INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit
10.3
Execution
Copy
INTELLECTUAL
PROPERTY SECURITY AGREEMENT (this “Agreement”), dated as of February 24, 2009,
by and among Synvista Therapeutics, Inc., a Delaware corporation (“Debtor”) and
Xxxxx Bros. Advisors, LLC, as Collateral Agent for the Secured Parties (together
with its successors and assigns in such capacity, the “Collateral
Agent”).
WITNESSETH:
WHEREAS,
pursuant to a Note Purchase Agreement, dated the date hereof, between Debtor and
the Collateral Agent (the “Purchase Agreement”), Debtor has agreed to issue to
the Holders (as defined in the Purchase Agreement) and the Holders have each
agreed to purchase from Debtor certain of Debtor’s Senior Secured Notes (the
“Notes”) in the principal amounts as described in the Purchase Agreement;
and
WHEREAS, in order to induce the Holders
(as defined in the Purchase Agreement) to purchase the Notes, the Debtor has
agreed to execute and deliver to the Collateral Agent for the benefit of the
Secured Parties (as defined in the Security Agreement) that certain Security
Agreement dated the date hereof for the benefit of the Collateral Agent and the
Secured Parties in which the Debtor has, among other things, granted to the
Collateral Agent a security interest in the Collateral (as defined in the
Security Agreement) including a security interest in all of the Debtor’s United
States and foreign patents and certificates of invention, or similar industrial
property rights, and applications for any of the foregoing, including, without
limitation: (i) each patent and patent application referred to in Schedule I hereto,
(ii) all reissues, divisions, continuations, continuations-in-part, extensions,
renewals, and reexaminations thereof, (iii) all rights corresponding thereto
throughout the world, (iv) all inventions and improvements described therein,
(v) all rights to xxx for past, present and future infringements thereof, (vi)
all licenses, claims, damages, and proceeds of suit arising therefrom, and (vii)
all Proceeds of the foregoing, including, without limitation, licenses,
royalties, income, payments, claims, damages, and proceeds of suit, in each case
relating to all of Debtor’s diagnostic assets, including, without limitation,
(a) that certain License and Research Agreement dated as of July 12, 2004,
as amended (the “License Agreement”), between BIO-RAP Technologies Ltd., on its
own behalf and on behalf of the Xxxxxxxxx Family Institute for Research in the
Medical Sciences, and Debtor, (b) the Licensed Technology (as defined in the
License Agreement) being developed thereunder, (c) Debtor’s HAPTOCHEK™
diagnostic test kit, and (d) Debtor’s diagnostic test kit for the measurement of
carboxy-methyllysine (“CML”) (together, the “Patent Collateral”) and all
United States and foreign trademarks, trade names, corporate names, company
names, business names, fictitious business names, Internet domain names, service
marks, certification marks, collective marks, logos, other source or business
identifiers, designs and general intangibles of a like nature, all registrations
and applications for any of the foregoing including, without limitation: (i) the
registrations and applications referred to in Schedule II, (ii) all
extensions or renewals of any of the foregoing, (iii) all of the goodwill of the
business connected with the use of and symbolized by the foregoing, (iv) the
right to xxx for past, present and future infringement or dilution of any of the
foregoing or for any injury to goodwill, and (v) all Proceeds of the foregoing,
including, without limitation, licenses, royalties, income, payments, claims,
damages, and proceeds of suit, in each case relating to all of Debtor’s
diagnostic assets, including, without limitation, (a) the License Agreement, (b)
the Licensed Technology (as defined in the License Agreement) being developed
thereunder, (c) Debtor’s HAPTOCHEK™ diagnostic test kit, and (d) Debtor’s
diagnostic test kit for the measurement of CML (collectively, the “Trademark
Collateral” and together with the Patent Collateral the “IP Collateral”), to
secure the payment and performance of all of the Obligations (as defined in the
Security Agreement);
NOW, THEREFORE, for good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
Borrower and the Collateral Agent agree as follows:
1. The
Debtor hereby grants to the Collateral Agent, for the benefit of the Collateral
Agent, a continuing security interest in (i) all of the Debtor’s right, title
and interest in and to the IP Collateral, (ii) the right (but not the
obligation) to xxx or bring like proceedings in the name of the Debtor or in the
name of the Collateral Agent for past, present and future infringements of the
IP Collateral and (iii) all rights (but not obligations) corresponding thereto
in the United States and any foreign country. The Debtor hereby
further acknowledges and affirms that the rights and remedies of the Collateral
Agent with respect to the security interest in the IP Collateral 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.
2. All
notices, demands, consents, statements, requests, approvals or other
communications which are permitted or required to be given by either party to
the other hereunder shall be in writing and shall be given as provided in
Section 9 of the Purchase Agreement.
3. This
Agreement cannot be modified, changed or discharged except by an agreement in
writing signed by the Debtor and the Collateral Agent.
4. This
Agreement shall be construed and enforced in accordance with the laws of the
State of New York.
5. This
Agreement is subject in all respects to the Security Agreement, the terms of
which are incorporated herein by this reference.
6. The
security interests created hereunder and under the Security Agreement in the IP
Collateral shall cease and be released in accordance with the terms of the
Security Agreement and the Purchase Agreement.
7. If
any provision hereof conflicts with any provision of the Security Agreement, the
terms of the Security Agreement shall control to the extent of such
inconsistency.
8. The
Debtor and the Collateral Agent hereby request that the Commissioner of Patents
and Trademarks record this Agreement with respect to the applicable IP
Collateral.
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9. Authorization
to Supplement. If the Debtor shall obtain rights to any additional
patent application, patent, trademark or trademark application relating to the
IP Collateral or for any reissue, division, or continuation, of any patent or
trademark relating to the IP Collateral, the provisions of this Agreement shall
automatically apply thereto. The Debtor shall give prompt notice in
writing to Collateral Agent with respect to any such new patent rights. Without
limiting the Debtor’s obligations under this Xxxxxxx 0, Xxxxxx authorizes
Collateral Agent unilaterally to modify this Agreement by amending Schedules I
and II respectively to include any such new patent rights or trademark rights.
Notwithstanding the foregoing, no failure to so modify this Agreement or amend
Schedule I or II shall in any way affect, invalidate or detract from Collateral
Agent’s continuing security interest in all Collateral, whether or not listed on
Schedule I or II.
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IN
WITNESS WHEREOF, the Debtor and Collateral Agent have caused this Intellectual
Property Security Agreement to be duly executed and delivered as of the day and
year first above written.
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DEBTOR:
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By:
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/s/ Xxxx Xxxxxxxxx, M.D.,
Ph.D.
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Name: Xxxx
Xxxxxxxxx, M.D., Ph.D.
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Title: President
and Chief Executive Officer
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COLLATERAL
AGENT:
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XXXXX
BROS. ADVISORS, LLC
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By:
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/s/ Xxxxxx Xxxxx
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Name:
Xxxxxx Xxxxx
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Title:
Managing
Member
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SCHEDULE
I
PATENTS
AND PATENT APPLICATIONS
See
Attached.
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SCHEDULE
II
TRADEMARKS
AND TRADEMARK APPLICATIONS
None.
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