EXHIBIT 10.32
AMENDED AND RESTATED
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS AMENDED AND RESTATED INTELLECTUAL PROPERTY SECURITY AGREEMENT
(together with all amendments, if any, from time to time hereto, this
"Agreement"), dated as of June 28, 2000, is made by each of the grantors
signatory hereto and each additional party that becomes a grantor hereto
pursuant to Section 8 hereof (each, a "Grantor" and collectively, "Grantors"),
in favor of Commonwealth Associates, L.P., a New York limited partnership, in
its capacity as agent for the Purchasers ("Commonwealth" or the "Agent").
R E C I T A L S
A. Grantors and Commonwealth are parties to that certain Intellectual
Property Security Agreement dated as of June 15, 2000 (the "Existing
Intellectual Property Security Agreement"), pursuant to which Grantors granted
to the Agent (as hereinafter defined), on behalf of the Agent and the Initial
Purchasers (as hereinafter defined) certain security interest to secure the
payment and performance of the Secured Obligations (as hereinafter defined);
B. Grantors and Commonwealth desire to amend and restate the Existing
Intellectual Property Security Agreement to reflect the security interest in
favor of the Agent, on behalf of the Secondary Purchasers (as hereinafter
defined), and to restate the Existing Intellectual Property Security Agreement;
NOW, THEREFORE, in consideration of mutual promises herein and for
other good and valuable consideration, Grantors and Commonwealth agree that the
Existing Intellectual Property Security Agreement is hereby amended and restated
to read in full as follows:
W I T N E S S E T H:
WHEREAS, pursuant to that certain Placement Agency Agreement dated as
of June 7, 2000 by and among the Company and Commonwealth, Commonwealth agreed
to act as placement agent on behalf of the Company in connection with a private
placement of senior secured convertible securities of the Company (the
"Financing");
WHEREAS, pursuant to that certain Subscription Agreement dated as of
June 15, 2000 by and among ProxyMed, Inc., a Florida corporation ("Debtor") and
the persons signatory thereto from time to time as purchasers (the "Initial
Purchasers") (including all annexes, exhibits or schedules thereto, as from time
to time amended, restated, supplemented or otherwise modified, the "Initial
Subscription Agreement") and that certain Subscription Agreement dated as of
June 28, 2000 by and among Debtor and the persons signatory thereto from time to
time as purchasers (the "Secondary Purchasers" and, together with the Initial
Purchasers, the "Purchasers") (including all annexes, exhibits or schedules
thereto, as from time to time amended, restated, supplemented or otherwise
modified, the "Secondary Subscription Agreement" and, together with the Initial
Subscription Agreement, the "Subscription Agreement"), the Company issued and
sold to the Purchasers (i) those certain 7% senior secured convertible
promissory notes in the aggregate principal amount of $15,000,000 (herein, as at
any time amended, extended, restated, renewed or modified, the "Notes") which
amount may be increased by exercise of an overallotment option, first by an
additional $7,500,000 aggregate principal amount of the Notes at the option of
Commonwealth and then by an additional $7,500,000 aggregate principal amount of
the Notes at the option of the Company, and (ii) those certain warrants to
purchase a number of shares of common shares of the Company equal to 50% of the
number of shares of common stock issuable upon conversion of the Notes (herein,
as at any time amended, extended, restated, renewed or modified, the "Warrants")
and that certain Registration Rights Agreement as of the date hereof by and
among the Company and the Purchasers (herein, as at any time amended, extended,
restated, renewed or modified, the "Registration Rights Agreement" and together
with the Subscription Agreement, the Notes and the Warrants, the "Transaction
Documents"); and
WHEREAS, it is a condition to the willingness of the Purchasers and the
Agent to enter into the Subscription Agreement and to effect the Financing
evidencing thereby that the Debtor, Key Communications Service, Inc., an Indiana
corporation, and WPJ, Inc. d/b/a Integrated Medical Systems, a California
corporation, enter into this Agreement and grant to the Purchasers and Agent the
securities interests provided for herein;
NOW, THEREFORE, in consideration of the premises and mutual covenants
herein contained and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Grantors hereby agree as follows:
1. DEFINED TERMS.
(a) Unless otherwise defined herein, all capitalized terms used but not
otherwise defined herein have the meanings given to them in the Transaction
Documents, as indicated.
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(b) "Copyright License" shall mean any written agreement to which the
Debtor is a party now or in the future, in which the Debtor is granted license
rights in Copyrights or has granted license rights in its Copyrights.
"Copyrights" shall mean all of the following now owned or hereafter
acquired by the Debtor: (a) all copyrights (whether registered or unregistered),
now existing or hereafter adopted or acquired, all registrations thereof, and
all applications in connection therewith, of the United States, or any other
country, and (b) all extensions or renewals thereof.
"Patent License" shall mean any written agreement to which the Debtor
is a party, now or in the future, in which the Debtor is granted license rights
in Patents or has granted license rights in its Patents.
"Patents" shall mean all of the following in which the Debtor now holds
or hereafter acquires any interest: (a) all letters patent of the United States
or any other country and all applications for letters patent of the United
States or any other country, and (b) all reissues, continuations, divisionals,
continuations-in-part or extensions thereof.
"Secured Obligations" means, collectively, (i) in the case of Debtor,
all of its Obligations under the Notes, the Subscription Agreement or the
Registration Rights Agreement.
"Trademark License" shall mean rights under any written agreement to
which the Debtor is a party, now or in the future, in which the Debtor is
granted license rights in Trademarks or has granted license rights in its
Trademarks.
"Trademarks" shall mean all of the following now owned or hereafter
acquired by the Debtor: (a) all trademarks, trade names, corporate 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 and designs (whether registered or unregistered), now owned or existing
or hereafter adopted or acquired, all registrations and recordings thereof, and
all applications in connection therewith, including registrations, recordings
and applications in the United States Patent and Trademark Office, any state or
territory thereof, or any other country or any political subdivision thereof;
(b) all renewals thereof; and (c) all goodwill associated with or symbolized by
any of the foregoing.
"Termination Date" shall mean the date on which all the Notes have been
paid in full or converted into common stock or preferred stock of the Company.
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2. GRANT OF SECURITY INTEREST IN INTELLECTUAL PROPERTY COLLATERAL. To
secure the complete and timely payment of all the Secured Obligations of
Grantors now or hereafter existing from time to time, each Grantor hereby
pledges and grants to Agent, on behalf of Agent and Purchasers, a continuing
security interest in all of such Grantor's right, title and interest in, to and
under the following, whether presently existing or hereafter created or acquired
(collectively, the "Intellectual Property Collateral"):
(a) all of its Patents and the proceeds from any Patent
Licenses to which it is a party including those referred to on Schedule
I hereto;
(b) all of its Trademarks and the proceeds from any Trademark
Licenses to which it is a party including those referred to on Schedule
II hereto;
(c) all of its Copyrights and the proceeds from any Copyright
Licenses to which it is a party including those referred to on Schedule
III hereto;
(d) all reissues, continuations or extensions of the
foregoing;
(e) all goodwill of the business connected with the use of,
and symbolized by, each Trademark; and
(f) all products and proceeds of the foregoing, including,
without limitation, any claim by Grantor against third parties for
past, present or future (i) infringement of any Patent or Patent
licensed under any Patent License, (ii) infringement or dilution of any
Trademark or Trademark licensed under any Trademark License, (iii)
injury to the goodwill associated with any Trademark or any Trademark
licensed under any Trademark License, and (iv) infringement of any
Copyright or Copyright licensed under any Copyright License.
3. REPRESENTATIONS AND WARRANTIES. Each Grantor jointly and severally
represents and warrants that such Grantor does not have any interest in, or
title to, any Patent, Trademark or Copyright except as set forth in Schedule I,
Schedule II and Schedule III, respectively, hereto. This Agreement is effective
to create a valid and continuing Lien on and, upon the filing hereof with the
United States Patent and Trademark Office and the United States Copyright
Office, perfected security interests in favor of Agent in all of Grantors'
Patents, Trademarks and Copyrights.
4. COVENANTS. Each Grantor jointly and severally covenants and agrees
with Agent, on behalf of Agent and Purchasers, that from and after the date of
this Agreement and until the Termination Date:
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(a) Each Grantor shall notify Agent immediately if it knows or
has reason to know that any application or registration relating to any
Patent, Trademark or Copyright (now or hereafter existing) may become
abandoned or dedicated to the public, or of any adverse determination
or development (including the institution of, or any such determination
or development in, any proceeding in the United States Patent and
Trademark Office, the United States Copyright Office or any court)
regarding such Grantor's ownership of any Patent, Trademark or
Copyright, its right to register the same, or to keep and maintain the
same.
(b) In no event shall any Grantor, either directly or through
any agent, employee, licensee or designee, file an application for
letter patents or the registration of any trademark or copyright with
the United States Patent and Trademark Office, the United States
Copyright Office or any similar office or agency without giving
Purchasers prior written notice thereof, and, upon request of
Purchasers, such Grantor shall execute and deliver a supplement hereto
(in form and substance satisfactory to Lender) to evidence Purchasers'
Lien on such Patent, Trademark or Copyright, and the General
Intangibles of such Grantor relating thereto or represented thereby.
(c) Each Grantor shall take all actions necessary or requested
by Purchasers to maintain and pursue each application, to obtain the
relevant registration and to maintain the registration of each of the
Patents or Trademarks (now or hereafter existing), including the filing
of applications for renewal and affidavits of use, affidavits of
incontestability.
(d) In the event that any of the Intellectual Property
Collateral is infringed upon, or misappropriated or diluted by a third
party, each Grantor shall notify Agent promptly after such Grantor
learns thereof. Each Grantor shall, unless it shall reasonably
determine that such Intellectual Property Collateral would not have a
materially adverse effect on the conduct of its business or operations,
promptly sue for infringement, misappropriation or dilution and if
permitted under the circumstances to recover any and all damages for
such infringement, misappropriation or dilution, and shall take such
other actions as Agent shall deem to be reasonably appropriate under
the circumstances to protect such Intellectual Property Collateral.
5. SECURITY AGREEMENT. The security interests granted pursuant to this
Agreement are granted in conjunction with the security interests granted to
Agent pursuant to the Security Agreement. Each Grantor hereby acknowledges and
affirms that the rights and remedies of Agent with respect to the security
interest in the Intellectual Property Collateral made and granted hereby are
more fully set forth in the Security Agreement, the terms and provisions of
which are incorporated by reference herein as if fully set forth herein.
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6. REINSTATEMENT. This Agreement shall remain in full force and effect
and continue to be effective should any petition be filed by or against any
Grantor for liquidation or reorganization, should any Grantor become insolvent
or make an assignment for the benefit of any creditor or creditors or should a
receiver or trustee be appointed for all or any significant part of any
Grantor's assets, and shall continue to be effective or be reinstated, as the
case may be, if at any time payment and performance of the Secured Obligations,
or any part thereof, is, pursuant to applicable law, rescinded or reduced in
amount, or must otherwise be restored or returned by any obligee of the Secured
Obligations, whether as a "voidable preference," "fraudulent conveyance," or
otherwise, all as though such payment or performance had not been made. In the
event that any payment, or any part thereof, is rescinded, reduced, restored or
returned, the Secured Obligations shall be reinstated and deemed reduced only by
such amount paid and not so rescinded, reduced, restored or returned.
7. NOTICES. Whenever it is provided herein that any notice, demand,
request, consent, approval, declaration or other communication shall or may be
given to or served upon any of the parties by any other party, or whenever any
of the parties desires to give and serve upon any other party any communication
with respect to this Agreement, each such notice, demand, request, consent,
approval, declaration or other communication shall be in writing and shall be
given in the manner, and deemed received, as provided for in the Transaction
Documents.
8. ADDITIONAL GRANTORS. The initial Grantors hereunder shall be the
Debtor and those Affiliates of Debtor as are signatories hereto on the date
hereof. From time to time subsequent to the date hereof, additional direct and
indirect subsidiaries of Borrower may become parties hereto, as additional
Grantors (each, an "Additional Grantor"), by executing a counterpart of this
Agreement substantially in the form of Exhibit A attached hereto. Upon delivery
of any such counterpart to Agent, notice of which is hereby waived by the
Grantors, each Additional Grantor shall be a Grantor and shall be as fully a
party hereto as if such Additional Grantor were an original signatory hereto.
Each Grantor expressly agrees that its obligations arising hereunder shall not
be affected or diminished by the addition or release of any other Grantor
hereunder nor by any election of Agent not to cause any subsidiary of Debtor to
become an Additional Grantor hereunder. This Agreement shall be fully effective
as to any Grantor that is or becomes a party hereto regardless of whether any
other Person becomes or fails to become or ceases to be a Grantor hereunder. For
purposes of this Agreement, subsidiaries means any entity in which the Company,
directly or indirectly, owns 10% of the capital stock or holds an equity or
similar interest.
9. TERMINATION OF THIS SECURITY AGREEMENT. Subject to Section 6 hereof,
this Agreement shall terminate upon the Termination Date.
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[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, each Grantor has caused this Intellectual Property
Security Agreement to be executed and delivered by its duly authorized officer
as of the date first set forth above.
PROXYMED, INC., as the Grantor
By:
------------------------------------
Name:
Title:
KEY COMMUNICATIONS SERVICE, INC., as an
Additional Grantor
By:
------------------------------------
Name:
Title:
WPJ, INC., d/b/a INTEGRATED MEDICAL
SYSTEMS, as an Additional Grantor
By:
------------------------------------
Name:
Title:
ACCEPTED and ACKNOWLEDGED by:
COMMONWEALTH ASSOCIATES, L.P., as Agent
By:
------------------------------------
Name:
Its: Duly Authorized Signatory
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ACKNOWLEDGMENT OF GRANTORS
STATE OF )
) ss.______________
COUNTY OF )
On this March [__], 2000 before me personally appeared _______________,
proved to me on the basis of satisfactory evidence to be the person who executed
the foregoing instrument on behalf of _________ who being by me duly sworn did
depose and say that he is an authorized officer of said corporation, that the
said instrument was signed on behalf of said corporation as authorized by its
Board of Directors and that he acknowledged said instrument to be the free act
and deed of said corporation.
Notary Public
{seal}
My Commission Expires:
------------------------------------
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SCHEDULE I
to
INTELLECTUAL PROPERTY SECURITY AGREEMENT
I. PATENT REGISTRATIONS
Grantor Patent Reg. No. Date
------- ------ -------- ----
II. PATENT APPLICATIONS
Grantor Patent Application No. Date
------- ------ --------------- ----
III. PATENT LICENSES
Grantor Name of Agreement Date of Agreement Parties
------- ----------------- ----------------- -------
[TO BE COMPLETED BY GRANTORS]
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SCHEDULE II
to
INTELLECTUAL PROPERTY SECURITY AGREEMENT
I. TRADEMARK REGISTRATIONS
Grantor Mark Reg. No. Date
------- ---- -------- ----
II. TRADEMARK APPLICATIONS
Grantor Mark Application No. Date
------- ---- --------------- ----
III. TRADEMARK LICENSES
Grantor Name of Agreement Date of Agreement Parties
------- ----------------- ----------------- -------
[TO BE COMPLETED BY GRANTORS]
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SCHEDULE III
to
INTELLECTUAL PROPERTY SECURITY AGREEMENT
I. COPYRIGHT REGISTRATIONS
Grantor Copyright Reg. No. Date
------- --------- -------- ----
II. COPYRIGHT APPLICATIONS
Grantor Copyright Application No. Date
------- --------- --------------- ----
III. COPYRIGHT LICENSES
Grantor Name of Agreement Date of Agreement Parties
------- ----------------- ----------------- -------
[TO BE COMPLETED BY GRANTORS]
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EXHIBIT A
COUNTERPART TO INTELLECTUAL
PROPERTY SECURITY AGREEMENT
This counterpart, dated _________, 200__ is delivered pursuant to
Section 8 of that certain Intellectual Property Security Agreement dated as of
March [__], 2000 (as from time to time amended, modified or supplemented, the
"IP Security Agreement"; the terms defined therein and not otherwise defined
herein being used as therein defined), among the Grantors signatory thereto and
_____________, as Agent. The undersigned hereby agrees (i) that this counterpart
may be attached to the IP Security Agreement, and (ii) that the undersigned will
comply with and be subject to, including representations and warranties, all the
terms and conditions of the IP Security Agreement as if it were an original
signatory thereto.
[NAME OF ADDITIONAL GRANTOR]
By:
---------------------------------
Name:
Title:
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