set forth in
the Agreement, the terms and provisions of which are hereby
incorporated herein by reference as if fully set forth herein.
IN WITNESS WHEREOF, Assignor has caused this Assignment
to be duly executed by its officer thereunto duly authorized as
of the ______ day of_______________, 1997.
ATTEST: XXXXXXX PHARMACEUTICALS, INC.,
a New Jersey corporation
By:__________________________ By:_______________________
Name: Name:
Title: Title:
(CORPORATE SEAL)
STATE OF NEW JERSEY )
) ss.
COUNTY OF _________ )
On this ____ day of __________________, 1997, before me
personally appeared __________________________________ and
________________________, to me known, who, being by me duly
sworn, did depose and say that they are the _______________ and
_________________________ of Xxxxxxx Pharmaceuticals, Inc., the
corporation described in and which executed the foregoing
instrument; that they know the seal of said corporation; that the
seal affixed to said instrument is such corporate seal; that it
was affixed by order of the Board of Directors of said
corporation, and that they signed their names thereto by like
order.
_______________________________
Notary Public
My commission expires:
_______________________________
SCHEDULE 2-A TO ASSIGNMENT FOR SECURITY
--------------------------------------
TRADEMARK
----------
XXXXXXX PHARMACEUTICALS, INC.
Registered Trademarks (1)
Registration Description Date of State or
Number of Xxxx Registration Country
------------ ----------- ------------ --------
TRADEMARK APPLICATIONS
---------------------
Application Description Date of State or
Number of Xxxx Registration Country
----------- ----------- ----------- --------
(1) All trademarks owned by Xxxxxxx Pharmaceuticals, Inc. and
registered in the United States, the states of the United
States, and/or foreign countries.
Exhibit 3 to
Security Agreement
SPECIAL POWER OF ATTORNEY COUPLED WITH AN INTEREST
---------------------------------------------------
STATE OF NEW JERSEY )
) ss.
COUNTY OF ________ )
KNOW ALL MEN BY THESE PRESENTS, THAT Xxxxxxx
Pharmaceuticals, Inc., a New Jersey corporation with its
principal office at 000 Xxxxx 000 Xxxx, Xxxxxxxxx, Xxx Xxxxxx
00000, (hereinafter called "Assignor") hereby appoints and
constitutes The CIT Group/Credit Finance, Inc., a Delaware
corporation (hereinafter called "Assignee"), its true and lawful
attorney, with full power of substitution, and with full power
and authority to perform the following acts on behalf of
Assignor:
1. For the purpose of assigning, selling or otherwise
disposing of all right, title and interest of Assignor in and to
any letters patent of the United States or any other country, and
all pending applications therefor, and all reissues, divisions,
continuations, continuations-in-part and extensions thereof, and
for the purpose of the filing and prosecution of, or
accomplishing any other formality with respect to, the foregoing,
to execute and deliver any and all agreements, documents,
instruments of assignment or other papers necessary or advisable
to effect such purpose;
2. For the purpose of assigning, selling or otherwise
disposing of all right, title and interest of Assignor in and to
any trademarks, trade names, trade styles and service marks, and
all registrations, recordings and renewals thereof, and all
pending applications therefor, and for the purpose of the
recording, registering, filing and prosecution of, or
accomplishing any other formality with respect to, the foregoing,
to execute and deliver any and all agreements, documents,
instruments of assignment or other papers necessary or advisable
to effect such purpose; and
3. To execute any and all documents, statements,
certificates or other papers necessary or advisable in order to
obtain the purposes described above as Assignee may in its sole
discretion determine.
This power of attorney is made pursuant to an Assignment,
Security Agreement and Mortgage Trademarks and Patents, dated the
date hereof, between Assignor and Assignee and takes effect
solely for the purposes of paragraphs 3(d) and (e) thereof and is
subject to the conditions thereof and may not be revoked until
the payment in full of all "Obligations" as defined in such
Assignment, Security Agreement and Mortgage.
Dated: _____________________, 1997.
ATTEST: XXXXXXX PHARMACEUTICALS, INC.,
a New Jersey corporation
By:___________________________ By:_______________________
Name: Name:
Title: Title:
(CORPORATE SEAL)
STATE OF NEW JERSEY )
) ss.
COUNTY OF __________ )
On this ____ day of ______________, 19__, before me
personally appeared _____________________________________ and
_________________________, to me known, who, being by me duly
sworn, did depose and say that they are the ________________ and
___________________ of Xxxxxxx Pharmaceuticals, Inc., the
corporation described in and which executed the foregoing
instrument; that they know the seal of said corporation; that the
seal affixed to said instrument is such corporate seal; that it
was affixed by order of the Board of Directors of said
corporation, and that they signed their names thereto by like
order.
_______________________________
Notary Public
My commission expires:
_______________________________
