PATENT AND TRADEMARK SECURITY AGREEMENT
This Agreement, dated as of December 29, 2006, is made by and
between MISONIX, INC., a New York corporation having a business location at the
address set forth below next to its signature (the "Debtor"), and Xxxxx Fargo
Bank, National Association (the "Secured Party"), acting through its Xxxxx Fargo
Business Credit operating division, and having a business location at the
address set forth below next to its signature.
Recitals
The Debtor, Acoustic Marketing Research, Inc., d/b/a Sonora Medical
Systems, Hearing Innovations Incorporated and the Secured Party are parties to a
Credit and Security Agreement of even date herewith (as the same may hereafter
be amended, supplemented or restated from time to time, the "Credit Agreement")
setting forth the terms on which the Secured Party may now or hereafter extend
credit to or for the account of the Debtor, Acoustic Marketing Research, Inc.
and Hearing Innovations Incorporated.
As a condition to extending credit to or for the account of the
Debtor, the Secured Party has required the execution and delivery of this
Agreement by the Debtor.
ACCORDINGLY, in consideration of the mutual covenants contained in
the Loan Documents and herein, the parties hereby agree as follows:
1. Definitions. All terms defined in the Recitals hereto or in
the Credit Agreement that are not otherwise defined herein shall have the
meanings given to them therein. In addition, the following terms have the
meanings set forth below:
"Patents" means all of the Debtor's right, title and interest in and
to patents or applications for patents, fees or royalties with respect to
each, and including without limitation the right to xxx for past
infringement and damages therefor, and licenses thereunder, all as
presently existing or hereafter arising or acquired, including without
limitation the patents listed on Exhibit A.
"Security Interest" has the meaning given in Section 2.
"Trademarks" means all of the Debtor's right, title and interest in
and to: (i) trademarks, service marks, collective membership marks,
registrations and applications for registration for each, and the
respective goodwill associated with each, (ii) licenses, fees or royalties
with respect to each, (iii) the right to xxx for past, present and future
infringement, dilution and damages therefor, and (iv) licenses thereunder,
all as presently existing or hereafter arising or acquired, including,
without limitation, the marks listed on Exhibit B.
2. Security Interest. The Debtor hereby irrevocably pledges and
assigns to, and grants the Secured Party a security interest (the "Security
Interest") with power of sale to the extent permitted by law, in the Patents and
in the Trademarks to secure payment of the
Indebtedness. As set forth in the Credit Agreement, the Security Interest is
coupled with a security interest in substantially all of the personal property
of the Debtor. This Agreement grants only the Security Interest herein
described, is not intended to and does not affect any present transfer of title
of any trademark registration or application and makes no assignment and grants
no right to assign or perform any other action with respect to any intent to use
trademark application, unless such action is permitted under 15 U.S.C. ss. 1060.
3. Representations, Warranties and Agreements. The Debtor
represents, warrants and agrees as follows:
(a) EXISTENCE; AUTHORITY. The Debtor is a corporation duly
organized, validly existing and in good standing under the laws of its
state of incorporation, and this Agreement has been duly and validly
authorized by all necessary corporate action on the part of the Debtor.
(b) PATENTS. Exhibit A accurately lists all Patents owned or
controlled by the Debtor as of the date hereof, or to which the Debtor has
a right as of the date hereof to have assigned to it, and accurately
reflects the existence and status of applications and letters patent
pertaining to the Patents as of the date hereof. If after the date hereof,
the Debtor owns, controls or has a right to have assigned to it any
Patents not listed on Exhibit A, or if Exhibit A ceases to accurately
reflect the existence and status of applications and letters patent
pertaining to the Patents, then the Debtor shall within 60 days provide
written notice to the Secured Party with a replacement Exhibit A, which
upon acceptance by the Secured Party shall become part of this Agreement.
(c) TRADEMARKS. Exhibit B accurately lists all Trademarks owned or
controlled by the Debtor as of the date hereof and accurately reflects the
existence and status of Trademarks and all applications and registrations
pertaining thereto as of the date hereof; provided, however, that Exhibit
B need not list common law marks (i.e., Trademarks for which there are no
applications or registrations) which are not material to the Debtor's or
any Affiliate's business(es). If after the date hereof, the Debtor owns or
controls any Trademarks not listed on Exhibit B (other than common law
marks which are not material to the Debtor's or any Affiliate's
business(es)), or if Exhibit B ceases to accurately reflect the existence
and status of applications and registrations pertaining to the Trademarks,
then the Debtor shall promptly provide written notice to the Secured Party
with a replacement Exhibit B, which upon acceptance by the Secured Party
shall become part of this Agreement.
(d) AFFILIATES. As of the date hereof, no Affiliate owns,
controls, or has a right to have assigned to it any items that would, if
such item were owned by the Debtor, constitute Patents or Trademarks. If
after the date hereof any Affiliate owns, controls, or has a right to have
assigned to it any such items, then the Debtor shall promptly either: (i)
cause such Affiliate to assign all of its rights in such item(s) to the
Debtor; or (ii) notify the Secured Party of such item(s) and cause such
Affiliate to execute and deliver to the Secured Party a patent and
trademark security agreement substantially in the form of this Agreement.
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(e) TITLE. The Debtor has absolute title to each Patent and each
Trademark listed on Exhibits A and B, free and clear of all Liens except
Permitted Liens. The Debtor (i) will have, at the time the Debtor acquires
any rights in Patents or Trademarks hereafter arising, absolute title to
each such Patent or Trademark free and clear of all Liens except Permitted
Liens, and (ii) will keep all Patents and Trademarks free and clear of all
Liens except Permitted Liens.
(f) NO SALE. Except as permitted in the Credit Agreement, the
Debtor will not assign, transfer, encumber or otherwise dispose of the
Patents or Trademarks, or any interest therein, without the Secured
Party's prior written consent.
(g) DEFENSE. The Debtor will at its own expense and using
commercially reasonable efforts, protect and defend the Patents and
Trademarks against all claims or demands of all Persons other than those
holding Permitted Liens.
(h) MAINTENANCE. The Debtor will at its own expense maintain the
Patents and the Trademarks to the extent reasonably advisable in its
business including, but not limited to, filing all applications to obtain
letters patent or trademark registrations and all affidavits, maintenance
fees, annuities, and renewals possible with respect to letters patent,
trademark registrations and applications therefor. The Debtor covenants
that it will not abandon nor fail to pay any maintenance fee or annuity
due and payable on any Patent or Trademark, nor fail to file any required
affidavit or renewal in support thereof, without first providing the
Secured Party: (i) sufficient written notice, of at least 30 days, to
allow the Secured Party to timely pay any such maintenance fees or
annuities which may become due on any Patents or Trademarks, or to file
any affidavit or renewal with respect thereto, and (ii) a separate written
power of attorney or other authorization to pay such maintenance fees or
annuities, or to file such affidavit or renewal, should such be necessary
or desirable.
(i) SECURED PARTY'S RIGHT TO TAKE ACTION. If the Debtor fails to
perform or observe any of its covenants or agreements set forth in this
Section 3, and if such failure continues for a period of ten (10) calendar
days after the Secured Party gives the Debtor written notice thereof (or,
in the case of the agreements contained in subsection (h), immediately
upon the occurrence of such failure, without notice or lapse of time), or
if the Debtor notifies the Secured Party that it intends to abandon a
Patent or Trademark, the Secured Party may (but need not) perform or
observe such covenant or agreement or take steps to prevent such intended
abandonment on behalf and in the name, place and stead of the Debtor (or,
at the Secured Party's option, in the Secured Party's own name) and may
(but need not) take any and all other actions which the Secured Party may
reasonably deem necessary to cure or correct such failure or prevent such
intended abandonment.
(j) COSTS AND EXPENSES. Except to the extent that the effect of
such payment would be to render any loan or forbearance of money usurious
or otherwise illegal under any applicable law, the Debtor shall pay the
Secured Party on demand the amount of all moneys expended and all costs
and expenses (including reasonable attorneys' fees and
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disbursements) incurred by the Secured Party in connection with or as
a result of the Secured Party's taking action under subsection (i) or
exercising its rights under Section 6, together with interest thereon from
the date expended or incurred by the Secured Party at the Default Rate.
(k) POWER OF ATTORNEY. To facilitate the Secured Party's taking
action under subsection (i) and exercising its rights under Section 6, the
Debtor hereby irrevocably appoints (which appointment is coupled with an
interest) the Secured Party, or its delegate, as the attorney-in-fact of
the Debtor with the right (but not the duty) from time to time to create,
prepare, complete, execute, deliver, endorse or file, in the name and on
behalf of the Debtor, any and all instruments, documents, applications,
financing statements, and other agreements and writings required to be
obtained, executed, delivered or endorsed by the Debtor under this Section
3, or, necessary for the Secured Party, after an Event of Default, to
enforce or use the Patents or Trademarks or to grant or issue any
exclusive or non-exclusive license under the Patents or Trademarks to any
third party, or to sell, assign, transfer, pledge, encumber or otherwise
transfer title in or dispose of the Patents or Trademarks to any third
party. The Debtor hereby ratifies all that such attorney shall lawfully do
or cause to be done by virtue hereof. The power of attorney granted herein
shall terminate upon the termination of the Credit Agreement as provided
therein and the payment and performance of all Indebtedness.
4. Debtor's Use of the Patents and Trademarks. The Debtor shall
be permitted to control and manage the Patents and Trademarks, including the
right to exclude others from making, using or selling items covered by the
Patents and Trademarks and any licenses thereunder, in the same manner and with
the same effect as if this Agreement had not been entered into, so long as no
Event of Default occurs and remains uncured.
5. Events of Default. Each of the following occurrences shall
constitute an event of default under this Agreement (herein called "Event of
Default"): (a) an Event of Default, as defined in the Credit Agreement, shall
occur; or (b) the Debtor shall fail promptly to observe or perform any covenant
or agreement herein binding on it; or (c) any of the representations or
warranties contained in Section 3 shall prove to have been incorrect in any
material respect when made.
6. Remedies. Upon the occurrence of an Event of Default and at
any time thereafter, the Secured Party may, at its option, take any or all of
the following actions:
(a) The Secured Party may exercise any or all remedies available
under the Credit Agreement.
(b) The Secured Party may sell, assign, transfer, pledge, encumber
or otherwise dispose of the Patents and Trademarks.
(c) The Secured Party may enforce the Patents and Trademarks and
any licenses thereunder, and if Secured Party shall commence any suit for
such enforcement, the Debtor shall, at the request of Secured Party, do
any and all lawful acts and execute any and all proper documents required
by Secured Party in aid of such enforcement.
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7. Miscellaneous. This Agreement can be waived, modified,
amended, terminated or discharged, and the Security Interest can be released,
only explicitly in a writing signed by the Secured Party. A waiver signed by the
Secured Party shall be effective only in the specific instance and for the
specific purpose given. Mere delay or failure to act shall not preclude the
exercise or enforcement of any of the Secured Party's rights or remedies. All
rights and remedies of the Secured Party shall be cumulative and may be
exercised singularly or concurrently, at the Secured Party's option, and the
exercise or enforcement of any one such right or remedy shall neither be a
condition to nor bar the exercise or enforcement of any other. All notices to be
given to Debtor under this Agreement shall be given in the manner and with the
effect provided in the Credit Agreement. The Secured Party shall not be
obligated to preserve any rights the Debtor may have against prior parties, to
realize on the Patents and Trademarks at all or in any particular manner or
order, or to apply any cash proceeds of Patents and Trademarks in any particular
order of application. This Agreement shall be binding upon and inure to the
benefit of the Debtor and the Secured Party and their respective participants,
successors and assigns and shall take effect when signed by the Debtor and
delivered to the Secured Party, and the Debtor waives notice of the Secured
Party's acceptance hereof. The Secured Party may execute this Agreement if
appropriate for the purpose of filing, but the failure of the Secured Party to
execute this Agreement shall not affect or impair the validity or effectiveness
of this Agreement. A carbon, photographic or other reproduction of this
Agreement or of any financing statement signed by the Debtor shall have the same
force and effect as the original for all purposes of a financing statement. This
Agreement shall be governed by the internal law of New York without regard to
conflicts of law provisions. If any provision or application of this Agreement
is held unlawful or unenforceable in any respect, such illegality or
unenforceability shall not affect other provisions or applications which can be
given effect and this Agreement shall be construed as if the unlawful or
unenforceable provision or application had never been contained herein or
prescribed hereby. All representations and warranties contained in this
Agreement shall survive the execution, delivery and performance of this
Agreement and the creation and payment of the Indebtedness.
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THE PARTIES WAIVE ANY RIGHT TO TRIAL BY JURY IN ANY ACTION OR
PROCEEDING BASED ON OR PERTAINING TO THIS AGREEMENT.
IN WITNESS WHEREOF, the parties have executed this Patent and
Trademark Security Agreement as of the date written above.
MISONIX, INC. MISONIX, INC.
0000 Xxx Xxxxxxx
Xxxxxxxxxxx, XX 00000
By: /s/ Xxxxxxx Xxxxxxx
-------------------
Xxxxxxx Xxxxxxx
Senior Vice President
Xxxxx Fargo Bank, National Association XXXXX FARGO BANK, NATIONAL
000 Xxxx 00xx Xxxxxx XXXXXXXXXXX
Xxx Xxxx, XX 00000
By: /s/ Xxxxxxxxxxx Xxxxxxxxx
-------------------------
Xxxxxxxxxxx Xxxxxxxxx,
Senior Vice President
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XXXXX XX XXX XXXX )
ss.:
COUNTY OF NASSAU )
On the 29th day of December, in the year 2006, before me personally
came Xxxxxxx Xxxxxxx, to me known, who, being by me duly sworn, did depose and
say that he resides in _______________________________________; that he is the
Senior Vice President of MISONIX, INC., the corporation described in and which
executed the above instrument; and that he signed his name thereto by authority
of the board of directors of said corporation.
________________________________
Notary Public
STATE OF NEW YORK )
ss.:
COUNTY OF NASSAU )
On the 29th day of December, in the year 2006, before me personally
came Xxxxxxxxxxx Xxxxxxxxx, to me known, who, being by me duly sworn, did depose
and say that he resides in _______________________________________; that he is
the Senior Vice President of XXXXX FARGO BUSINESS BANK, NATIONAL ASSOCIATION,
acting through its Xxxxx Fargo Business Credit operating division, the entity
described in and which executed the above instrument; and that he signed his
name thereto by authority of said entity.
________________________________
Notary Public
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EXHIBIT A
UNITED STATES PATENT APPLICATIONS
Title Serial Number Filing Date
----- ------------- -----------
Cavitation Device 4,920,954 5/01/1990
Fluid Processing 5,026,167 6/25/1991
Fluid Processing 5,032,027 7/16/1991
Wire with Sheath 5,248,296 9/23/1993
Guidewire Guides 5,306,261 4/26/1994
Guidewire Guides 5,443,456 8/22/1995
Flow-thru Transducer 5,371,429 12/06/1994
Catheter Sheath 5,397,293 3/14/1995
Liposuction 5,419,761 5/30/1995
Flow-thru Transducer 5,465,468 11/14/1995
Atomizer Horn 5,516,043 5/14/1996
Ultrasonic Probes 5,527,273 6/18/1996
Autoclavable Switch 5,769,211 6/23/1998
Shock Wave Hydrophone 5,072,426 12/10/1991
Vented Ultrasonic Transducer 4,741,731 5/03/1988
Apparatus for Eliminating Air Bubbles 5,151,083 9/29/1992
Ultrasonic Needle with Sleeve 5,151,084 9/29/1992
Bubble Control Device 5,486,162 1/23/1996
Ultrasonic Surgical Probe 5,562,609 10/08/1996
Needle for Ultrasonic Surgical Probe 5,562,610 10/08/1996
Magnetic Ball Valves 5,904,669 05/18/1999
Ultrasonic Probe 6,270,471 8/07/2001
Ultrasonic Blade 6,443,969 9/03/2002
Ultrasonic Blade 6,379,371 4/30/2002
Infiltration Cannula with Teflon 6,375,648 4/23/2002
Skinless Sausage or Frankfurter 6,326,039 12/04/2001
Manufacturing Method & Apparatus 6,322,832 11/27/2001
Method & Device for Manufacturing 6,146,674 11/14/2000
Ultrasonic Dissection & Coagulation 6,063,050 5/16/2000
Ultrasonic Dissection & Coagulation 6,036,667 3/14/2000
Non-clogging Catheter 6,582,440 6/24/2003
Ultrasonic Horn Assembly 6,578,659 6/17/2003
Thermal Film Ultrasonic 6,454,730 9/24/2002
Ultrasonic Probe with Low Friction 6,613,056 9/02/2003
Ultrasonic Medical Treatment Device 6,648,839 11/18/2003
Fingerprint Processing Chamber 6,660,054 12/09/2003
Ultrasonic Medical Treatment Device 6,736,814 5/18/2004
Ultrasonic Cleaning Probe 6,799,729 10/05/2004
RF Cauterization 6,902,536 6/07/2005
Ultrasonic Horn 7,004,282 2/28/2006
FOREIGN ISSUED PATENTS
NONE
UNITED STATES PATENT APPLICATIONS
NONE
X-0
XXXXXXX X
XXXXXX XXXXXX ISSUED TRADEMARKS, SERVICE MARKS
AND COLLECTIVE MEMBERSHIP MARKS
REGISTRATIONS
Registration Number Registration Date
Xxxx Serial Number Filing Date
---- ------------------- -----------------
Sonicone 76647416 9/26/2005
Sonatheim 7667414 8/13/2004
Misonix 2812718 2/10/2004
Mystaire 2611532 8/27/2000
Aura 2320805 2/22/2000
Misonix 2051093 3/27/2003
Misonix 74467619 12/09/1993
Misonix 74467609 2/13/2003
Water Web 73325806 4/03/2002
Sonimist 73263563 12/07/1982
Astrason 73263562 7/14/2002
APPLICATIONS
COLLECTIVE MEMBERSHIP MARKS
UNREGISTERED MARKS
