EXHIBIT 10.30
PATENT AND TRADEMARK
SECURITY AGREEMENT
THIS AGREEMENT is made on the 31st day of July, 1996, and entered into
between VEECO INSTRUMENTS INC., a Delaware corporation ("Veeco"), Sloan
Technology Corporation, a Delaware corporation ("Sloan" and, together with
Veeco, the "Debtors") FLEET BANK, N.A., a national banking association organized
under the laws of the United States of America ("Agent"), as collateral agent
for Fleet Bank, N.A., The Chase Manhattan Bank, and each other bank that may
hereafter become a "Bank" under the terms of the Credit Agreement referred to
below (collectively, "Secured Parties"). All capitalized terms used herein
without definition shall have the respective meanings ascribed thereto in the
Credit Agreement.
WHEREAS, Veeco and Secured Parties have entered into a Credit
Agreement dated as of the date hereof (as it may be hereafter amended,
supplemented or otherwise modified from time to time, being the "Credit
Agreement"; capitalized terms used herein and not defined herein shall have the
meanings given to them in the Credit Agreement) pursuant to which Secured
Parties may lend to Veeco the aggregate principal amounts set forth therein,
upon and subject to the terms and conditions thereof;
WHEREAS, Sloan has executed a Guarantee in favor of the Secured
Parties, dated the date hereof (the "Guarantee"), and each of the Debtors has
executed a Security Agreement in favor of Secured Parties, dated as of the date
hereof (the "Security Agreements");
WHEREAS, it is a condition precedent to the obligation of the Secured
Parties to extend credit to Veeco under the Credit Agreement that Debtors shall
execute and deliver this Agreement; and
WHEREAS, each of the Debtors wishes to grant security and assurance to
Secured Parties in order to secure the performance by Debtors of their
respective obligations under the Credit Agreement, the Guarantee and all
documents executed in connection therewith, including all interest due
thereunder ("Obligations"), and to that effect Debtors agree to grant to Secured
Parties a lien upon and security interest in certain patent and trademark rights
as more fully described herein.
NOW, THEREFORE, in consideration of the premises and in order to
induce the Secured Parties to extend credit to Veeco, Debtors agree with Secured
Parties as follows:
1. To secure the complete and timely satisfaction of all
Obligations, each of the Debtors hereby grants to Secured Parties a lien upon
and security interest in all of such Debtor's right, title and interest in and
to the patents and trademarks listed on Schedule A and Schedule B hereto,
respectively (as they may be amended pursuant hereto from time to time), all
proceeds thereof (including but not limited to license royalties and proceeds of
infringement suits thereon), the right to sue for past, present and future
infringements, all rights corresponding
thereto throughout the world, all reissues, divisions, continuations, renewals,
extensions and continuations-in-part thereof, and all applications for patents
and patents and all applications for trademarks and trademarks of Debtors
hereafter filed or acquired, together with all good will associated with any and
all of the foregoing and all proceeds of any and all of the foregoing
(collectively, the "Patents and Trademarks"). Each of the Debtors is granting
only a lien upon and security interest in its respective Patents and Trademarks
and, subject to such lien and security interest, each of the Debtors expressly
retains full title to and ownership of its respective Patents and Trademarks.
2. The Debtors hereby jointly and severally represent, warrant and
covenant that:
(a) The Patents and Trademarks are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part;
(b) To the best of Debtors' knowledge and belief after due
inquiry, each of the Patents and Trademarks is valid and enforceable and,
to the best of Debtors' knowledge, no material infringement or unauthorized
use is presently being made of any Patents and Trademarks;
(c) Each of the Debtors is the sole and exclusive owner of the
entire and unencumbered right, title and interest in and to each of its
respective Patents and Trademarks, free and clear of any liens, charges and
encumbrances, including, without limitation, pledges, assignments,
licenses, shop rights and covenants by Debtors not to sue third persons;
(d) Each of the Debtors has the unqualified right to enter into
this Agreement and perform its terms;
(e) Veeco's chief executive office is located at Terminal Drive,
Plainview, New York 11803 and Sloan's chief executive office is located at
602 East Montecito Street, Santa Barbara, California 93103; and
(f) Each of the Debtors has used, and will continue to use for
the duration of this Agreement, consistent standards of quality, consistent
with its past practices, in its manufacture of products sold under the
Patents and Trademarks.
3. Each of the Debtors agrees that, until all of the Obligations
shall have been satisfied in full, it will not enter into any agreement which is
inconsistent with such Debtor's obligations under this Agreement, without
Agent's prior written consent.
4. If, before the Obligations shall have been satisfied in full
Debtors shall obtain rights to any new patentable inventions, or become entitled
to the benefit of any patent or trademark application or patent or trademark for
any reissue, division, continuation, renewal, extension, or continuation-in-part
of any patent or trademark or any improvement on the Patents
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and Trademarks, the Debtors shall give to the Agent prompt notice thereof in
writing. Notwithstanding the foregoing, no provision of this Section 4 shall
obligate the Debtors to obtain patents or trademarks with respect to any such
rights or applications.
5. Debtors authorize Secured Parties to modify this Agreement by
amending Schedule A and Schedule B hereto to include any future patents and
patent applications and trademarks and trademark applications which are Patents
and Trademarks under paragraph 1 or paragraph 4 hereof.
6. If any Event of Default shall have occurred and be continuing,
Secured Parties shall have, in addition to all other rights and remedies given
them by this Agreement or the Security Agreement, those rights and remedies
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in any jurisdiction in which the Patents and
Trademarks may be located and, without limiting the generality of the foregoing,
the Secured Parties may immediately, upon 10 days' prior written notice during
which time, for purposes of this Agreement only, Debtors shall have an
opportunity to cure such Event of Default, sell at public or private sale or
otherwise realize upon, the whole or from time to time any part of the Patents
and Trademarks, or any interest which Debtors may have therein, and after
deducting from the proceeds of sale or other disposition of the Patents and
Trademarks all expenses (including all reasonable expenses for brokers' fees and
legal services), shall apply the residue of such proceeds toward the payment of
the Obligations. Any remainder of the proceeds after payment in full of the
Obligations shall be paid over to the Debtors.
7. If any Event of Default shall have occurred and be continuing,
each of the Debtors hereby authorizes and empowers Secured Parties to make,
constitute and appoint any officer or agent of Secured Parties, as Secured
Parties may select in their exclusive discretion, as such Debtors' true and
lawful attorney-in-fact, with the power to endorse such Debtors' name on all
applications, documents, papers and instruments necessary for Secured Parties to
use the Patents and Trademarks, or to grant or issue any exclusive or
nonexclusive license under the Patents and Trademarks to any third person. Each
of the Debtors hereby ratifies all that such attorney shall lawfully do or cause
to be done by virtue hereof. This power of attorney shall be irrevocable for
the life of this Agreement.
8. Any and all fees, costs and expenses, of whatever kind or nature,
including the reasonable attorneys' fees and disbursements incurred by Secured
Parties in connection with the preparation of this Agreement and all other
documents relating hereto and the consummation of this transaction, the filing
or recording of any documents (including all taxes in connection therewith) in
public offices, the payment or discharge of any taxes, counsel fees, maintenance
fees, encumbrances or otherwise protecting, maintaining or preserving the
Patents and Trademarks, or in defending or prosecuting any actions or
proceedings arising out of or related to the Patents and Trademarks, shall be
borne and paid by Debtors on demand by Secured Parties.
9. Each of the Debtors shall have the duty, until the Obligations
are paid in full to file and prosecute any and all continuations, continuations-
in-part, applications for reissue, applications for certificate of correction
and like matters, and to preserve and maintain all rights
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in the Patents and Trademarks, including, without limitation, the payment of all
maintenance fees when due. Any expenses incurred in connection with the
foregoing shall be borne by Debtors. The Debtors shall not abandon any Patent
or Trademark, without the consent of Agent other than in the ordinary course of
their business if they determine that such Patent or Trademark is no longer
useful in the conduct of their business; provided, however, that under no
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circumstances shall the Debtors abandon any Patent or Trademark listed on
Schedule A or B hereto, as such Schedules may be amended or supplemented from
time to time, without the prior written consent of the Agent. The Debtors agree
that the Secured Parties shall have the right from time to time to include
additional Patents or Trademarks on Schedules A and B hereto if, after
consultation with the Debtors, the Secured Parties determine that such Patents
or Trademarks are particularly important to the conduct of the Debtor's
business.
10. Debtors shall use all reasonable efforts to detect any infringers
of rights described herein and shall advise Agent in writing of any material
infringements detected. Secured Parties shall have the right to bring suit in
their name, and to join Debtors, if necessary, as a party to such suit, to
enforce the Patents and Trademarks and any licenses thereunder. Debtors shall
promptly, upon demand, and without duplication of amounts required to be paid
pursuant to Section 8 hereof, reimburse and indemnify Secured Parties for all
damages, costs and expenses, including reasonably attorneys' fees and
disbursements, incurred by Secured Parties pursuant to this paragraph 10.
Notwithstanding the foregoing, Secured Parties shall have no duties with respect
to the Patents and Trademarks, other than the duties expressly set forth herein,
and, without limiting the generality of the foregoing, shall have no duty to
prosecute any action for patent or trademark infringement.
11. Each of the Debtors hereby grants to Secured Parties and their
employees and agents the right to visit such Debtors' plants and facilities
which manufacture, inspect or store products sold under any of the trademarks
included in the Patents and Trademarks, and to inspect the products and quality
control records relating thereto at reasonable times during regular business
hours. Debtors shall do any and all acts required by Secured Parties to ensure
Debtors' compliance with paragraph 2(f) hereof. Secured Parties agree to comply
in all respects with applicable governmental regulations in connection herewith.
12. All of Secured Parties' rights and remedies with respect to the
Patents and Trademarks, whether established hereby or by the Security Agreement,
or by any other agreements or by law shall be cumulative and may be exercised
singularly or concurrently.
13. The provisions of this Agreement 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 clause
or provision of this Agreement in any jurisdiction.
14. No course of dealing between Debtors and Secured Parties, nor any
failure to exercise, nor any delay in exercising, on the part of Secured
Parties, any right, power or privilege hereunder or under the Security Agreement
shall operate as a waiver thereof; nor shall
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any single or partial exercise of any right, power or privilege hereunder or
thereunder preclude any other or further exercise thereof or the exercise of any
other right, power or privilege.
15. This Agreement is subject to modification only by a writing
signed by the parties, except as provided in paragraph 5.
16. The benefits and burdens of this Agreement shall inure to the
benefit of and be binding upon the respective successors and permitted assigns
of the parties.
17. The validity and interpretation of this Agreement and the rights
and obligations of the parties shall be governed by the laws of the State of New
York applicable to agreements made and to be wholly performed in the State of
New York.
18. Notwithstanding anything herein or in the Agreement, the Agent
and the Secured Parties agree that upon the payment in full of the Obligations
(other than Obligations, including, without limitation, indemnities, which are
intended to survive the payment of the Loans and/or termination of the
commitments) and termination of the Commitments, (1) this Agreement shall
automatically terminate and be of no force or effect,, (2) all liens created
hereunder shall terminate, (3) the Agent shall promptly deliver and/or transfer
to the Debtors any and all Collateral in the Agent's or its representative's
possession and (4) the Agent shall execute and deliver to the Debtors such
documents and instruments as the Debtor shall reasonable request in order to
evidence the foregoing.
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IN WITNESS WHEREOF, the execution hereof under seal as of the day and
year first above written.
VEECO INSTRUMENTS INC.
ATTEST-CORPORATE SEAL By: /s/ John F. Rein, Jr.
----------------------------
Name: John F. Rein, Jr.
_________________________ Title: Vice President
SLOAN TECHNOLOGY CORPORATION
ATTEST-CORPORATE SEAL By: /s/ John F. Rein, Jr.
----------------------------
Name: John F. Rein, Jr.
_________________________ Title: Vice President
ACCEPTED:
FLEET BANK, N.A.,
AS AGENT
By:/s/ William Ewing
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Name: William Ewing
Title: Vice President
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SCHEDULE A
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PATENTS
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Patent Issued Title
------ ------ -----
4,184,188 15-Jan-80 Substrate Clamping Technique in IC
Fabrication
4,245,189 13-Jan-81 Probe Assembly for Measuring Conductivity
of Plated Through Holes
4,343,092 10-Aug-82 Probe Guide and Holder
4,646,341 24-Feb-87 Calibration Standard for X-Ray Fluroscene
Thickness
4,669,300 2-Jun-87 Electromagnetic Stylus Force Adjustment
Mechanism
4,778,561 18-Oct-88 Electron Cyclotron Resonance Plasma
Source; Second Magnetic Source Enhances
Output Uniformity
4,833,402 23-May-89 Connector Assembly for a Circuit Board
Testing Machine and a Method of Testing a
Circuit Board by Means of a Circuit
4,949,783 21-Aug-90 Substrate Transport and Cooling Apparatus
and Method for Same
5,042,949 27-Aug-91 Non-Contact Surface Profiler
SCHEDULE B
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TRADEMARKS
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Mark Registration No. Registration Date
---- ---------------- -----------------
Niceldermf 1,198,538 June 22, 1982
UPA 1,161,735 July 21, 1981
UPA 1,036,686 March 30, 1976
Compuderm 1,049,434 October 5, 1976
Sputtergun 1,025,030 November 11, 1975
Veeco 796,722 September 28, 1965
Dermitron 698, 109 May 24, 1960
Veeco 619,030 January 10, 1956
Microetch 1,736,138 December 1, 1992
Dektak 1,860,766 November 1, 1994
CERTIFICATE OF ACKNOWLEDGMENT
-----------------------------
STATE OF NEW YORK )
) ss.:
COUNTY OF NASSAU )
Before me, the undersigned, a Notary Public in and for the county
aforesaid, on this 31st day of July, 1996, personally appeared John F. Rein,
Jr., to me known personally, and who, being by me duly sworn, deposes and says
that he is the Vice President of Veeco Instruments Inc., and that the seal
affixed to the foregoing instrument is the corporate seal of said corporation,
and that said instrument was signed and sealed on behalf of said corporation by
authority of its Board of Directors, and said John F. Rein, Jr. acknowledged
said instrument to be the free act and deed of said corporation.
/s/ Kathleen Verzi
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Notary Public
My commission expires:
CERTIFICATE OF ACKNOWLEDGMENT
-----------------------------
STATE OF NEW YORK )
) ss.:
COUNTY OF NASSAU )
Before me, the undersigned, a Notary Public in and for the county
aforesaid, on this 31st day of July, 1996, personally appeared John F. Rein,
Jr., to me known personally, and who, being by me duly sworn, deposes and says
that he is the Vice President of Sloan Technology Corporation, and that the seal
affixed to the foregoing instrument is the corporate seal of said corporation,
and that said instrument was signed and sealed on behalf of said corporation by
authority of its Board of Directors, and said John F. Rein, Jr. acknowledged
said instrument to be the free act and deed of said corporation.
/s/ Kathleen Verzi
------------------------------
Notary Public
My commission expires: