INTELLECTUAL PROPERTY SECURITY AGREEMENT
INTELLECTUAL
PROPERTY SECURITY AGREEMENT (this
“
Agreement ”),
dated as of April 15, 2008, by and among Optigenex Inc., a Delaware
corporation (“
Parent ”
or “
Company ”)
and the secured parties signatory hereto and their respective
endorsees, transferees and assigns (collectively, the
“
Secured Party ”).
WITNESSETH
:
WHEREAS,
pursuant to a Securities Purchase Agreement, dated the date
hereof, between Parent and the Secured Party (the
“
Purchase Agreement ”),
Parent has agreed to issue to the Secured Party and the Secured
Party has agreed to purchase from Parent certain of Parent’s
8% Callable Secured Convertible Notes, due three years from the
date of issue (the “
Notes ”),
which are convertible into shares of Company’s Common Stock,
par value $.001 per share (the “
Common Stock ”).
In connection therewith, Parent shall issue the Secured Party
certain Common Stock purchase warrants (the “
Warrants ”);
and
WHEREAS,
the Parent has been, and is now, engaged in [
INSERT DESCRIPTION OF BUSINESS ];
and
WHEREAS,
in order to induce the Secured Party to purchase the Notes,
Company has agreed to execute and deliver to the Secured Party
this Agreement for the benefit of the Secured Party and to
grant to it a first priority security interest in certain
Intellectual Property (defined below) of Company to secure the
prompt payment, performance and discharge in full of all of
Company’s obligations under the Notes and exercise and
discharge in full of Company’s obligations under the
Warrants; and
WHEREAS,
in light of the foregoing, the Company expects to derive
substantial benefit from the Purchase Agreement and sale of
the Notes and the transactions contemplated thereby and, in
furtherance thereof, has agreed to execute and deliver this
Agreement.
NOW,
THEREFORE, in consideration of the agreements herein contained
and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties
hereto hereby agree as follows:
1.
Defined Terms .
Unless otherwise defined herein, terms which are defined in the
Purchase Agreement and used herein are so used as so defined; and
the following terms shall have the following meanings:
“
Software Intellectual Property ”
shall mean:
(a)
all software programs (including all source code, object code and
all related applications and data files), whether now owned,
upgraded, enhanced, licensed or leased or hereafter acquired by the
Company, above;
(b)
all computers and electronic data processing hardware and firmware
associated therewith;
(c)
all documentation (including flow charts, logic diagrams, manuals,
guides and specifications) with respect to such software, hardware
and firmware described in the preceding clauses (a) and (b);
and
(d)
all rights with respect to all of the foregoing, including, without
limitation, any and all upgrades, modifications, copyrights,
licenses, options, warranties, service contracts, program services,
test rights, maintenance rights, support rights, improvement
rights, renewal rights and indemnifications and substitutions,
replacements, additions, or model conversions of any of the
foregoing.
“
Copyrights ”
shall mean (a) all copyrights, registrations and applications for
registration,
issued or
filed, including any reissues, extensions or renewals thereof, by
or with the United States Copyright Office or any similar office or
agency of the United States, any state thereof, or any other
country or political subdivision thereof, or otherwise, including,
all rights in and to the material constituting the subject matter
thereof, including, without limitation, any referred to in
Schedule B hereto,
and (b) any rights in any material which is copyrightable or which
is protected by common law, United States copyright laws or similar
laws or any law of any State, including, without limitation, any
thereof referred to in
Schedule B hereto.
“
Copyright License ”
shall mean any agreement, written or oral, providing for a grant by
the Company of any right in any Copyright, including, without
limitation, any thereof referred to in
Schedule B hereto.
“
Intellectual Property ”
shall means, collectively, the Software Intellectual Property,
Copyrights, Copyright Licenses, Patents, Patent Licenses,
Trademarks, Trademark Licenses and Trade Secrets.
“
Obligations ”
means all of the Company’s obligations under this Agreement
and the Notes, in each case, whether now or hereafter existing,
voluntary or involuntary, direct or indirect, absolute or
contingent, liquidated or unliquidated, whether or not jointly owed
with others, and whether or not from time to time decreased or
extinguished and later decreased, created or incurred, and all or
any portion of such obligations or liabilities that are paid, to
the extent all or any part of such payment is avoided or recovered
directly or indirectly from the Secured Party as a preference,
fraudulent transfer or otherwise as such obligations may be
amended, supplemented, converted, extended or modified from time to
time.
“
Patents ”
shall mean (a) all letters patent of the United States or any other
country or any political subdivision thereof, and all reissues and
extensions thereof, including, without limitation, any thereof
referred to in
Schedule B hereto,
and (b) all applications for letters patent of the United States
and all divisions, continuations and continuations-in-part thereof
or any other country or any political subdivision, including,
without limitation, any thereof referred to in
Schedule B hereto.
“
Patent License ”
shall mean all agreements, whether written or oral, providing for
the grant by the Company of any right to manufacture, use or sell
any invention covered by a Patent, including, without limitation,
any thereof referred to in
Schedule B hereto.
“
Security Agreement ”
shall mean the a Security Agreement, dated the date hereof between
Company and the Secured Party.
“
Trademarks ”
shall mean (a) all trademarks, trade names, corporate names,
company names, business names, fictitious business names, trade
styles, service marks, logos and other source or business
identifiers, and the goodwill associated therewith, now existing or
hereafter adopted or acquired, all registrations and recordings
thereof, and all applications in connection therewith, whether 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, or otherwise,
including, without limitation, any thereof referred to in
Schedule B hereto,
and (b) all reissues, extensions or renewals thereof.
“
Trademark License ”
shall mean any agreement, written or oral, providing for the grant
by the Company of any right to use any Trademark, including,
without limitation, any thereof referred to in
Schedule B hereto.
“
Trade Secrets ”
shall mean common law and statutory trade secrets and all other
confidential or proprietary or useful information and all know-how
obtained by or used in or contemplated at any time for use in the
business of the Company (all of the foregoing being collectively
called a “
Trade Secret ”),
whether or not such Trade Secret has been reduced to a writing or
other tangible form, including all documents and things embodying,
incorporating or referring in any way to such Trade Secret, all
Trade Secret licenses, including each Trade Secret license referred
to in
Schedule B hereto,
and including the right to sue for and to enjoin and to collect
damages for the actual or threatened misappropriation of any Trade
Secret and for the breach or enforcement of any such Trade Secret
license.
2.
Grant of Security Interest. In
accordance with Section 3(m) of the Security Agreement, to secure
the complete and timely payment, performance and discharge in full,
as the case may be, of all of the Obligations, the Company hereby,
unconditionally and irrevocably, pledges, grants and hypothecates
to the Secured Party, a continuing security interest in, a
continuing first lien upon, an unqualified right to possession and
disposition of and a right of set-off against, in each case to the
fullest extent permitted by law, all of the Company’s right,
title and interest of whatsoever kind and nature in and to the
Intellectual Property (the “
Security Interest ”).
3.
Representations and Warranties .
The Company hereby represents and warrants, and covenants and
agrees with, the Secured Party as follows:
(a)
The Company has the requisite corporate power and authority to
enter into this Agreement and otherwise to carry out its
obligations thereunder. The execution, delivery and performance by
the Company of this Agreement and the filings contemplated therein
have been duly authorized by all necessary action on the part of
the Company and no further action is required by the Company. This
Agreement constitutes a legal, valid and binding obligation of the
Company enforceable in accordance with its terms, except as
enforceability may be limited by bankruptcy, insolvency,
reorganization, moratorium or similar laws affecting the
enforcement of creditor’s rights generally.
(b)
The Company represents and warrants that it has no place of
business or offices where its respective books of account and
records are kept (other than temporarily at the offices of its
attorneys or accountants) or places where the Intellectual Property
is stored or located, except as set forth on
Schedule A attached
hereto;
(c)
The Company is the sole owner of the Intellectual Property (except
for non-exclusive licenses granted by the Company in the ordinary
course of business), free and clear of any liens, security
interests, encumbrances, rights or claims, and is fully authorized
to grant the Security Interest in and to pledge the Intellectual
Property. There is not on file in any governmental or regulatory
authority, agency or recording office an effective financing
statement, security agreement, license or transfer or any notice of
any of the foregoing (other than those that have been filed in
favor of the Secured Party pursuant to this Agreement) covering or
affecting any of the Intellectual Property. So long as this
Agreement shall be in effect, the Company shall not execute and
shall not knowingly permit to be on file in any such office or
agency any such financing statement or other document or instrument
(except to the extent filed or recorded in favor of the Secured
Party pursuant to the terms of this Agreement), except for a
financing statement covering assets acquired by the Company after
the date hereof, provided that the value of the Intellectual
Property covered by this Agreement along with the Collateral (as
defined in the Security Agreement) is equal to at least 150% of the
Obligations.
(d)
The Company shall at all times maintain its books of account and
records relating to the Intellectual Property at its principal
place of business and its Intellectual Property at the locations
set forth on
Schedule A attached
hereto and may not relocate such books of account and records
unless it delivers to the Secured Party at least 30 days prior to
such relocation (i) written notice of such relocation and the new
location thereof (which must be within the United States) and
(ii) evidence that the necessary documents have been filed and
recorded and other steps have been taken to perfect the Security
Interest to create in favor of the Secured Party valid, perfected
and continuing first priority liens in the Intellectual Property to
the extent they can be perfected through such filings.
(e)
This Agreement creates in favor of the Secured Party a valid
security interest in the Intellectual Property securing the payment
and performance of the Obligations and, upon making the filings
required hereunder, a perfected first priority security interest in
such Intellectual Property to the extent that it can be perfected
through such filings.
(f)
Upon request of the Secured Party, the Company shall execute and
deliver any and all agreements, instruments, documents, and papers
as the Secured Party may request to evidence the Secured
Party’s security interest in the Intellectual Property and
the goodwill and general intangibles of the Company relating
thereto or represented thereby, and the Company hereby appoints 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 have been fully
satisfied and are paid in full.
(g)
The execution, delivery and performance of this Agreement does not
conflict with or cause a breach or default, or an event that with
or without the passage of time or notice, shall constitute a breach
or default, under any agreement to which the Company is a party or
by which the Company is bound. No consent (including, without
limitation, from stock holders or creditors of the Company) is
required for the Company to enter into and perform its obligations
hereunder.
(h)
The Company shall at all times maintain the liens and Security
Interest provided for hereunder as valid and perfected first
priority liens and security interests in the Intellectual Property
to the extent they can be perfected by filing in favor of the
Secured Party until this Agreement and the Security Interest
hereunder shall terminate pursuant to Section 11. The Company
hereby agrees to defend the same against any and all persons. The
Company shall safeguard and protect all Intellectual Property for
the account of the Secured Party. Without limiting the generality
of the foregoing, the Company shall pay all fees, taxes and other
amounts necessary to maintain the Intellectual Property and the
Security Interest hereunder, and the Company shall obtain and
furnish to the Secured Party from time to time, upon demand, such
releases and/or subordinations of claims and liens which may be
required to maintain the priority of the Security Interest
hereunder.
(i)
The Company will not transfer, pledge, hypothecate, encumber,
license (except for non-exclusive licenses granted by the Company
in the ordinary course of business), sell or otherwise dispose of
any of the Intellectual Property without the prior written consent
of the Secured Party.
(j)
The Company shall, within ten (10) days of obtaining knowledge
thereof, advise the Secured Party promptly, in sufficient detail,
of any substantial change in the Intellectual Property, and of the
occurrence of any event which would have a material adverse effect
on the value of the Intellectual Property or on the Secured
Party’s security interest therein.
(k)
The Company shall permit the Secured Party and its representatives
and agents to inspect the Intellectual Property at any time, and to
make copies of records pertaining to the Intellectual Property as
may be requested by the Secured Party from time to
time.
(l)
The Company will take all steps reasonably necessary to diligently
pursue and seek to preserve, enforce and collect any rights,
claims, causes of action and accounts receivable in respect of the
Intellectual Property.
(m)
The Company shall promptly notify the Secured Party in sufficient
detail upon becoming aware of any attachment, garnishment,
execution or other legal process levied against any Intellectual
Property and of any other information received by the Company that
may materially affect the value of the Intellectual Property, the
Security Interest or the rights and remedies of the Secured Party
hereunder.
(n)
All information heretofore, herein or hereafter supplied to the
Secured Party by or on behalf of the Company with respect to the
Intellectual Property is accurate and complete in all material
respects as of the date furnished.
(o)
Schedule A attached
hereto contains a list of all of the subsidiaries of
Company.
(p)
Schedule B attached
hereto includes all Licenses, and all Patents and Patent Licenses,
if any, owned by the Company in its own name as of the date
hereof.
Schedule B hereto
includes all Trademarks and Trademark Licenses, if any, owned by
the Company in its own name as of the date hereof.
Schedule B hereto
includes all Copyrights and Copyright Licenses, if any, owned by
the Company in its own name as of the date hereof.
Schedule B hereto
includes all Trade Secrets and Trade Secret Licenses, if any, owned
by the Company as of the date hereof. To the best of the
Company’s knowledge, each License, Patent, Trademark,
Copyright and Trade Secret is valid, subsisting, unexpired,
enforceable and has not been abandoned. Except as set forth
in
Schedule B ,
none of such Licenses, Patents, Trademarks, Copyrights and Trade
Secrets is the subject of any licensing or franchise agreement. To
the best of the Company’s knowledge, no holding, decision or
judgment has been rendered by any Governmental Body which would
limit, cancel or question the validity of any License, Patent,
Trademark, Copyright and Trade Secrets. No action or proceeding is
pending (i) seeking to limit, cancel or question the validity of
any License, Patent, Trademark, Copyright or Trade Secret, or (ii)
which, if adversely determined, would have a material adverse
effect on the value of any License, Patent, Trademark, Copyright or
Trade Secret. The Company has used and will continue to use for the
duration of this Agreement, proper statutory notice in connection
with its use of the Patents, Trademarks and Copyrights and
consistent standards of quality in products leased or sold under
the Patents, Trademarks and Copyrights.
(q)
With respect to any In
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