Exhibit 10.4
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT (“Agreement”) is made as of March 17, 2011, by and among UTAH MEDICAL PRODUCTS, INC., a Utah corporation (“Debtor”) and JPMORGAN CHASE BANK, N.A., a national banking association (“Secured Party”), in conjunction with that certain Security Agreement of approximate even date herewith between Debtor and Secured Party, as amended, modified, extended, or renewed from time to time (“Security Agreement”).
WHEREAS, Debtor and Secured Party, as lender, desire to enter into a security agreement in addition to the Security Agreement that pertains specifically to intellectual property and for recordation purposes at the PTO (as defined below);
NOW, THEREFORE, in consideration of the promises contained herein and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties hereto agree as follows:
1. Definitions. All capitalized terms used herein without definitions shall have the respective meanings provided therefor in the Security Agreement. All terms defined in the Utah Uniform Commercial Code, Utah Code Annotated Sections 70A-9a-101 et seq., and used herein shall have the same definitions herein as specified therein. However, if a term is defined in Article 9a of the Utah Uniform Commercial Code differently than in another Article of the Utah Uniform Commercial Code, the term has the meaning specified in Article 9a. In addition to the foregoing, the following terms as used herein (including, without limitation, in the Recitals to this Agreement) are defined as follows:
1.1 “Intellectual Property” means any and all intellectual property, including any and all rights thereto, owned by, or to the extent permissible licensed to, Debtor, including but not limited to, inventions, methods, know-how, designs, patent applications, patents, marks (whether registered or common law) including all goodwill, copyrights (whether registered or unregistered) and trade secrets, all the foregoing throughout the world.
1.2 “PTO” means the United States Patent and Trademark Office.
2. Grant of Security Interest. Debtor hereby grants to Secured Party, to secure the payment and performance in full of all of the Obligations, a security interest in and so pledges and assigns to Secured Party all of its Intellectual Property.
3. Supplement to Security Agreement. The provisions of this Agreement are supplemental to the provisions of the Security Agreement, and nothing contained in this Agreement shall derogate from any of the rights or remedies of Secured Party under the Security Agreement. For the avoidance of doubt, the rights and remedies of Secured Party with respect to the security interests granted herein are without prejudice to, and are in addition to those set forth in the Security Agreement.
4. Representations and Warranties. Debtor represents and warrants to Secured Party that a true and correct list of all of the existing Intellectual Property is set forth in Schedule A. Notwithstanding the foregoing, the non-inclusion of any intellectual property asset in Schedule A shall not in any way affect, invalidate or detract from Secured Party’s continuing security interest in all of the existing Intellectual Property.
5. Further Acts. On a continuing basis, Debtor shall make, execute, acknowledge and deliver, and file and record in the proper filing and recording places, all such instruments and documents, and take all such action as may be necessary or advisable or may be requested by Secured Party to carry out the intent and purposes of this Agreement, or for assuring, confirming or protecting the grant or perfection of the security interest granted or purported to be granted hereby, to ensure Debtor’s compliance with this Agreement or to enable Secured Party to exercise and enforce its rights and remedies hereunder with respect to the Intellectual Property, including any documents for filing with the PTO or any applicable state office. Secured Party may record this Agreement, an abstract thereof, or any other document describing Secured Party’s interest in the Intellectual Property with the PTO, at the expense of Debtor.
6. Authorization to Supplement. If Debtor shall obtain rights to any new Intellectual Property, the provisions of this Agreement shall automatically apply thereto. Debtor shall give prompt notice in writing to Secured Party with respect to any such new Intellectual Property. Without limiting Debtor’s obligations under this Section, Debtor authorizes Secured Party unilaterally to modify this Agreement by amending Schedule A to include any such new Intellectual Property. Notwithstanding the foregoing, no failure to so modify this Agreement or amend Schedule A shall in any way affect, invalidate or detract from Secured Party’s continuing security interest in all Intellectual Property, whether or not listed on Schedule A.
7. CHOICE OF LAW. THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF UTAH WITHOUT GIVING EFFECT TO CONFLICT OF LAWS PRINCIPLES. THE PARTIES AGREE THAT ALL ACTIONS OR PROCEEDINGS ARISING IN CONNECTION WITH THIS AGREEMENT AND THE OTHER LOAN DOCUMENTS MAY BE TRIED AND LITIGATED IN THE STATE AND FEDERAL COURTS LOCATED IN THE COUNTY OF SALT LAKE, STATE OF UTAH OR, IN ANY OTHER COURT IN WHICH A PARTY SHALL INITIATE LEGAL OR EQUITABLE PROCEEDINGS AND WHICH HAS SUBJECT MATTER JURISDICTION OVER THE MATTER IN CONTROVERSY. EACH OF DEBTOR AND SECURED PARTY WAIVES, TO THE EXTENT PERMITTED UNDER APPLICABLE LAW, ANY RIGHT EACH MAY HAVE TO ASSERT THE DOCTRINE OF FORUM NON CONVENIENS OR TO OBJECT TO VENUE TO THE EXTENT ANY PROCEEDING IS BROUGHT IN ANY STATE OR FEDERAL COURT LOCATED IN THE COUNTY OF SALT LAKE, STATE OF UTAH.
8. Miscellaneous. The headings of each section of this Agreement are for convenience only and shall not define or limit the provisions thereof. This Agreement and all rights and obligations hereunder shall be binding upon Debtor and its respective successors and assigns, and shall inure to the benefit of Secured Party and its successors and assigns. If any term of this Agreement shall be held to be invalid, illegal or unenforceable, the validity of all other terms hereof shall in no way be affected thereby, and this Agreement shall be construed and be enforceable as if such invalid, illegal or unenforceable term had not been included herein. Debtor acknowledges receipt of a copy of this Agreement. All notices required or permitted hereunder shall be made in the manner required or permitted by the Uniform Commercial Code and otherwise in accordance with the terms and at the addresses set forth in the Loan Agreement.
IN WITNESS WHEREOF, intending to be legally bound, Debtor has caused this Agreement to be duly executed as of the date first above written.
| UTAH MEDICAL PRODUCTS, INC. | ||
| a Utah corporation | ||
By: /s/ Paul O. Richins | ||
Name: Paul O. Richins | ||
Title: V.P. | ||
“Debtor” | ||
| JPMORGAN CHASE BANK, N.A. | ||
| a national banking association | ||
By: /s/ Lynn Goodale | ||
Name: Lynn Goodale | ||
Title: Senior Banker | ||
“Secured Party” |
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SCHEDULE A
TO INTELLECTUAL PROPERTY SECURITY AGREEMENT
Patents
| Patent | Patent | Issue |
| Description | Number | Date |
| MGM | 4,572,208 | 2/25/1986 |
| MGM Jr. Monitor | 4,619,269 | 10/28/1986 |
| Dispiro | des 266,695 | 10/26/1982 |
| Glove Leak Detector | 4,909,069 | 3/20/1990 |
| Delta-Flow Flush Device | 4,192,303 | 3/11/1980 |
| Delta-Flow Flush Device | 4,278,083 | 7/14/1981 |
| Delta-Flow Flush Device | 4,337,770 | 7/6/1982 |
| Disposa-Hood Neonatal Respiratory Hood | 4,407,280 | 10/4/1983 |
| Disposa-Hood Neonatal Respiratory Hood | des 273,612 | 4/24/1984 |
| Deltran DPT-BPM | 4,576,181 | 3/18/1986 |
| Veri-Cal | 4,610,256 | 9/9/1986 |
| Delta-Cal | 4,658,829 | 4/21/1987 |
| Delta-Plex | 4,949,723 | 8/21/1990 |
| PTCA | 5,004,472 | 4/2/1991 |
| PTCA | 5,009,662 | 4/23/1991 |
| PTCA | 5,021,046 | 6/4/1991 |
| Intran I - FM | 4,785,822 | 11/22/1988 |
| Combined IUP & FHR | 4,873,986 | 10/17/1989 |
| Intran II - FM | 4,966,161 | 10/30/1990 |
| FSE - FM | 5,046,965 | 9/10/1991 |
| Delta-Plex | 5,097,840 | 3/24/1992 |
| FeO2Sat – FM | 5,361,757 | 11/8/1994 |
| FeO2Sat - FM | 5,662,103 | 9/2/1997 |
| FeO2Sat - FM | 5,911,689 | 6/15/1999 |
| FeO2Sat - FM | s.n. 09/268,935 | |
| External Bubble Toco - FM | 5,195,536 | 3/23/1993 |
| Cordguard | 5,190,556 | 3/2/1993 |
| Cordguard I | 5,415,665 | 5/16/1995 |
| Cordguard I | 5,520,699 | 5/28/1996 |
| Cordguard II | 5,575,796 | 11/19/1996 |
| Finesse ESU w/ integral smoke evacuator | 5,160,334 | 11/3/1992 |
| Loop SAFE-T-GAUGE | 5,324,288 | 6/28/1994 |
| Knurled Rollerball | 5,395,363 | 3/7/1995 |
| Carbazine Dye for pH | 5,567,624 | 10/22/1996 |
| Lumin Uterine Manipulator | 5,645,561 | 7/8/1997 |
| ABC Blood Sampling System Reservoir | 5,759,160 | 6/2/1998 |
| ABC Blood Sampling System Reservoir | 6,159,164 | 12/12/2000 |
| Intran 500 Meconium Detection System | 5,713,351 | 2/3/1998 |
| Epitome Ceramic Blade Electrode | 6,126,656 | 10/3/2000 |
| Epitome Bendable Ceramic Blade Electrode | 5,860,976 | 1/19/1999 |
| LETZ Aspiration/Coag/Irrigation Electrode | s.n. 09/162,500 | |
| LETZ Contoured Loop Conization Electrode | 5,951,550 | 9/14/1999 |
| Liberty Plus | 6,086,549 | 7/11/2000 |
| EndoCurette | 5,807,282 | 9/15/1998 |
| Fluid Trap Filter for Vacuum Assisted Delivery Hand Pump | 4,957,629 | 9/18/1990 |
| Soft Vacuum Assisted Delivery Cup | 5,224,947 | 7/6/1993 |
| Soft Vacuum Assisted Delivery Cup | des 320,855 | 10/15/1991 |
| Vacuum Assisted Delivery Hand Pump | 5,277,557 | 1/11/1994 |
| Vacuum Assisted Delivery Hand Pump | des 321,927 | 11/26/1991 |
| AROM-COT Digital Amniotome w/ directional indicator | 6,027,511 | 2/22/2000 |
| Hemo-Nate Micro-Filtration Blood Filter | 4,453,927 | 6/12/1984 |
| Pala-Nate Neonatal Palate Protector | 5,195,513 | 3/23/1993 |
| TVUS/HSG-Cath | s.n. 11/870,491 | |
| OptiSpec Gynecology Light | 7,631,981 | 12/15/2009 |
| Nutri-Lok | s.n. 11/608,573 | |
| Nutri-Lok | s.n. 11/970,894 | |
| Nutri-Lok | des 29/305,248 | |
| BT-Cath | s.n. 12/207,578 | |
| Epitome Patent – Europe | 0880342 | |
| Heated Wire Epitome | s.n. 08/804,208 |
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Trademarks
| Reg. | |||
| Trademark | Serial # | Reg. # | Date |
| AROM-COT ® | 75-525596 | 2278017 | 9/14/99 |
| BT-CATH ® | 76-693715 | 3629206 | 6/2/09 |
BUBBLE TOCO TM | 74-372854 | 1849173 | 8/9/94 |
CMI TM | 75-327101 | 2210508 | 12/15/98 |
CORDGUARD TM | 74-378898 | 1909886 | 8/8/95 |
DELTA-CAL TM | |||
DELTA-FLOW TM | |||
| DELTRAN ® | 74-491516 | 1879646 | 2/21/95 |
| DIALY-NATE ® | 75-492730 | 2576950 | 6/11/02 |
DISPOSA-HOOD TM | |||
| ENDOCURETTE ® | 76-167841 | 2673892 | 1/14/03 |
| EPITOME ® | 75-151472 | 2077593 | 7/8/97 |
FILTRESSE TM | 74-706215 | 2031185 | 1/14/97 |
| FINESSE ® | 74-181220 | 1775806 | 6/8/93 |
FLEX CUP TM | |||
| LETZ ® | 74-173056 | 1775804 | 6/8/93 |
| LIBERTY ® | 75-071029 | 2060901 | 5/13/97 |
LUMIN TM | 75-071008 | 2071431 | 6/17/97 |
MUC-X TM | |||
| MYELO-NATE ® | 75-492726 | 2590142 | 7/9/02 |
| NUTRI-CATH ® | 75-492729 | 2277697 | 9/14/99 |
| NUTRI-LOK ® | 76-663534 | 3294526 | 9/18/07 |
OPTIMICRO TM | |||
| OPTISPEC ® | 76-682937 | 3518749 | 10/21/08 |
| PALA-NATE ® | 74-713788 | 2186181 | 9/1/98 |
| PARAGRAPH ® | 74-181219 | 1730292 | 11/3/92 |
PATHFINDER PLUS TM | |||
| PICC-NATE ® | 76-265687 | 2575945 | 6/4/02 |
| SAFE-T-GAUGE ® | 74-235835 | 1773536 | 5/25/93 |
SECURE CUP TM | 75-723368 | ||
SNAP-TAB TM | |||
SOFT TOUCH TM | |||
Stork Design TM | |||
| TENDER TOUCH ® | 74-143209 | 1841265 | 6/21/94 |
| THORA-CATH ® | 76-016454 | 2495841 | 10/9/01 |
TVUS/HSG-CATH TM | |||
UMBILI-CATH TM | |||
URI-CATH TM | 76-015576 | ||
| UTAHBALL ® | 76-167842 | 2613576 | 8/27/02 |
| UTAHBALL ® | 76-696498 | 3697380 | 10/20/09 |
| UTAHLOOP ® | 76-167840 | 2687578 | 3/11/03 |
| UTAHLOOP ® | 76-696534 | 3697381 | 10/20/09 |
VAC-U-NATE TM | |||
VELVET TOUCH TM | |||
VERI-CAL TM | |||
ZAPGUARD TM | |||
CLEAR-FLOW TM | 73-320359 | 1219532 | 12/7/82 |
DISPIRO TM | 73-419541 | 1280628 | 6/5/84 |
GESCO TM | 73-320411 | 1229501 | 3/8/83 |
| HEMO-NATE ® | 73-320271 | 1229499 | 3/8/83 |
| HEMO-TAP ® | 73-320360 | 1221539 | 12/28/82 |
| INTRAN ® | 73-678290 | 1499413 | 8/9/88 |
| UTAH MEDICAL PRODUCTS INC. UM ® | 73-416682 | 1285922 | 7/17/84 |
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