Exhibit 10.6
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT dated as of March 13, 2009 (this “IP Security Agreement”), is made by and amongIGI LABORATORIES, INC., a Delaware corporation (“IGI”),IMMUNOGENETICS, INC., a Delaware corporation (“Subsidiary”, each of IGI and Subsidiary, a “Grantor” and collectively, the “Grantors”), and the secured parties listed on the signature pages hereto (each, a “Secured Party”and, collectively, the “Secured Parties”).
RECITALS
A.
Each Secured Party has agreed to make certain advances of money and to extend certain financial accommodation to Grantors (collectively, the “Loans”) as evidenced by those certain Secured Convertible Promissory Notes executed by IGI in favor of each Secured Party (each, a “Note”and, collectively, the “Notes”) issued under that certain Purchase Agreement, dated as of March 13, 2009, by and among IGI and the Secured Parties (the “Purchase Agreement”).
B.
The Secured Parties are willing to make the Loans to Grantors, but only upon the condition precedent, among others, that Grantors shall have executed and delivered to the Secured Parties this IP Security Agreement providing for the grant to the Secured Party of a security interest in all of the Intellectual Property Collateral (as defined below) of the Grantors to secure all of the Secured Obligations (as defined in the Security Agreement) under the Purchase Agreement, the Notes, the Security Agreement dated as of March 13, 2009, by and among Grantors and the Secured Parties (the “Security Agreement”) this IP Security Agreement the any other mortgages, pledges, or other collateral documents, and any amendment, amendment and restatement, modification or supplement to any of the foregoing.
C.
The Grantors have agreed to provide the Secured Parties a general security interest in Collateral (as this term is defined in the Security Agreement) and to enter into this IP Security Agreement in addition to, and not in limitation of, the Security Agreement for the purpose of creating, recording, and perfecting the security interest of the Secured Parties in the Intellectual Property Collateral with the United States Patent and Trademarks Office.
AGREEMENT
NOW, THEREFORE, in order to induce the Secured Parties to make the Loans and for other good and valuable consideration, the receipt and adequacy of which are hereby acknowledged, and intending to be legally bound, each Grantor hereby represents, warrants, covenants and agrees as follows:
1.
DEFINED TERMS.Unless otherwise defined or specified herein, terms used in this IP Security Agreement have the meanings provided in the Security Agreement.
2.
GRANT OF SECURITY INTEREST.As collateral security for the full, prompt, complete and final payment and performance when due (whether at stated maturity, by
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acceleration or otherwise) of all the Secured Obligations and in order to induce the Secured Parties to cause the Loans to be made, each Grantor hereby assigns, conveys, mortgages, pledges, hypothecates and transfers to the Secured Parties, and hereby grants to the Secured Parties, a security interest in all of such Grantor’s right, title and interest in, to and under the following, whether now owned or hereafter acquired, (all of which being collectively referred to herein as the “Intellectual Property Collateral”):
(a)
all of the following in which a Grantor now holds or hereafter acquires any interest: (i) all letters patent of the United States or any other country, all registrations and recordings thereof and all applications for letters patent of the United States or any other country, including, without limitation, registrations, recordings and applications 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; (ii) all reissues, divisions, continuations, renewals, continuations-in-part or extensions thereof; (iii) all petty patents, divisionals and patents of addition; (iv) all patents to issue in any such applications; (v) income, royalties, damages, claims and payments now and hereafter due and/or payable with respect to patents, including, without limitation, damages, claims and recoveries for past, present or future infringement; and (vi) rights to sue for past, present and future infringements of any patent, including without limitation with respect to each of the foregoing clauses (i) through (vi), those patents and patent applications listed inSchedule A attached hereto and made a part hereof;
(b)
all of the following in which a Grantor now holds or hereafter acquires any interest: (i) any trademarks, tradenames, corporate names, company names, business names, trade styles, service marks, logos, other source or business identifiers, prints and labels on which any of the foregoing have appeared or appear, designs and general intangibles of like nature, now existing or hereafter adopted or acquired, all registrations and recordings thereof and any applications in connection therewith, including, without limitation, registrations, recordings and applications 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 (collectively, the “Marks”); (ii) any reissues, extensions or renewals thereof; (iii) the goodwill of the business symbolized by or associated with the Marks; (iv) inco me, royalties, damages, claims and payments now and hereafter due and/or payable with respect to the Marks, including, without limitation, damages, claims and recoveries for past, present or future infringement; and (v) rights to sue for past, present and future infringements of the Marks, including without limitation with respect to each of the foregoing clauses (i) through (v), those trademarks, servicemarks and applications listed inSchedule B attached hereto and made a part hereof;
(c)
all licenses of rights or interests, whether in-bound or out-bound, whether in written or electronic form, now or hereafter owned or acquired or received by a Grantor or in which a Grantor now holds or hereafter acquires or receives any right or interest, including any renewals or extensions of any of the foregoing thereof; and
(d)
To the extent not otherwise included, all Proceeds of each of the foregoing and all accessions to, substitutions and replacements for and rents, profits and products of each of the foregoing.
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Notwithstanding the foregoing provisions of thisSection 2, the grant, assignment and transfer of a security interest as provided herein shall not extend to, and the term “Intellectual Property Collateral”shall not include “intent-to-use” trademarks at all times prior to the first use thereof, whether by the actual use thereof in commerce, the recording of a statement of use with the United States Patent and Trademark Office or otherwise.
3.
SECURITY AGREEMENT. This IP Security Agreement has been executed and delivered by the Grantors for the purpose of recording the security interest of the Secured Parties in the Intellectual Property Collateral with the United States Patent and Trademark Office, to the extent it may be so registered therein. The security interest granted hereby has been granted as a supplement to, and not in limitation of, the security interest granted to the Secured Parties under the Security Agreement. The Security Agreement (and all rights and remedies of the Secured Parties thereunder) shall remain in full force and effect in accordance with its terms.
4.
RELEASE OF SECURITY INTEREST. Upon payment in full of all Secured Obligations, the Secured Parties shall, at IGI’s expense, execute and deliver to the Grantors all instruments and other documents as may be necessary or proper to release the lien on any security interest in the Intellectual Property Collateral which has been granted hereunder.
5.
ACKNOWLEDGEMENT. The Grantors do hereby further acknowledge and affirm that the rights and remedies of the Secured Parties with respect to the security interest in the Intellectual Property Collateral granted hereby are more fully set forth in the Security Agreement, the terms and provisions of which (including the remedies provided for therein) are incorporated by references herein as if fully set forth herein.
6.
PURCHASE AGREEMENT. Notwithstanding any other term or provision hereof, in the event that any provisions hereof contradict and are incapable of being construed in conjunction with the provisions of the Purchase Agreement or the Security Agreement, the provisions of the Purchase Agreement shall take precedence over those contained herein and, in particular, if any act of the Company is expressly permitted under the Purchase Agreement or Security Agreement but is permitted hereunder and any encumbrance expressly permitted under the Purchase Agreement or Security Agreement to exist or to remain outstanding shall be permitted hereunder and thereunder.
7.
COUNTERPARTS. This IP Security Agreement may be executed in two or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument.
8.
GOVERNING LAW. This IP Security Agreement shall be governed by, and construed and enforced in accordance with, the laws of the State of Delaware applicable to contracts made and performed in such state, without regard to the principles thereof regarding conflict of laws, except to the extent that the UCC provides for the application of the law of a different jurisdiction.
[Signature pages follow]
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IN WITNESS WHEREOF, each of the parties hereto has caused this IP Security Agreement to be executed and delivered by its duly authorized officer on the date first set forth above.
| | | | |
GRANTORS: | | |
IGI LABORATORIES, INC., as Grantor | | ADDRESS: |
| | | 105 Lincoln Avenue |
By: | /s/ Rajiv Mathur | | Buena, New Jersey 08310 |
Printed Name: | Rajiv Mathur | | |
Title: | President & CEO | | TAXPAYER IDENTIFICATION NUMBER |
| | | 01-0355758 |
| | |
| | JURISDICTION OF ORGANIZATION:
DELAWARE |
| | |
IMMUNOGENETICS, INC., as Grantor | | ADDRESS: |
| | | 105 Lincoln Avenue |
By: | /s/ Rajiv Mathur | | Buena, New Jersey 08310 |
Printed Name: | Rajiv Mathur | | |
Title: | President & CEO | | TAXPAYER IDENTIFICATION NUMBER |
| | 52-1521639 |
| | |
| | JURISDICTION OF ORGANIZATION:
DELAWARE |
ACCEPTED AND ACKNOWLEDGED
BY: | | |
LIFE SCIENCES OPPORTUNITIES
FUND II, L.P., as Secured Party | | LIFE SCIENCES OPPORTUNITIES FUND
(INSTITUTIONAL) II, L.P., as Secured Party |
By: Signet Healthcare Partners, G.P., its
General Partner | | By: Signet Healthcare Partners, G.P., its
General Partner |
By: | /s/ James C. Gale | | By: | /s/ James C. Gale |
Printed Name: | James C. Gale | | Printed Name: | James C. Gale |
Title: | Managing Partner | | Title: | Managing Partner |
[Signature Page to the IP Security Agreement]
Schedule A
Patents
| | | | |
Application
Date or
First Claimed | U.S. Patent No. | Inventor(s) | Title | Issue Date |
March 13, 1987 | 5,104,736 | WALLACH | REINFORCED
PAUCILAMELLAR LIPID
VESICLES | April 14, 1992 |
March 13, 1987 | 5,147,723 | WALLACH | PAUCILAMELLAR LIPID
VESICLES | September 15,
1992 |
March 3, 1988 | 5,160,669 | WALLACH ET
AL. | METHOD OF MAKING OIL
FILLED PAUCILAMELLAR
LIPID VESICLES | November 3, 1992 |
March 13, 1987 | 5,234,767 | WALLACH | HYBRID PAUCILAMELLAR
LIPID VESICLES | August 10, 1993 |
March 28, 1991 | 5,256,422 | ALBERT ET
AL. | LIPID VESICLE CONTAINING
WATER-IN-OIL EMULSIONS | October 26, 1993 |
September 17,
1991 | 5,260,065 | MATHUR ET
AL. | BLENDED LIPID VESICLES | November 9, 1993 |
November 8,
l993 | 5,405,615 | MATHUR | SUCROSE DISTEARATE LIPID
VESICLES | April 11, l995 |
November 8,
l993 | 5,439,967 | MATHUR | PROPYLENE GLYCOL
STEARATE VESICLES | August 8, l995 |
February 3, l994 | 5,474,848 | WALLACH | PAUCILAMELLAR LIPID
VESICLES | December 12,
l995 |
November 7,
1994 | 5,510,117 | ABATE | ENTRAPMENT VEHICLE AND
METHOD | April 23, 1996 |
May 31, l995 | 5,628,936 | WALLACH | HYBRID PAUCILAMELLAR
LIPID VESICLES | May 13, l997 |
September 17,
1991 | 5,643,600 | MATHUR | LIPID VESICLES CONTAINING
AVOCADO OIL
UNSAPONIFIABLES | July 1, 1997 |
April 11, 1997 | 5,756,014 | MATHUR | HEAT RESISTANT LIPID
VESICLES | May 26, 1998 |
October 2, 1998 | 6,251,425 | MATHUR | GLUCOSIDE-PACILLAMELAR
VESICLES | June 26, 2001 |
June 10, 1999 | 6,087,393 | MATHUR | STABILIZED VITAMIN C
FORMULATIONS | July 11, 2000 |
September 15,
1999 | 6,309,664 B1 | MATHUR ET
AL. | METHODS, USES AND
COMPOSITIONS OF FLUID
PETROLATUM | October 30, 2001 |
May 15, 2000 | 6,211,231 B1 | MATHUR | STABILIZED VITAMIN C
FORMULATIONS | April 3, 2001 |
Sept. 25, 2003 | 7,205,006 | MATHUR,
LAWRENCE &
MILLS | MAHONIA AQUIFOLIUM
EXTRACT, EXTRACTION
PROCESS & PHARMACEUTICAL
COMPOSITION CONTAINING
THE SAME | April 17, 2007 |
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| | | | |
January 22, 2008 | 12/017,932 | MATHUR,
LAWRENCE &
LORENZO | LIPID DERIVED FROM OLIVE
OIL FATTY ACIDS | |
February 12,
1991 | 5,164,191 | TABIBI ET AL. | LIPID VESICLES HAVING AN
ALKYD AS A WALL-FORMING
MATERIAL | November 17,
1992 |
July 25, 1991 | 5,213,805 | WALLACH ET AL. | LIPID VESICLES HAVING N,N-
DIMETHYLAMIDE
DERIVATIVES AS THEIR
PRIMARY LIPID | May 25, 1993 |
March 3, 1988 | 5,219,538 | HENDERSON ET AL. | GAS AND OXYGEN CARRYING
LIPID VESICLES | June 15, 1993 |
March 9, 1989 | 5,234,915 | MATHUR ET AL. | BIODEGRADABLE GEL | August 10, 1993 |
December 2,
l992 | 5,490,985 | WALLACH ET AL. | EXTENDED DURATION
ANTACID PRODUCT | February 13, l996 |
December 23,
1996 | 5,776,536 | MATHUR, TREMBLAY | REDUCED FAT CHOCOLATE
AND METHOD OF
MANUFACTURE | July 7, 1998 |
May 20, l994 | 5,547,677 | WRIGHT | ANTIMICROBIAL OIL-IN-WATER
EMULSIONS | August 20, l996 |
October 13, l994 | 5,549,901 | WRIGHT | ANTIMICROBIAL OIL-IN-WATER
EMULSIONS | August 27, l996 |
June 24, l994 | 5,561,062 | VARANELLI ET AL. | METHOD OF INHIBITING
VIRAL REPRODUCTION USING
NON-PHOSPHOLIPID, PAUCIL
AMELLAR LIPOSOMES | October 1, l996 |
May 18, l995 | 5,618,840 | WRIGHT | ANTIBACTERIAL OIL-IN-WATER
EMULSIONS | April 8, l997 |
January 31, l995 | 5,629,021 | WRIGHT | MICELLAR NANOPARTICLES | May 13, l997 |
April 11, l995 | 5,665,380 | WALLACH ET AL. | LIPID VESICLE FUSION AS A
METHOD OF TRANSMITTING A
BIOLOGICALLY ACTIVE
MATERIAL TO A CELL | September 9, l997 |
June 7, 1995 | 5,730,989 | WRIGHT | ORAL VACCINE AGAINST GRAM
NEGATIVE BACTERIAL
INFECTION (AS AMENDED) | March 24, 1998 |
October 6, 1995 | 5,834,014 | WEINER ET AL. | STIMULATION OF HAIR
FOLLICES | November 10,
1998 |
| 6,034,073 | | | March 7, 2000 |
February 19,
1999 | 6,080,211 | MATHUR | LIPID VESICLE-BASED FUEL
ADDITIVES AND LIQUID
ENERGY SOURCES
CONTAINING SAME | June 27, 2000 |
June 26, 2000 | 6,371,998 B1 | MATHUR | LIPID VESICLE-BASED FUEL
ADDITIVES AND LIQUID
ENERGY SOURCES
CONTAINING SAME | April 16, 2002 |
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| | | | |
April 24, 1997 | 6,387,373 B1 | WRIGHT,
ET AL. | VACCINES CONTAINING
PAUCILLAMELLAR LIPID
VESICLES AS
IMMUNOLOGICAL ADJUVANTS | May 14, 2002 |
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Schedule B
Trademarks
| | | | |
Trademark | Filing Date | Case No. | Registration No. | Renewal Date |
Miaj | February 10, 2005 | IGW-0001DV | 3407385 | April 1, 2018 |
ZAP A SPOT,
United States | April 5, 1996 | IMH-0353 | 2047607 | March 25, 2017 |
ZAP A SPOT,
Canada | April 3, 1996 | IMH-0354 | TMA 508885 | March 5, 2014 |
ZAP A SPOT,
Mexico | April 17, 1996 | IMH-0355 | 524176 | April 17, 2016 |
ZAP A SPOT,
European
Community | October 2, 1996 | IMH-0362 | 366690 | October 2, 2016 |
APPLY & DRY,
United States | September 23, 1991 | NVR-0097 | 1827972 | March 29, 2014 |
Novasome, United
States | May 11, 1989 | IMH-0057 | 1710953 | September 1, 2012 |
Novasome, Spain | June 26, 1993 | NVR-0057ES | 1769163 | June 26, 2013 |
Novasome, France | July 28, 1993 | NVR-0057FR | 93478240 | July 27, 2013 |
Novasome,
Benelux | September 29, 1993 | NVR-0258 | 544156 | September 29, 2013 |
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