EXHIBIT 10.11
INTELLECTUAL PROPERTY
SECURITY AGREEMENT
This Intellectual Property Security Agreement (this "Agreement") is made as
of November , 2001 by and between GENUS, INC. ("Borrower"), and SILICON VALLEY
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BANK, a California banking corporation ("Secured Party").
RECITALS
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A. Secured Party has agreed to lend to Borrower certain funds (the
"Loans"), pursuant to a Loan and Security Agreement and a Loan and Security
Agreement (Exim Program) dated of substantially even date (collectively, the
"Loan Agreement") and Borrower desires to borrow such funds from Secured Party.
B. In order to induce Secured Party to make the Loans, Borrower has
agreed to grant a security interest in certain intangible property to Secured
Party for purposes of securing the obligations of Borrower to Secured Party.
NOW, THEREFORE, THE PARTIES HERETO AGREE AS FOLLOWS:
1. Grant of Security Interest. As collateral security for the prompt
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and complete payment and performance of all of Borrower's present or future
indebtedness, obligations and liabilities to Secured Party, Borrower hereby
grants, assigns, transfers, and conveys a security interest to Secured Party, as
security, but not as an ownership interest, in and to Borrower's entire right,
title and interest in, to and under the following (all of which shall
collectively be called the "Collateral"):
(a) All of present and future United States registered copyrights and
copyright registrations, including, without limitation, the registered
copyrights, maskworks, software, computer programs and other works of authorship
subject to United States copyright protection listed in Exhibit A-1 to this
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Agreement (and including all of the exclusive rights afforded a copyright
registrant in the United States under 17 U.S.C. Sec.106 and any exclusive rights
which may in the future arise by act of Congress or otherwise) and all present
and future applications for copyright registrations (including applications for
copyright registrations of derivative works and compilations) (collectively, the
"Registered Copyrights"), and any and all royalties, payments, and other amounts
payable to Borrower in connection with the Registered Copyrights, together with
all renewals and extensions of the Registered Copyrights, the right to recover
for all past, present, and future infringements of the Registered Copyrights,
and all computer programs, computer databases, computer program flow diagrams,
source codes, object codes and all tangible property embodying or incorporating
the Registered Copyrights, and all other rights of every kind whatsoever
accruing thereunder or pertaining thereto.
(b) All present and future copyrights, maskworks, software, computer
programs and other works of authorship subject to (or capable of becoming
subject to) United States copyright protection which are not registered in the
United States Copyright Office (the "Unregistered Copyrights"), whether now
owned or hereafter acquired, including without limitation the Unregistered
Copyrights listed in Exhibit A-2 to this Agreement, and any and all royalties,
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payments, and other amounts payable to Borrower in connection with the
Unregistered Copyrights, together with all renewals and extensions of the
Unregistered Copyrights, the right to recover for all past, present, and future
infringements of the Unregistered Copyrights, and all computer programs,
computer databases, computer program flow diagrams, source codes, object codes
and all tangible property embodying or incorporating the Unregistered
Copyrights, and all other rights of every kind whatsoever accruing thereunder or
pertaining thereto. The Registered Copyrights and the Unregistered Copyrights
collectively are referred to herein as the "Copyrights."
(c) All right, title and interest in and to any and all present and future
license agreements with respect to the Copyrights, including without limitation
the license agreements listed in Exhibit A-3 to this Agreement (the "Licenses").
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(d) All present and future accounts, accounts receivable and other rights
to payment arising from, in connection with or relating to the Copyrights.
(e) Any and all trade secrets, and any and all intellectual
property rights in computer software and computer software products now or
hereafter existing, created, acquired or held;
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(f) Any and all design rights which may be available to Borrower
now or hereafter existing, created, acquired or held;
(g) All patents, patent applications and like protections
including, without limitation, improvements, divisions, continuations, renewals,
reissues, extensions and continuations-in-part of the same, including without
limitation the patents and patent applications set forth on Exhibit B attached
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hereto (collectively, the "Patents");
(h) Any trademark and servicemark rights, whether registered or
not, applications to register and registrations of the same and like
protections, and the entire goodwill of the business of Borrower connected with
and symbolized by such trademarks, including without limitation those set forth
on Exhibit C attached hereto (collectively, the "Trademarks"); provided,
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however, that Secured Party shall not acquire any interest in any intent to use
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a federal trademark application for a trademark, servicemark, or other xxxx
filed on Borrower's behalf prior to the filing under applicable law of a
verified statement of use (or equivalent) for such xxxx that is the subject of
such application;
(i) Any and all claims for damages by way of past, present and
future infringements of any of the rights included above, with the right, but
not the obligation, to xxx for and collect such damages for said use or
infringement of the intellectual property rights identified above;
(j) All licenses or other rights to use any of the Copyrights,
Patents or Trademarks, and all license fees and royalties arising from such use
to the extent permitted by such license or rights;
(k) All amendments, extensions, renewals and extensions of any of
the Copyrights, Trademarks or Patents; and
(l) All proceeds and products of the foregoing, including without
limitation all payments under insurance or any indemnity or warranty payable in
respect of any of the foregoing.
2. Authorization and Request. Borrower authorizes and requests that
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the Register of Copyrights and the Commissioner of Patents and Trademarks record
this Agreement.
3. Covenants and Warranties. Borrower represents, warrants, covenants
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and agrees as follows:
(a) Borrower is now the sole owner of the Collateral, except for
non-exclusive licenses granted by Borrower to its customers in the ordinary
course of business.
(b) Listed on Exhibits A-1 and A-2 are all copyrights owned by
Borrower, in which Borrower has an interest, or which are used in Borrower's
business.
(c) Each employee, agent and/or independent contractor who has
participated in the creation of the property constituting the Collateral has
either executed an assignment of his or her rights of authorship to Borrower or
is an employee of Borrower acting within the scope of his or her employment and
was such an employee at the time of said creation.
(d) All of Borrower's present and future maskworks, software,
computer programs and other works of authorship subject to (or capable of
becoming subject to) United States copyright protection, the sale, licensing or
other disposition of which results in royalties receivable, license fees
receivable, accounts receivable or other sums owing to Borrower (collectively,
"Receivables"), have been and shall be registered with the United States
Copyright Office prior to the date Borrower requests or accepts any loan from
Secured Party with respect to such Receivables and prior to the date Borrower
includes any such Receivables in any accounts receivable aging, borrowing base
report or certificate or other similar report provided to Secured Party, and
Borrower shall provide to Secured Party copies of all such registrations
promptly upon the receipt of the same.
(e) Borrower shall undertake all reasonable measures to cause its
employees, agents and independent contractors to assign to Borrower all rights
of authorship to any copyrighted material in which Borrower has or may
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subsequently acquire any right or interest.
(f) Performance of this Agreement does not conflict with or
result in a breach of any agreement to which Borrower is bound, except to the
extent that certain intellectual property agreements prohibit the assignment of
the rights thereunder to a third party without the licensor's or other party's
consent and this Agreement constitutes an assignment.
(g) During the term of this Agreement, Borrower will not transfer
or otherwise encumber any interest in the Collateral, except for Permitted Liens
(as such term is defined in the Loan Agreement) and non-exclusive licenses
granted by Borrower in the ordinary course of business or as set forth in this
Agreement;
(h) Each of the Patents, Trademarks, and Copyrights is valid and
enforceable, and no part of the Collateral has been judged invalid or
unenforceable, in whole or in part, and no claim has been made that any part of
the Collateral violates the rights of any third party;
(i) Borrower shall promptly advise Secured Party of any material
adverse change in the composition of the Collateral, including but not limited
to any subsequent ownership right of the Borrower in or to any Trademark, Patent
or Copyright not specified in this Agreement;
(j) Borrower shall (i) protect, defend and maintain the validity
and enforceability of the Trademarks, Patents and Copyrights, (ii) use its best
efforts to detect infringements of the Trademarks, Patents and Copyrights and
promptly advise Secured Party in writing of material infringements detected and
(iii) not allow any Trademarks, Patents, or Copyrights to be abandoned,
forfeited or dedicated to the public without the written consent of Secured
Party, which shall not be unreasonably withheld unless Borrower determines that
reasonable business practices suggest that abandonment is appropriate.
(k) Borrower shall promptly register the most recent version of
any of Borrower's Copyrights, if not so already registered, and shall, from time
to time, execute and file such other instruments, and take such further actions
as Secured Party may reasonably request from time to time to perfect or continue
the perfection of Secured Party's interest in the Collateral;
(l) This Agreement creates, and in the case of after acquired
Collateral, this Agreement will create at the time Borrower first has rights in
such after acquired Collateral, in favor of Secured Party a valid and perfected
first priority security interest in the Collateral in the United States securing
the payment and performance of the obligations evidenced by the Loan Agreement
upon making the filings referred to in clause (m) below;
(m) To its knowledge, except for, and upon, the filing with the
United States Patent and Trademark office with respect to the Patents and
Trademarks and the Register of Copyrights with respect to the Copyrights
necessary to perfect the security interests created hereunder and except as has
been already made or obtained, no authorization, approval or other action by,
and no notice to or filing with, any U.S. governmental authority or U.S.
regulatory body is required either (i) for the grant by Borrower of the security
interest granted hereby or for the execution, delivery or performance of this
Agreement by Borrower in the U.S. or (ii) for the perfection in the United
States or the exercise by Secured Party of its rights and remedies thereunder;
(n) All information heretofore, herein or hereafter supplied to
Secured Party by or on behalf of Borrower with respect to the Collateral is
accurate and complete in all material respects.
(o) Borrower shall not enter into any agreement that would
materially impair or conflict with Borrower's obligations hereunder without
Secured Party's prior written consent, which consent shall not be unreasonably
withheld. Borrower shall not permit the inclusion in any material contract to
which it becomes a party of any provisions that could or might in any way
prevent the creation of a security interest in Borrower's rights and interest in
any property included within the definition of the Collateral acquired under
such contracts, except that certain contracts may contain anti-assignment
provisions that could in effect prohibit the creation of a security interest in
such contracts.
(p) Upon any executive officer of Borrower obtaining actual
knowledge thereof, Borrower will promptly notify Secured Party in writing of any
event that materially adversely affects the value of any material Collateral,
the ability of Borrower to dispose of any material Collateral or the rights and
remedies of Secured Party
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in relation thereto, including the levy of any legal process against any of the
Collateral.
4. Secured Party's Rights. Secured Party shall have the right, but not
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the obligation, to take, at Borrower's sole expense, any actions that Borrower
is required under this Agreement to take but which Borrower fails to take, after
fifteen (15) days' notice to Borrower. Borrower shall reimburse and indemnify
Secured Party for all reasonable costs and reasonable expenses incurred in the
reasonable exercise of its rights under this section 4.
5. Inspection Rights. Borrower hereby grants to Secured Party and its
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employees, representatives and agents the right to visit, during reasonable
hours upon prior reasonable written notice to Borrower, and any of Borrower's
plants and facilities that manufacture, install or store products (or that have
done so during the prior six-month period) that are sold utilizing any of the
Collateral, and to inspect the products and quality control records relating
thereto upon reasonable written notice to Borrower and as often as may be
reasonably requested, but not more than one (1) in every six (6) months;
provided, however, nothing herein shall entitle Secured Party access to
Borrower's trade secrets and other proprietary information.
6. Further Assurances; Attorney in Fact.
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(a) Borrower will, subject to any prior licenses, encumbrances and
restrictions and prospective licenses, make, execute, acknowledge and deliver,
and file and record in the proper filing and recording places in the United
States, all such instruments, including, appropriate financing and continuation
statements and collateral agreements and filings with the United States Patent
and Trademarks Office and the Register of Copyrights, and take all such action
as may reasonably be deemed necessary or advisable, or as requested by Secured
Party, to perfect Secured Party's security interest in all Copyrights, Patents
and Trademarks and otherwise to carry out the intent and purposes of this
Agreement, or for assuring and confirming to Secured Party the grant or
perfection of a security interest in all Collateral.
(b) Upon an Event of Default, Borrower hereby irrevocably appoints
Secured Party as Borrower's attorney-in-fact, with full authority in the place
and stead of Borrower and in the name of Borrower, Secured Party or otherwise,
from time to time in Secured Party's discretion, upon Borrower's failure or
inability to do so, to take any action and to execute any instrument which
Secured Party may deem necessary or advisable to accomplish the purposes of this
Agreement, including:
(i) To modify, in its sole discretion, this Agreement without
first obtaining Borrower's approval of or signature to such modification by
amending Exhibit X-0, Xxxxxxx X-0, Exhibit A-3, Exhibit B and Exhibit C,
thereof, as appropriate, to include reference to any right, title or interest in
any Copyrights, Patents or Trademarks acquired by Borrower after the execution
hereof or to delete any reference to any right, title or interest in any
Copyrights, Patents or Trademarks in which Borrower no longer has or claims any
right, title or interest; and
(ii) To file, in its sole discretion, one or more financing
or continuation statements and amendments thereto, relative to any of the
Collateral without the signature of Borrower where permitted by law.
7. Events of Default. The occurrence of any of the following shall
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constitute an Event of Default under this Agreement:
(a) An Event of Default occurs under the Loan Agreement; or
(b) Borrower breaches any warranty or agreement made by Borrower
in this Agreement.
8. Remedies. Upon the occurrence and continuance of an Event of
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Default, Secured Party shall have the right to exercise all the remedies of a
secured party under the California Uniform Commercial Code, including without
limitation the right to require Borrower to assemble the Collateral and any
tangible property in which Secured Party has a security interest and to make it
available to Secured Party at a place designated by Secured Party. Secured
Party shall have a nonexclusive, royalty free license to use the Copyrights,
Patents and Trademarks to the extent reasonably necessary to permit Secured
Party to exercise its rights and remedies upon the occurrence of an Event of
Default. Borrower will pay any expenses (including reasonable attorney's fees)
incurred by Secured Party in connection with the exercise of any of Secured
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Party's rights hereunder, including without limitation any expense incurred in
disposing of the Collateral. All of Secured Party's rights and remedies with
respect to the Collateral shall be cumulative.
9. Indemnity. Borrower agrees to defend, indemnify and hold harmless
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Secured Party and its officers, employees, and agents against: (a) all
obligations, demands, claims, and liabilities claimed or asserted by any other
party in connection with the transactions contemplated by this Agreement, and
(b) all losses or expenses in any way suffered, incurred, or paid by Secured
Party as a result of or in any way arising out of, following or consequential to
transactions between Secured Party and Borrower, whether under this Agreement or
otherwise (including without limitation, reasonable attorneys fees and
reasonable expenses), except for losses arising form or out of Secured Party's
gross negligence or willful misconduct.
10. Release. At such time as Borrower shall completely satisfy all of
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the obligations secured hereunder, Secured Party shall execute and deliver to
Borrower all lien releases and other instruments as may be reasonably necessary
or proper to terminate Secured Party's security interest in the Collateral,
subject to any disposition of the Collateral which may have been made by Secured
Party pursuant to this Agreement. For the purpose of this Agreement, the
obligations secured hereunder shall be deemed to continue if Borrower enters
into any bankruptcy or similar proceeding at a time when any amount paid to
Secured Party could be ordered to be repaid as a preference or pursuant to a
similar theory, and shall continue until it is finally determined that no such
repayment can be ordered.
11. No Waiver. No course of dealing between Borrower and Secured Party, nor
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any failure to exercise nor any delay in exercising, on the part of Secured
Party, any right, power, or privilege under this Agreement or under the Loan
Agreement or any other agreement, shall operate as a waiver. No single or
partial exercise of any right, power, or privilege under this Agreement or under
the Loan Agreement or any other agreement by Secured Party shall preclude any
other or further exercise of such right, power, or privilege or the exercise of
any other right, power, or privilege by Secured Party.
12. Rights Are Cumulative. All of Secured Party's rights and remedies with
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respect to the Collateral whether established by this Agreement, the Loan
Agreement, or any other documents or agreements, or by law shall be cumulative
and may be exercised concurrently or in any order.
13. Course of Dealing. No course of dealing, nor any failure to
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exercise, nor any delay in exercising any right, power or privilege hereunder
shall operate as a waiver thereof.
14. Attorneys' Fees. If any action relating to this Agreement is
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brought by either party hereto against the other party, the prevailing party
shall be entitled to recover reasonable attorneys fees, costs and disbursements.
15. Amendments. This Agreement may be amended only by a written
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instrument signed by both parties hereto. To the extent that any provision of
this Agreement conflicts with any provision of the Loan Agreement, the provision
giving Secured Party greater rights or remedies shall govern, it being
understood that the purpose of this Agreement is to add to, and not detract
from, the rights granted to Secured Party under the Loan Agreement. This
Agreement, the Loan Agreement, and the documents relating thereto comprise the
entire agreement of the parties with respect to the matters addressed in this
Agreement.
16. Severability. The provisions of this Agreement are severable. If
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any provision of this Agreement is held invalid or unenforceable in whole or in
part in any jurisdiction, then such invalidity or unenforceability shall affect
only such provision, or part thereof, in such jurisdiction, and shall not in any
manner affect such provision or part thereof in any other
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jurisdiction, or any other provision of this Agreement in any jurisdiction.
17. California Law and Jurisdiction. This Agreement shall be governed
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by the laws of the State of California, without regard for choice of law
provisions. Borrower and Secured Party consent to the nonexclusive jurisdiction
of any state or federal court located in Santa Xxxxx County, California.
18. Confidentiality. In handling any confidential information, Secured
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Party shall exercise the same degree of care that it exercises with respect to
its own proprietary information of the same types to maintain the
confidentiality of any non-public information thereby received or received
pursuant to this Agreement except that the disclosure of this information may be
made (i) to the affiliates of the Secured Party, (ii) to prospective transferee
or purchasers of an interest in the obligations secured hereby, provided that
they have entered into a comparable confidentiality agreement in favor of
Borrower and have delivered a copy to Borrower, (iii) as required by law,
regulation, rule or order, subpoena judicial order or similar order and (iv) as
may be required in connection with the examination, audit or similar
investigation of Secured Party.
19. WAIVER OF RIGHT TO JURY TRIAL. SECURED PARTY AND BORROWER EACH
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HEREBY WAIVE THE RIGHT TO TRIAL BY JURY IN ANY ACTION OR PROCEEDING BASED UPON,
ARISING OUT OF, OR IN ANY WAY RELATING TO: (I) THIS AGREEMENT; OR (II) ANY
OTHER PRESENT OR FUTURE INSTRUMENT OR AGREEMENT BETWEEN SECURED PARTY AND
BORROWER; OR (III) ANY CONDUCT, ACTS OR OMISSIONS OF SECURED PARTY OR BORROWER
OR ANY OF THEIR DIRECTORS, OFFICERS, EMPLOYEES, AGENTS, ATTORNEYS OR ANY OTHER
PERSONS AFFILIATED WITH SECURED PARTY OR BORROWER; IN EACH OF THE FOREGOING
CASES, WHETHER SOUNDING IN CONTRACT OR TORT OR OTHERWISE.
[remainder of page intentionally left blank; signature page follows]
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20. Counterparts. This Agreement may be executed in two or more
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counterparts, each of which shall be deemed an original but all of which
together shall constitute the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement on the day
and year first above written.
BORROWER:
GENUS, INC.
By:
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Title:
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Name (please print):
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ADDRESS OF BORROWER:
0000 Xxxxxxxx Xx.
Xxxxxxxxx, Xx 00000
SECURED PARTY:
SILICON VALLEY BANK
By:
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Title:
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Name (please print):
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ADDRESS OF SECURED PARTY:
0000 Xxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
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STATE OF )
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) ss.
COUNTY OF )
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On , 200 , before me,
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, Notary Public, personally appeared
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,
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personally known to me (or proved to me on the basis of satisfactory evidence)
to be the person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the
instrument the person(s), or the entity upon behalf of which the person(s)
acted, executed the instrument.
Witness my hand and official seal.
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(Seal)
STATE OF )
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) ss.
COUNTY OF )
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On , 200 , before me,
------------- -- -----------------------------------
, Notary Public, personally appeared
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,
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personally known to me (or proved to me on the basis of satisfactory evidence)
to be the person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the
instrument the person(s), or the entity upon behalf of which the person(s)
acted, executed the instrument.
Witness my hand and official seal.
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(Seal)
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EXHIBIT "A-1"
REGISTERED COPYRIGHTS
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(including copyrights that are the subject of an application for registration)
Copyright Country Registration/Application Registration/Application
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Number Date
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EXHIBIT "A-2"
UNREGISTERED COPYRIGHTS
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EXHIBIT "A-3"
DESCRIPTION OF LICENSE AGREEMENTS
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EXHIBIT "B"
PATENTS
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(including patents that are the subject of an application for registration)
Patent Country Serial/Application Filing Date Status
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Number
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EXHIBIT "C"
TRADEMARKS
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TRADEMARKS
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(including trademarks that are the subject of an application for registration)
Xxxx Country Serial/Application Filing Date Status
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Number
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