Exhibit 10.6


 


INTELLECTUAL PROPERTY SECURITY AGREEMENT


 


This INTELLECTUAL PROPERTY SECURITY AGREEMENT (“IP Security Agreement), dated as of February 13, 2017, is made by and among RiceBran Technologies, a California corporation (the “Company”), all of the Subsidiaries of the Company (such subsidiaries, the “Guarantors” and together with the Company, the “Debtors”) and the holders of the Company’s Senior Secured Convertible Debentures due two (2) years following their issuance, in the original aggregate principal amount of $6,600,000 (collectively, the “Debentures”) signatory hereto, their endorsees, transferees and assigns (collectively, the “Secured Parties”).


 


W I T N E S S E T H:







WHEREAS, the Company has entered into a Securities Purchase Agreement with certain purchasers (“Purchasers”) dated as of February 9, 2017 (the “Purchase Agreement”) and a Security Agreement dated as of February 13, 2017 (the “Security Agreement”) with the Secured Parties hereto;







WHEREAS, pursuant to the Purchase Agreement (as defined in the Debentures), the Secured Parties have severally agreed to extend the loans to the Company evidenced by the Debentures;







WHEREAS, pursuant to a certain Subsidiary Guarantee, dated as of February 13, 2017 (the “Guarantee”), the Guarantors have jointly and severally agreed to guarantee and act as surety for payment of such Debentures; and







WHEREAS, in order to induce the Secured Parties to extend the loans evidenced by the Debentures, each Debtor has agreed to execute and deliver to the Secured Parties this IP Security Agreement and to grant the Secured Parties, pari passu with each other Secured Party and through Sabby Management, LLC, who is defined as the “Agent” in Section 18 of the Security Agreement, a security interest in certain property of such Debtors to secure the prompt payment, performance and discharge in full of all of the Company’s obligations under the Debentures and the Guarantors’ obligations under the Guarantee.







NOW THEREFORE, in consideration of the agreements herein contained and for other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties hereto hereby agree as follows:


 


1.             Grant of Security. Each Debtor hereby unconditionally and irrevocably pledges, grants and hypothecates to the Secured Parties for the ratable benefit of the Secured Parties a security interest in and to, a lien upon and a right of set-off against all of the respective right, title and interest of each such Debtor in, to and under the following (the “IP Collateral”):


 











(a)         the patents and patent applications set forth in Schedule 1 hereto and all reissues, divisions, continuations, continuations-in-part, rights of priority, renewals, extensions, reexaminations, and reissues thereof and amendments thereto (the “Patents”);


 


(b)         the trademark registrations and applications set forth in Schedule 2 hereto, together with all of the goodwill connected with the use thereof and symbolized thereby and all extensions and renewals thereof (the “Trademarks”), excluding only United States intent-to-use (“ITU”) trademark applications to the extent that, and solely during the period in which, the grant, attachment, or enforcement of a security interest therein would, under applicable federal law, impair the registrability of such applications or the validity or enforceability of registrations issuing from such ITU applications;


 


(c)          the copyright registrations, applications and copyright registrations and applications exclusively licensed to each Debtor set forth in Schedule 3 hereto, and all extensions and renewals thereof (the “Copyrights”);


 


(d)         all rights of any kind whatsoever of each such Debtor accruing under any of the foregoing IP Collateral provided by applicable law of any jurisdiction, by international treaties and conventions and otherwise throughout the world;


 


(e)         any and all royalties, fees, income, payments and other proceeds now or hereafter due or payable with respect to any and all of the foregoing; and


 


(f)          any and all claims and causes of action with respect to any of the foregoing, whether occurring before, on or after the date hereof, including all rights to and claims for damages, restitution and injunctive and other legal and equitable relief for past, present and future infringement, dilution, misappropriation, violation, misuse, breach or default, with the right but no obligation to sue for such legal and equitable relief and to collect, or otherwise recover, any such damages.


 


2.             Recordation.  Each Debtor authorizes the Commissioner for Patents, the Commissioner for Trademarks and the Register of Copyrights and any other government officials to record and register this IP Security Agreement upon request by the Agent or any Secured Party.  Upon discharge in full of the Company’s and Debtors’ obligations under the Debentures and Security Agreement and the Guarantors’ obligations under the Guarantee, and written notification of discharge in full from the Agent on behalf of all Secured Parties, Company and Debtors are authorized to record with the foregoing government agencies and officials the documents necessary to release the security interests granted on the IP Collateral under this Agreement.


 


3.             Loan Documents.  This IP Security Agreement has been entered into pursuant to and in conjunction with the Purchase Agreement, Security Agreement, Debentures, and Guarantee which are hereby incorporated by reference.  The provisions of the Security Agreement shall supersede and control over any conflicting or inconsistent provision herein.  The rights and remedies of the Agent and Secured Parties with respect to the IP Collateral are as provided by the Purchase Agreement, Security Agreement, Debentures, and Guarantee and related documents, and nothing in this IP Security Agreement shall be deemed to limit such rights and remedies.


 



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4.             Execution in Counterparts.  This IP Security Agreement may be executed in counterparts (and by different parties hereto in different counterparts), each of which shall constitute an original, but all of which when taken together shall constitute a single contract.  Delivery of an executed counterpart of a signature page to this IP Security Agreement by facsimile or in electronic format (i.e., “pdf” or “tif”) format shall be effective as delivery of a manually executed counterpart of this IP Security Agreement.


 


5.             Successors and Assigns.  This IP Security Agreement will be binding on and shall inure to the benefit of the parties hereto and their respective successors and assigns.


 


6.             Governing Law.  This IP Security Agreement and any claim, controversy, dispute or cause of action (whether in contract or tort or otherwise) based upon, arising out of or relating to this IP Security Agreement and the transactions contemplated hereby and thereby shall be governed by, and construed in accordance with, the laws of the United States and the State of New York, without giving effect to any choice or conflict of law provision or rule (whether of the State of New York or any other jurisdiction).







[SIGNATURE PAGE FOLLOWS]


 



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Exhibit 10.6


 


IN WITNESS WHEREOF, the parties hereto have caused this IP Security Agreement to be duly executed on the day and year first above written.







	RICEBRAN TECHNOLOGIES	 
	 	 	 
	
By:

	
/s/ Robert Smith

	 
	 	
Name: Robert Smith

	 
	 	
Title: Chief Executive Officer

	 



	 	 
	
HEALTHY NATURAL INC.


NUTRACEA, LLC


RICE RX, LLC


RICE SCIENCE, LLC


THE RICEX COMPANY


RICEX NUTRIENTS, INC.


SRB-MERM, LLC


SRB-LC, LLC


SRB-MT,LLC


SRB-WS, LLC


SRB-IP, LLC

	 
	 	 



	By:	
/s/ J. Dale Belt

	 
	 	
Name: J. Dale Belt

	 
	 	
Title: Secretary

	 



 



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SCHEDULE 1







PATENTS AND PATENT APPLICATIONS







Issued United States Patents







	
Patent 


No.

	
Title

	
Filing 


Date

	
Notes


	
6,902,739

	
Methods for Treating Joint Inflammation, Pain, and Loss of Mobility

	
Nov 6, 


2001

	
Method of Use: treating lameness and motility in animals


	
5,985,344          

	
Process for Obtaining Micronutrient Enriched Rice Bran Oil

	
Aug 31, 


1998

	
Method of Making: rice bran oil with enhanced anti-oxidant content


	
6,126,943          

	
A Method for Treating Hypercholesterolemia, Hyperlipidemia, and Atherosclerosis

	
Aug 28,


1998

	
Method of Use: lowering cholesterol in mammals


	
6,303,586

	
A Method for Treating Diabetes, Hyperglycemia and Hypoglycemia

	
Aug 28,


1998

	
Method of Use: control serum glucose in mammals


	
6,350,473

	
Method for Treating Hypercholesterolemia, Hyperlipidemia, and Atherosclerosis

	
Jul 24, 


2000

	
Method of Use: controlling serum glucose


	
6,558,714

	
Method for Treating Hypercholesterolemia, Hyperlipidemia, and Atherosclerosis

	
Nov 16, 


2001

	
Method of Making: SRB derivatives (RiBalance, RiSolubles and RiFiber)


	
6,733,799

	
Method for Treating Hypercholesterolemia, Hyperlipidemia, and Atherosclerosis

	
May 5,


2003

	
Method of Use: inhibiting platelet aggregation and HMGCoA reductase in a mammal





 



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Issued Foreign Patents







	 	
Application/Patent  No.

	 	
Title


	 	
Canada 2,305,665

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
Canada 2,454,658

	 	
Methods for Treating Joint Inflammation, Pain and Loss of Mobility


	 	
India 221444

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
India 233702

	 	
Method for Treating Hypercholesterolemia, Hyperlipidemia, and Atherosclerosis


	 	
Mexico 232655

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
Mexico 286309

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
China ZL 98810675.2

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
Singapore 71377

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
Korea 0583211

	 	
A Method for Treating Diabetes, Hyperglycemia and Hypoglycemia










	 	
Australia 751704

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
New Zealand 503648

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
Australia 2002315558

	 	
Methods for Treating Joint Inflammation, Pain and Loss of Mobility


	 	
Europe:


UK 1011702; France 1011702; Germany 69842477.8

	 	
Supportive Therapy for Diabetes, Hyperglycemia and Hypoglycemia


	 	
Europe:


UK 141966; EU 141966

	 	
Methods for Treating Joint Inflammation, Pain and Loss of Mobility


	 	
Hong Kong (Europe) 1065943

	 	
Methods for Treating Joint Inflammation, Pain and Loss of Mobility





 



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SCHEDULE 2







TRADEMARK REGISTRATIONS AND APPLICATIONS







NUTRACEA / RICEBRAN TECHNOLOGIES:







	
TRADEMARK/SERVICEMARK

	
REG. #

	
SERIAL #

	
FILE 


DATE

	
STATUS

	
STATE / 


COUNTRY


	 	
Ricebran Technologies

	 	 	 	 	 
	
1

	
THE RICE PATTY COLLECTION

	
3229286

	
78777214

	
12/20/2005

	
Registered

	
USA


	
2

	
RISOLUBLES

	
2461604

	
76045704

	
5/10/2000

	
Registered

	
USA


	
3

	


	
2461745

	
76070970

	
6/15/2000

	
Registered

	
USA


	
4

	
DR. VETZ

	
3256988

	
78596468

	
3/28/2005

	
Registered

	
USA


	
5

	
EQUINE SHINE STABILIZED RICE BRAN

	
2659543

	
78075504

	
7/24/2001

	
Registered

	
USA


	
6

	
NUTRACEA

	
2658784

	
76313803

	
9/17/2001

	
Registered

	
USA


	
7

	
SERVING MANKIND

	
3410639

	
78791191

	
1/13/2006

	
Registered

	
USA


	
8

	
PELOTAS

	
3652856

	
77597273

	
10/21/2008

	
Registered

	
USA


	
9

	
RIBALANCE

	
3581499

	
77383574

	
1/29/2008

	
Registered

	
USA


	
10

	
RIPROSPORT

	
3948284

	
77670444

	
2/13/2009

	
Registered

	
USA


	
11

	
NUTRITION BY NATURE

	
4266719

	
85451243

	
10/19/2011

	
Registered

	
USA


	
12

	
RICEBRAN TECHNOLOGIES

	
4512804

	
85734998

	
9/21/2012

	
Registered

	
USA


	
13

	
RICEBRANTECH

	
4573008

	
85741584

	
9/28/2012

	
Registered

	
USA


	
14

	
PRORYZA

	
4683405

	
85882576

	
3/21/2013

	
Registered

	
USA


	
15

	
RIBRAN

	
4820516

	
86172636

	
1/22/2014

	
Registered

	
USA


	
16

	
NUKACHA THE POWER OF RICE BRAN AND GREEN TEA (AND DESIGN)

	 	
86644692

	
5/28/2015

	
Pending

	
USA


	
17

	
NUKACHA (DESIGN)

	
4990087

	
86644708

	
5/28/2015

	
Registered

	
USA





 



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SCHEDULE 3







COPYRIGHT REGISTRATIONS


 


NONE.


 


 



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