Patent, Trademark, and License Collateral Assignment



THIS PATENT, TRADEMARK, AND LICENSE ASSIGNMENT (Assignment) is made as of this [date], by and between [name], a [state] corporation with an office located at [address], not in its individual capacity but as agent (Agent) for Lenders (as defined below) and [name] (Assignor), a [name] corporation with an office at [address].

W I T N E S S E T H :

WHEREAS, Assignor has agreed to grant to Agent, for its benefit and the ratable benefit of Lenders, a first priority security interest in substantially all of its assets to secure the payment of all amounts owing by Assignor under that certain Loan Agreement, dated as of [date] (as amended, supplemented or modified from time to time, the Loan Agreement) by and among Assignor, Lenders (as defined therein), Agent, as agent for Lenders; and

WHEREAS, pursuant to the terms of a Security Agreement dated as of [date] (Security Agreement) by and between Agent and Assignor, Assignor has mortgaged, pledged, and granted to Agent, for its benefit and the ratable benefit of Lenders, a lien on and security interest in all right, title, and interest of Assignor in, to, and under all of Assignor's Patents, Trademarks, and Licenses (as defined below) whether presently existing or hereafter arising or acquired, and any products and proceeds thereof, including, without limitation, any and all causes of action that may exist by reason of infringement thereof for the full term of the Patents, Trademarks, and Licenses to secure the payment of all amounts owing by Assignor under the Loan Agreement and the Notes referred to in the Loan Agreement;

NOW, THEREFORE, in consideration of the premises set forth herein and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor agrees as follows:

1. Incorporation of Loan Agreement. The Loan Agreement and the Security Agreement and all the terms and provisions thereof are hereby incorporated herein in their entirety by this reference thereto.

2. Assignment of Patents, Technical Information, Licenses, and Trademarks. To secure the complete and timely satisfaction of all of the Secured Obligations (as defined in the Security Agreement):

a. Assignor hereby grants, assigns, and conveys to Agent, for its benefit and the ratable benefit of the Lenders, the entire right, title, and interest of Assignor in and to all of the following, whether now owned or existing and filed or hereafter acquired or arising and filed:

i. Assignor's patents and patent applications, including, without limitation, the inventions and improvements described and claimed therein, and those patents listed on Schedule A attached hereto [omitted] and made a part hereof, and (a) the reissues, divisions, continuations, renewals, extensions, and continuations-in-part thereof; (b) all income, royalties, damages, and payments now and hereafter due and/or payable under and with respect thereto, including, without limitation, damages and payments for past and future infringements thereof; (c) subject to the provisions of paragraph 11, the right to sue for past, present, and future infringements thereof; and (d) all rights corresponding thereto throughout the world (all of the foregoing patents and applications, together with the items described in clauses (a) through (d), inclusive, of this sentence, are sometimes hereinafter individually and/or collectively referred to as the Patents);

ii. Assignor's technical information and know-how relating to processes, procedures, inventions, machines or trade secrets used in connection with the Patents;

iii. Assignor's license agreements relating to or involving any of the Patents or technical information described in clauses (a)(i) or (a)(ii) with any other party, whether Assignor is a licensor or licensee under any such license agreement, including, without limitation, the licenses listed on Schedule C attached hereto [omitted] and made a part hereof, and the right to prepare for sale, sell, and advertise for sale all Inventory (as defined in the Loan Agreement) now or hereafter owned by Assignor and now or hereafter covered by such licenses (all of the foregoing are hereafter referred to collectively as the Patent Licenses); and

b. Assignor hereby grants, assigns, and conveys to Agent, for its benefit and the ratable benefit of the Lenders, a security interest in the following property:

i. Assignor's trademarks, trademark registrations, service marks, service mark registrations, trade names, trademark, and service mark applications, including, without limitation, the trademarks, service marks, and applications listed on Schedule B attached hereto [omitted] and made a part hereof, and (a) renewals thereof; (b) all income, royalties, damages, and payments now and hereafter due and/or payable with respect thereto, including, without limitation, damages and payments for past or future infringements thereof; (c) the right to sue for past, present, and future infringements thereof; (d) all rights corresponding thereto throughout the world; and (e) all of the goodwill of Assignor's business connected with and symbolized by the trademarks, service marks, trade names, or other items described in clauses (a) through (d), inclusive, of this sentence (all of the foregoing trademarks, trademark registrations, service marks, service mark registrations, trade names, and applications, together with the items described in clauses (a) through (e), inclusive, of this sentence are sometimes hereafter individually and/or collectively referred to as the Trademarks);

ii. Assignor's license agreements relating to or involving any of the trademarks, service marks, trade names, or other items described in clause (b)(i) with any other party, whether Assignor is a licensor or licensee under any such license agreement, including, without limitation, the licenses listed on Schedule C attached hereto [omitted] and made a part hereof, and the right to prepare for sale, sell, and advertise for sale, all Inventory (as defined in the Loan Agreement) now or hereafter owned by Assignor and now or hereafter covered by such licenses (all of the foregoing are hereafter referred to collectively as the Trademark Licenses).

3. Restrictions on Future Agreements. Assignor agrees that until the Secured Obligations shall have been satisfied in full and the Loan Agreement shall have been terminated, Assignor will not, without Agent's prior written consent, enter into any agreement (for example, a license agreement) that is inconsistent with Assignor's obligations under this Assignment, and Assignor further agrees that it will not take any action, or permit any action to be taken by others subject to its control, including licensees, or fail to take any action, which would affect the validity or enforcement of the rights transferred to Agent, for its benefit and the ratable benefit of the Lenders, under this Assignment.

4. New Patents, Trademarks, and Licenses. Assignor represents and warrants that the Patents, Trademarks, Patent Licenses, and Trademark Licenses listed on Schedules A, B, and C, respectively, hereto, constitute all of the issue patents, registered trademarks, registered service marks, applications, and licenses now owned by Assignor. If, before the Secured Obligations shall have been satisfied in full, Assignor shall (i) obtain rights to any new patent, registered trademark, registered service mark, registered tradename, or license or (ii) become entitled to the benefit of any patent, trademark or service mark application, trademark or service mark registration, license renewal, or patent for any reissue, division, continuation renewal, extension, or continuation-in-part of any Patent or any improvement on any Patent, the provisions of Paragraph 2 above shall automatically apply thereto and Assignor shall give to Agent prompt written notice thereof. Assignor hereby authorizes Agent to modify this Assignment by amending Schedule A, B, and/or C, as applicable, to include any future patents, patent applications, registered trademarks, registered service marks, trademark applications, service mark applications, registered trade names, and licenses that are Patents, Trademarks, Patent Licenses, or Trademark Licenses, as applicable, under Paragraph 2 above or under this Paragraph 4 (collectively, Future Rights). Assignor agrees to execute all documents necessary to record or preserve Agent's interest in all Patents, Trademarks, Patent Licenses, or Trademark Licenses added to Schedules A, B, or C pursuant to this Paragraph 4. In addition, Assignor shall instruct the attorney prosecuting or filing any such Future Rights on behalf of Assignor to take all necessary steps to perfect Agent's security interest in said Future Rights and to deliver an opinion to Agent stating that such security interest has been so perfected.





5. Royalties. Assignor hereby agrees that the rights to use by Agent of each Patent and Patent License as described above shall be as extensive as the rights of Assignor to use such Patent or Patent License and without any liability for royalties or other related charges from Agent to Assignor, subject, however, to the provisions of Paragraph 7.

6. Term. The term of the assignment of the various interests granted herein shall extend until the earlier of (i) the expiration, abandonment, or disclaimer, as the case may be, of each of the respective Patents, Patent Licenses, Trademarks, and Trademark Licenses assigned hereunder or (ii) the date on which the Secured Obligations have been paid in full and the Loan Agreement has been terminated.

7. Grant of License to Assignor. Until the occurrence of and during the continuation of an Event of Default (as defined in the Loan Agreement), unless such Event of Default has been waived by the Required Lenders (as defined in the Loan Agreement) or Agent, Agent hereby grants to Assignor the exclusive, nontransferable right and license to exercise Agent's rights under the Patent Licenses, and to make, have made, use, and sell the inventions disclosed and claimed in the Patents. As long as such right and license shall exist, Agent shall not exercise any right under or with respect to any Patent or Patent License except as provided in Paragraph 11 hereof. Assignor agrees not to sell or assign its interest in, or grant any sublicense under, the license granted to Assignor in this Paragraph 7, without the prior written consent of Agent. From and after the occurrence of an Event of Default (as defined in the Loan Agreement) and upon notice by Agent to Assignor, Assignor's license with respect to the Patents and Patent Licenses as set forth in this Paragraph 7 shall terminate forthwith, to be reinstated only if and when such event is cured or waived, and Agent 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 Assignor's records concerning the Patents or Patent Licenses may be located.

8. Assignor's Right to Use Trademarks and Trademark Licenses. Until the occurrence of and during the continuation of an Event of Default (as defined in the Loan Agreement), unless such Event of Default has been waived by the Required Lenders (as defined in the Loan Agreement) or Agent, Assignor reserves the exclusive right, subject to Agent's security interest, to own and use the Trademarks and to exercise all rights derived from the Trademark Licenses. Assignor agrees to undertake all necessary acts to maintain and preserve the Trademarks and the rights under the Trademark Licenses, including, but not limited to, filing of affidavits of use and incontestability, where applicable, under Sections 8 and 15 of the Lanham Act (15 U.S.C. Sections 1058 and 1065), and renewals and initiating opposition or cancellation proceedings or litigation against users of the same or confusingly similar marks who seriously threaten the validity or rights of Assignor in its Trademarks. Assignor agrees not to sell or assign ay interest in, or grant any licenses under, the Trademarks or Trademark Licenses without the prior written consent of Agent. From and after the occurrence of an Event of Default and upon notice by Agent to Assignor, Assignor's exclusive rights to own and use the Trademarks and Trademark Licenses as set forth in this Paragraph 8 shall terminate forthwith, to be reinstated only if and when such event is cured or waived, and Agent 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 Assignor's records concerning the Trademarks or Trademark Licenses may be located.

9. Reassignment to Assignor. Upon repayment in full of the Secured Obligations and termination of the Loan Agreement, Agent shall execute and deliver to Assignor all deeds, assignments and other instruments as may be necessary or proper to reinvest in Assignor full title to the Patents, Patent Licenses, Trademarks and Trademark Licenses, subject to any disposition thereof, after an Event of Default, which may have been made by Agent pursuant hereto or pursuant to the Loan Agreement.

10. Duties of Assignor. Assignor shall have the duty (i) to prosecute diligently any patent application of the Patents and any trademark or service mark application of the Trademarks pending as of the date hereof or thereafter until termination of the Loan Agreement; (ii) to make application on the Assignor's unpatented but patentable inventions and on the Assignor's trademarks and service marks, as is appropriate in the Assignor's good faith judgment; and (iii) to use its best efforts to preserve and maintain all rights in patent applications of the Patents and in trademark and service mark applications and trademark and service mark registrations of the Trademarks. Any expenses incurred in connection with such applications shall be borne by the Assignor. In any suit to enforce any Patent License, Trademark License, Patent, or Trademark, Agent shall, at the expense and request of Assignor, join, to the extent necessary, as a plaintiff and do any and all lawful acts and execute any and all proper documents reasonably required by Assignor in connection with such suit.

ASSIGNOR SHALL NOT ABANDON ANY RIGHT TO FILE ANY MATERIAL PATENT APPLICATION, TRADEMARK APPLICATION, SERVICE MARK APPLICATION, PATENT, OR TRADEMARK WITHOUT THE CONSENT OF AGENT, WHICH CONSENT SHALL NOT BE UNREASONABLY WITHHELD.

11. Agent's Right to Sue. At any time after the occurrence and during the continuance of an Event of Default (as defined in the Loan Agreement), Agent shall have the right, but shall in no way be obligated, to bring suit in its own name, on its behalf, and on behalf of the Lenders, to enforce the Patent Licenses, Trademark Licenses, Trademarks, and Patents and, if Agent shall commence any such suit, Assignor shall, at the request of Agent, do any and all lawful acts and execute any and all proper documents reasonably required by Agent in aid of such enforcement and Assignor shall promptly, upon demand, reimburse and indemnify Agent for all reasonable costs and expenses incurred by Agent in the exercise of its rights under this Paragraph 11.

12. Waivers. No course of dealing between Assignor and Agent or any Lender, nor any failure to exercise, nor any delay in exercising, on the part of Agent or any Lender, any right, power, or privilege hereunder or under the Loan Agreement shall operate as a waiver thereof; nor shall any single or partial exercise of any right, power, or privilege hereunder or there under preclude any other or further exercise thereof or the exercise of any other right, power, or privilege.

13. Severability. 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.

14. Modification. This Assignment cannot be altered, amended, or modified in any way, except as specifically provided in Paragraph 4 hereof or by a writing signed by the parties hereto.

15. Cumulative Remedies; Effect on Loan Agreement. All of Agent's rights and remedies with respect to the Patents, Trademarks, Patent Licenses, and Trademark Licenses, whether established hereby or by the Loan Agreement, or by any other agreements or by law shall be cumulative and may be exercised singularly or concurrently. Assignor acknowledges and agrees that this Assignment is not intended to limit or restrict in any way the rights and remedies of Agent or any Lender under the Loan Agreement, but rather is intended to facilitate the exercise of such rights and remedies.

16. Binding Effect; Benefits. This Assignment shall be binding upon Assignor and its respective successors and assigns, and shall inure to the benefit of Agent, its nominees, and assigns, for its benefit and the ratable benefit of Lenders.

17. Governing Law. This Assignment has been executed and delivered in [city], [state], and shall be governed by and construed in accordance with the laws of the State of [state].

18. Conflict of Terms. Except as otherwise explicitly provided in this Assignment, if any provision contained in this Assignment is in conflict with or inconsistent with any provision in the Loan Agreement, the provisions contained in the Loan Agreement shall govern and control, to the extent of such conflict or inconsistency.





IN WITNESS WHEREOF, the parties hereto have duly executed this Assignment as of the date first set forth above.

[name of assignor]

By: [signature]