EXHIBIT 10.5
COLLATERAL ASSIGNMENT OF PATENTS AND TRADEMARKS
AND SECURITY AGREEMENT
This Assignment is made as of the 20th day of December, 2000 between
FIBERCORE INC., a Nevada corporation with its principal place of business at ▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Assignor") and FLEET NATIONAL
BANK, a national banking association with an office at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Bank").
BACKGROUND. This Assignment is executed and delivered to the Bank as
one of the Supplemental Documents referred to in a Loan Agreement dated of even
date herewith by and between the Assignor and the Bank (as amended from time to
time, the "Loan Agreement") and shall not be effective, and no security interest
created hereunder shall attach, until the Bank makes an election under Section
9.02 of the Loan Agreement. Assignor has executed and delivered to the Bank a
certain Revolving Credit Note dated of even date herewith in the principal
amount of Ten Million and 00/100 Dollars ($10,000,000.00) pursuant to the
Agreement. In order to induce Bank to execute and deliver the Loan Agreement,
Assignor has agreed to assign to Bank certain patent and trademark rights.
NOW, THEREFORE, in consideration of the premises, Assignor hereby
agrees with Bank as follows:
1. To secure the complete and timely satisfaction of all Obligations
(such term, as used herein, shall have the same meaning as provided in the Loan
Agreement) of the Assignor to the Bank, Assignor hereby assigns, pledges and
grants to the Bank a continuing security interest in and to the Assignor's
right, title and interest in and to the patent applications, patents, trademarks
and trademark applications listed in Exhibit A hereto, including without
limitation all proceeds thereof (such as, by way of example, license royalties
and proceeds of infringement suits), the right to ▇▇▇ for past, present and
future infringements, all rights corresponding thereto throughout the world and
all re-issues, divisions, continuations, renewals, extensions and
continuations-in-part thereof (collectively, the "Patents and Trademarks").
2. Assignor covenants and warrants 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 Assignor's knowledge, each of the Patents and
Trademarks is valid and enforceable and Assignor has notified Bank in writing of
all prior art (including public uses and sales) of which it is aware;
(c) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents and
Trademarks, free and clear of any liens, charges and encumbrances, including
without limitation licenses, shop rights and covenants by Assignor not to ▇▇▇
third persons; and
(d) Assignor has the unqualified right to enter into this Agreement
and perform its terms and has entered and will enter into written agreements
with each of its present and future employees, agents and consultants which will
enable it to comply with the covenants herein contained.
3. Assignor agrees that, until all of the Obligations shall have
been satisfied in full, it will not enter into any agreement (for example, a
license agreement without receiving fair value in royalty payments or other
consideration) which is inconsistent with Assignor's obligations under this
Agreement, without Bank's prior written consent which shall not be unreasonably
withheld or delayed.
4. If, before the Obligations shall have been satisfied in full,
Assignor shall obtain rights to any new patentable inventions, or become
entitled to the benefit of any patent application, patent, trademark or
trademark applications for any reissue, division, continuation, renewal,
extension or continuation-in-part of any Patent and Trademark or any improvement
on any Patent and Trademark, the provisions of paragraph 1 shall automatically
apply thereto and Assignor shall give to Bank prompt notice thereof in writing.
5. Assignor authorizes Bank to modify this Agreement by amending
Exhibit A to include any future patents and patent applications, trademarks and
trademark applications which are Patents and Trademarks under paragraph 1 or
paragraph 4 hereof.
6. Unless and until there shall have occurred and be continuing an
Event of Default (as defined in the Loan Agreement) beyond any applicable cure
period, Bank hereby grants to Assignor the exclusive, non-transferable right and
license to make, have made, use and sell the inventions disclosed and claimed in
the Patents and Trademarks for Assignor's own benefit and account and for none
other. Assignor agrees not to sell or assign its interest in, or grant any
sublicense without receiving fair value in royalty payments or other
consideration under, the license granted to Assignor in this paragraph 6,
without the prior written consent of Bank, which consent shall not be
unreasonably withheld.
7. If any Event of Default shall have occurred and be continuing
beyond any applicable cure period, Assignor's license under the Patents and
Trademarks as set forth in paragraph 6, may at the election of the Bank be
terminated forthwith, and Bank shall have, in addition to all other rights and
remedies given it by this Agreement, those 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, Bank may immediately, without demand
of performance and without other notice (except as set forth below) or demand
whatsoever to Assignor, all of which are hereby expressly waived, and without
advertisement, sell at public or private sale or otherwise realize upon, in
Massachusetts or elsewhere, the whole or from time to time any part of the
Patents and Trademarks, or any interest which Assignor 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 Assignor. Notice of any sale or other
disposition of the Patents and Trademarks shall be given to Assignor at least
five (5) days before the time of any intended public or private sale or other
disposition of the Patents and Trademarks is to be made, which Assignor hereby
agrees shall be reasonable notice of such sale or other disposition. At any such
sale or other disposition, any holder of any of the Notes or Bank may, to the
extent permissible under applicable law, purchase the whole or any part of the
Patents and Trademarks sold, free from any right of redemption on the part of
Assignor, which right is hereby waived and released.
8. At such time as Assignor shall completely satisfy all of the
Obligations, Bank shall execute and deliver to Assignor all deeds, assignments
and other instruments as may be necessary or proper to re-vest in Assignor full
title to the Patents and Trademarks, subject to any disposition thereof which
may have been made by Bank pursuant hereto.
9. Any and all reasonable fees, costs and expenses, of whatever kind
or nature, including reasonable attorneys' fees and legal expenses, incurred by
Bank 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, 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 Assignor on demand by Bank and until so paid shall be added to the principal
amount of the Obligations and shall bear interest at the rate prescribed in the
Loan Agreement.
10. Assignor shall have the duty, through counsel acceptable to
Bank, to prosecute diligently any patent application of the Patents and
Trademarks pending as of the date of this Agreement or thereafter until the
Obligations shall have been paid in full, to make application on unpatented but
patentable inventions and to preserve and maintain all rights in patent
applications and patents of the Patents and Trademarks. Any expenses incurred in
connection with such an application shall be borne by Assignor. Assignor shall
not abandon any right to file a patent application, or any pending patent
application or patent without the consent of Bank, which consent shall not be
unreasonably withheld.
11. Bank shall have the right but shall in no way be obligated to
bring suit in its own name to enforce the Patents and Trademarks and any license
thereunder, in which event Assignor shall at the request of Bank do any and all
lawful acts and execute any and all proper documents required by Bank in aid of
such enforcement and Assignor shall promptly, upon demand, reimburse and
indemnify Bank for all reasonable costs and expenses incurred by Bank in the
exercise of its rights under this paragraph 11.
12. No course of dealing between Assignor and Bank, nor any failure
to exercise, nor any delay in exercising, on the part of Bank, any right, power
or privilege hereunder or under the Loan Agreement shall operate as a waiver
thereof; nor shall 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.
13. All of Bank's rights and remedies with respect to the Patents
and Trademarks, whether established hereby or by the Loan Agreement, or by any
other agreements or by law shall be cumulative and may be exercised singularly
or concurrently.
14. 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
other clause or provision of this Agreement in any jurisdiction.
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 Commonwealth
of Massachusetts.
IN WITNESS WHEREOF, the parties hereto have caused this Assignment
to be executed by their duly authorized officer(s) under seal as of the day and
year first-above written.
FIBERCORE, INC.
____________________________ By:_______________________________
Witness Name:
Title:
FLEET NATIONAL BANK
____________________________ By:_______________________________
Witness Name:
Title:
THE COMMONWEALTH OF MASSACHUSETTS
Worcester, ss. December 19, 2000
Then personally appeared the above-named _______________________,
_________________________ of Fibercore, Incorporated, and acknowledged the
foregoing instrument to be his free act and deed and the free act and deed of
Fibercore, Inc., before me.
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Notary Public
My Commission Expires:
THE COMMONWEALTH OF MASSACHUSETTS
Worcester, ss. December 19, 2000
Then personally appeared the above-named Alden F. L. ▇▇▇▇▇▇, II,
Vice President of Fleet National Bank, and acknowledged the foregoing instrument
to be his free act and deed and the free act and deed of Fleet National Bank,
before me.
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Notary Public
My Commission Expires: