[EXHIBIT 10.53 - Certain portions of this document have been
omitted in the publicly filed version of this document pursuant
to the Registrant's request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Omitted confidential information is indicated in brackets
in this Exhibit.]
SPD FILM, EMULSION AND SMART WINDOW END-PRODUCT LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
ID RESEARCH PTY LTD.
This License Agreement ("Agreement") is effective as of February 8, 2010 by
and between RESEARCH FRONTIERS INCORPORATED, a Delaware corporation ("LICENSOR")
and ID RESEARCH PTY LTD., a corporation formed under the laws of the State of
Victoria in Australia (hereinafter called "LICENSEE"). The "Effective Date" of
this Agreement shall be the date which is the last date of formal execution of
this Agreement by duly authorized representatives of the parties to this
Agreement as indicated on the signature page of this Agreement.
RECITALS
WHEREAS, LICENSOR has been engaged in research and development in the
application of physicochemical concepts to Light Valves, Light Valve Film,
and SPD Emulsions (all as hereinafter defined) and end-products using such
Light Valves; and is possessed of and can convey information and know-how for
such products and rights to manufacture, use and sell such products; and
WHEREAS, LICENSEE is interested in manufacturing and selling Licensed Products,
Light Valve Film and SPD Emulsions used to make Light Valve Film (all as
hereinafter defined); and
WHEREAS, LICENSEE desires to acquire from LICENSOR, and LICENSOR desires to
grant to LICENSEE, certain rights and licenses with respect to such technology
of LICENSOR;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the respective meanings set
forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is the last date
of formal execution of this Agreement by duly authorized representatives of the
parties to this Agreement as indicated on the signature page of this Agreement.
"Authorized User" means LICENSOR and/or any other person or entity listed by
LICENSOR on Schedule B hereof who has been granted permission by LICENSOR to
receive SPD Emulsions or Light Valve Film from LICENSEE under this Agreement.
LICENSEE agrees that LICENSOR in its sole judgment may amend Schedule B hereof
at any time during the term of this Agreement for any reason by sending
LICENSEE a written notice of such amendment and specifying the reason for such
change. The persons or entities now or hereafter listed on Schedule B may not
include all of LICENSOR's current licensees and may include prospective
licensees of LICENSOR, and for legal or practical reasons, LICENSOR may
restrict whether or not SPD Emulsions and/or Light Valve Film may be sold,
leased or transferred to such person or entity, and/or the application that
such SPD Emulsions or Light Valve Film may be used for by the recipient.
LICENSEE agrees that it and its permitted sublicensees hereunder shall cease
all sales, leases, or other dispositions of SPD Emulsions and Light Valve Film
to any person or entity whose name is deleted from Schedule B by LICENSOR,
unless and until LICENSOR consents in writing to the resumption of such sales,
leases or other dispositions (a) immediately upon receipt of any written notice
from LICENSOR that any person or entity is no longer included on Schedule B, or
(b) if either LICENSEE or its permitted sublicensees becomes aware that any
such person or entity listed on Schedule B or otherwise receiving SPD Emulsions
or Light Valve Film is making any improper use of SPD Emulsions or Light Valve
Film,in which case LICENSEE shall promptly notify LICENSOR of such improper use.
"Licensed Product" means a Light Valve Architectural Window Product
incorporating a Light Valve. The term "Licensed Product" shall not include
Light Valves used or intended for use in any product other than as specifically
defined herein, such as but not limited to, other window products not
specifically defined herein, such as windows for transportation vehicles,
including, but not limited to passenger cars, recreational vehicles, trucks,
mobile cranes, trains, monorails, aircraft, boats, vans, sport utility vehicles,
space craft and space-stations, and non-window products such as but not limited
to displays, eyewear, sunvisors, toys, mirrors or filters for scientific
instruments, lamps or contrast enhancement of displays. The term "display"
means any device for displaying letters, numbers, images or other indicia or
patterns. Other than specifically contained in the license granted under
Section 2.1(A), nothing contained in this Agreement shall permit LICENSEE to
sell, lease, or otherwise dispose of a Light Valve which is not incorporated
or intended to be incorporated as described above into a Light Valve
Architectural Window Product.
"Licensed Territory" means the countries of Australia, New Zealand and South
Africa with respect to sales of Licensed Products, and all countries of the
world with respect to sales of SPD Emulsions and Light Valve Film.
"Light Valve" means a variable light transmission device comprising: a cell
including cell walls, containing or adapted to contain an activatable material,
described hereinafter, such that a change in the optical characteristics of the
activatable material affects the characteristics of light absorbed by,
transmitted through and/or reflected from the cell; means incorporated in or
on the cell, or separate therefrom for applying an electric or magnetic field
to the activatable material within the cell; and coatings, (including, but not
limited to, electrodes), spacers, seals, electrical and/or electronic
components, and other elements incorporated in or on or combined with the
cell. The activatable material, which the cell contains or is adapted to
contain, includes in it solid suspended particles, which when subjected to
a suitable electric or magnetic field, orient to produce a change in the
optical characteristics of the device, and may be in the form of a liquid
suspension, gel, film or other material.
"Light Valve Architectural Window Product" means a Light Valve used or
intended for use solely as a window integrally incorporated in, or attached
as a fixture to the external structure or internal structure of any building,
whether permanent or temporary, and whether above or below ground.
"Light Valve Film" means a film or sheet or more than one thereof comprising
a suspension of particles used or intended for use solely in or as a Light
Valve. The Light Valve Film shall comprise either (a) a suspension of
particles dispersed throughout a continuous liquid phase enclosed within
one or more rigid or flexible solid films or sheets, or (b) a discontinuous
phase of a liquid comprising dispersed particles, said discontinuous phase
being dispersed throughout a continuous phase of a rigid or flexible solid
film or sheet. The Light Valve Film may also comprise one or more other
layers such as, without limitation, a film, coating or sheet or combination
thereof, which may provide the Light Valve Film with (1) scratch resistance,
(2) protection from ultraviolet radiation, (3) reflection of infrared energy,
and/or (4) electrical conductivity for transmitting an applied electric or
magnetic field to the activatable material.
The "Net Selling Price" of a Licensed Product on which royalties are payable
shall be the larger of the following: (A) the genuine selling price of LICENSEE
and its sublicensees hereunder (including amounts charged for any wiring,
installation, and related services provided by LICENSEE and its sublicensees
hereunder) f.o.b. factory at which nonaffiliated customers are billed in the
usual course of business for a Licensed Product, as packed for shipment to
the customer; and (B) $100 per window. The aforementioned $100 figure
specified in clause (B) above shall be adjusted upward as of each January
1st hereafter beginning on January 1, 2011 by any increase in the Producer
Price Index for Finished Goods (the "Index") for the 12 month period ending
in December of the prior year, prepared by the Bureau of Labor Statistics of
the United States Department of Labor (or if the Index is not then being
published, the most nearly comparable successor index). In calculating a
genuine selling price of a product for the above calculation, such price
may be reduced only by the applicable proportions of the following if, and
to the extent that, amounts in respect thereof are reflected in such selling
price: (i) normal trade discounts actually allowed; (ii) sales, use or excise
and added value taxes and custom duties paid; (iii) if the genuine selling
price is other than f.o.b. factory, amounts paid for f.o.b. transportation
of the product to the customer's premises or place of installation or delivery;
(iv) insurance costs and the costs of packing material, boxes, cartons and
crates required for shipping; provided, however, that for purposes of this
calculation, the genuine selling price of a product may not be less than 90%
of the gross selling price of said product after all deductions therefrom,
if any. If a product is leased, sold, used or otherwise disposed of on
terms not involving a bona fide arm's length sale to an unaffiliated third
party, then the Net Selling Price for such transactions shall be deemed to
be the Net Selling Price as defined above for identical products sold to a
nonaffiliated customer nearest to the date of such lease, sale, use, or
other disposition.
"SPD Emulsion" means any component or components used or usable in or used
or usable to make a Light Valve Film, including, but not limited to,
particles, particle precursors, coatings, polymers, liquid suspensions and
suspending liquids, or any combination thereof.
"Technical Information" means all useful information relating to apparatus,
methods, processes, practices, formulas, techniques, procedures, patterns,
ingredients, designs and the like including (by way of example) drawings,
written recitations of data, specifications, parts, lists, assembly
procedures, operating and maintenance manuals, test and other technical
reports, know-how of LICENSOR, and the like owned or controlled by LICENSOR,
to the extent they exist, that relate to Licensed Products, SPD Emulsions
and/or to the suspensions used or usable for SPD Emulsions or Light Valve
Film and that consist of concepts invented or developed by LICENSOR and
which are deemed significant by LICENSOR. Know-how of LICENSOR's suppliers
and of LICENSOR's other licensees and their sublicensees under licenses
from LICENSOR shall not be considered Technical Information owned or
controlled by LICENSOR.
2 GRANT OF LICENSES.
2.1 Licenses. During the term of this Agreement, LICENSOR hereby
grants LICENSEE a non-exclusive right and license to use (a) all of the
Technical Information, if any, (subject to Section 8.1 hereof), furnished
by LICENSOR pursuant to this Agreement, and (b) any invention claimed in
(i) any of the unexpired patents now or hereafter listed on Schedule A
attached hereto or (ii) unexpired patents which issue from pending patent
applications now or hereafter listed in Schedule A, and any continuations,
continuations-in-part, divisions, reissues, reexaminations, or extensions
thereof to make, have made, and to lease, sell, or otherwise dispose of
(A) SPD Emulsions and Light Valve Film manufactured by LICENSEE pursuant
to this Agreement solely to an Authorized User in the Authorized User's
permitted territory and for the applications specified and purpose
permitted on Schedule B hereof, and (B) Licensed Products in the Licensed
Territory. Notwithstanding anything contained herein or in Schedule A
hereto to the contrary, no rights or licenses shall be granted hereunder
with respect to any new particle (other than LICENSOR's current polyiodide
crystal) now or hereafter under development or invented by or for LICENSOR
or comprising part of the activatable material of an SPD Emulsion or a
Light Valve Film sold or for sale by any other licensee of LICENSOR The
license granted pursuant to Section 2.1(A) shall be royalty-free to
LICENSEE and its permitted sublicensees hereunder, and the license granted
pursuant to Section 2.1(B) shall be subject to the payment of royalties
specified in Section 3.1 hereof. By virtue of the disclosure of Technical
Information and training provided by LICENSOR under this Agreement, all
SPD Emulsions and Light Valve Film sold, leased or otherwise disposed of by
or for LICENSEE hereunder shall be deemed to have been manufactured at least
in part using the Technical Information provided by LICENSOR. The foregoing
license is only a license with respect to Licensed Products, SPD Emulsions
and Light Valve Film and nothing contained in this Agreement shall permit
LICENSEE to make, sell, use or otherwise dispose of other Light Valve
products.
2.2 No Other Rights. LICENSEE agrees that, except for the specific
licenses granted to it under Section 2.1 hereof, LICENSEE has not acquired
any rights or licenses under this Agreement to use SPD Emulsions or Light
Valve Film or any components thereof made by or for LICENSEE pursuant to
this Agreement except for the purposes of research and development pursuant
to Section 4.1 hereof and as specifically licensed in Section 2.1 hereof.
2.3 Sublicenses. LICENSEE shall have the right to grant non-exclusive
sublicenses to any of its wholly-owned and controlled subsidiaries, whose
obligations to LICENSOR hereunder LICENSEE hereby guarantees, and each of
which acknowledges to LICENSOR in writing for each sublicense that it
wishes to become a sublicensee hereunder prior to doing so and agrees to
be bound by the terms and conditions of this Agreement. All sublicenses
shall (i) be non-exclusive, (ii) shall terminate with the termination of
the rights and licenses granted to LICENSEE under Section 2.1 hereof, and
be otherwise limited in accordance with the limitations and restrictions
which are imposed on the rights and licenses granted to LICENSEE hereunder,
(iii) contain confidentiality provisions no less protective than those
contained in Section 12.1 hereof, and (iv) shall contain such other terms,
conditions, and licenses as are necessary to enable LICENSEE to fulfill its
obligations hereunder. LICENSEE shall send LICENSOR a copy of every
sublicense agreement or other agreement entered into by LICENSEE in
connection with a sublicense hereunder within thirty (30) days of the
execution thereof and shall also notify LICENSOR prior to any change in
ownership in a sublicensee. LICENSOR may terminate any such sublicense if
there is any change in the ownership or control of a sublicensee.
3 ROYALTIES, REPORTS AND RECORD-KEEPING ON SALES OF LICENSED
PRODUCTS, SPD EMULSIONS AND LIGHT VALVE FILM.
3.1(a) Royalties and Reports. During the term of this Agreement,
LICENSEE agrees to pay LICENSOR an earned royalty which shall be fifteen
percent (15%) of the Net Selling Price of Licensed Products which embody,
or the manufacture of which utilizes, any of the rights granted under Section
2.1(B) hereof, and which are manufactured by or for LICENSEE and sold, leased,
used or otherwise disposed of by or for LICENSEE or a permitted sublicensee.
Licensed Products shall be considered as sold, leased or used and royalties
shall accrue on the earlier of when such Licensed Products are billed out,
or when delivered, shipped or mailed to the customer. If as a result of a
price reduction or a return of Licensed Products previously sold, a credit
or refund to a customer is given on part or all of the sale price of such
Licensed Products, a credit shall be allowed against royalties accruing
thereafter under this Agreement equal to the royalty paid on that part of
the sales price so credited or refunded. Payments under this Section 3.1
shall be made on a monthly basis and made within 10 days after the end of
the calendar month in which such Licensed Products were sold, leased,
used or otherwise disposed of by or for LICENSEE or a permitted sublicensee
hereunder. Each royalty payment shall be in U.S. dollars and shall be
accompanied by a statement by LICENSEE showing in reasonable detail the
amount of Licensed Products sold, used, leased or otherwise disposed of
by or for LICENSEE and its sublicensees during the preceding month, any
deductions taken or credits applied, and the currency exchange rate used
to report sales made in currencies other than U.S. dollars. LICENSEE
shall use the exchange rates for buying U.S. dollars in effect on the
last day of each month, as specified in The New York Times. Such report
shall also set forth in reasonable detail the quantity of SPD Emulsions
and Light Valve Film manufactured or otherwise obtained by LICENSEE and
the quantity of SPD Emulsions and Light Valve Film sold, leased, disposed
of, or delivered by or for LICENSEE and its sublicensees during such month
to each Authorized User which received such SPD Emulsions or Light Valve
Film, and samples provided to third parties with LICENSOR's consent, with
the amounts sold or otherwise provided to each Authorized User, including
sample recipients, and their identity clearly broken down. The first such
statement shall cover the period from the Effective Date of this Agreement
to the end of the first calendar month in which a Licensed Product or SPD
Emulsions or Light Valve Film is sold, used, leased or otherwise disposed
of by or for LICENSEE or its sublicensees. LICENSEE shall also furnish to
LICENSOR at the same time it becomes available to any third party, a copy
of each brochure, price list, advertisement or other marketing and
promotional materials prepared, published or distributed by LICENSEE or
its sublicensees relating to Licensed Products, SPD Emulsions or Light
Valve Film. LICENSOR shall have the right, but not the obligation, to
approve any use by LICENSEE of its name, logo, or other information about
SPD Emulsions, Light Valve Film or Licensed Products, and to require the
correction of any inaccurate information.
(b) Minimum Royalties - Regardless of whether LICENSEE sells any
Licensed Products, during the term of this Agreement LICENSEE agrees to
pay LICENSOR with respect to the license granted pursuant to Section 2.1(B)
hereof, an initial fee of [Confidential Information Omitted and filed
separately with the Securities and Exchange Commission] upon signing of
this License Agreement and the non-refundable minimum royalties (in
U.S. Dollars) specified below for each of the stated periods:
Period Minimum Royalty
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
3.2 Recordkeeping. LICENSEE shall keep and shall cause each sublicensee
to keep for six (6) years after the date of submission of each report
supported thereby, true and accurate records, files, data and books of
accounts that relate to the acquisition, processing, lamination, sale or
other disposition of SPD Emulsions, Light Valve Film and Licensed Products,
reasonably required for the full computation and verification of the Net
Selling Price of Licensed Products, deductions therefrom and royalties to
be paid, as well as the other information to be given in the statements
herein provided for, and shall permit LICENSOR or its duly authorized
representatives, upon reasonable notice, adequately to inspect the same
at any time during usual business hours. LICENSOR and LICENSEE agree
that an independent certified public accounting firm (selected by LICENSOR
from the largest ten certified public accounting firms in the United States
of America, or any country in the Licensed Territory) may audit such records,
files and books of accounts to determine the accuracy of the statements given
by LICENSEE pursuant to Section 3.1 hereof. Such an audit shall be made upon
reasonable advance notice to LICENSEE and during usual business hours. The cost
of the audit shall be borne by LICENSOR, unless the audit shall disclose a
breach by LICENSEE of any term of this Agreement, or an inaccuracy greater
than 2% in any report provided to LICENSOR by LICENSEE, during the audited
period, in which case LICENSEE shall bear the full cost of such audit. LICENSEE
agrees to pay LICENSOR all additional monies that are disclosed by the audit
to be due and owing to LICENSOR within thirty days of the receipt of the report.
3.3 Time and Method of Payment. The initial payment under Section 3.1 shall
be paid as follows: [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission] All other payments shall be
due on the date specified in this Agreement, or if no date is specified,
within 30 days of invoice. All payments made to LICENSOR shall be paid by
wire transfer of immediately available funds to the account of Research
Frontiers Incorporated at Chase Manhattan Bank, ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇,
▇▇▇ ▇▇▇▇ ▇▇▇▇▇, Account No.: ▇▇▇-▇▇▇-▇▇▇, ABA Wire Code No.: 021 000 021,
or to such other account or place, as LICENSOR may specify in a
notice to LICENSEE.
3.4 Customer Referrals. Although LICENSOR is under no obligation to do
so, LICENSOR may from time to time refer customers to LICENSEE. In the event
that such customer purchases, leases or rents products or services from
LICENSEE other than a Licensed Product upon which a royalty is paid by
LICENSEE to LICENSOR, LICENSEE shall include the details of such transaction
in its next monthly report under Section 3.1 hereof, and shall pay LICENSOR
a sales commission equal to fifteen percent (15%) of the amount received from
such customer for which a royalty under Section 3.1 hereof is not paid. No
such payment shall be due from LICENSEE to LICENSOR if the referred customer
was already a customer of LICENSEE prior to the date of referral by LICENSOR
and LICENSEE informs LICENSOR of such fact at the time that the referral by
LICENSOR is made.
4 OBLIGATIONS OF LICENSOR AND LICENSEE.
4.1 Development of SPD Emulsions and Light Valve Film. LICENSOR and
LICENSEE may cooperate to develop initial specifications for SPD Emulsions
and Light Valve Film. LICENSEE shall then use its reasonable efforts to
produce SPD Emulsions and Light Valve Film meeting such specifications for
the evaluation and use of LICENSOR and licensees and prospective licensees
of LICENSOR, and for use by LICENSEE but only for internal research and
development. After consultation with LICENSEE, LICENSOR may at any time
propose additional specifications of the SPD Emulsions and Light Valve
Film to be produced under this Agreement with the disclosure of additional
Technical Information to LICENSEE with respect to such other specifications
of SPD Emulsions or Light Valve Film. LICENSEE shall use all commercially
reasonable efforts throughout the term of this Agreement to improve the
quality of SPD Emulsions and Light Valve Film. However, LICENSEE shall
be solely responsible for determining the specifications for all SPD
Emulsions and Light Valve Film, and for any improvements therein.
4.2 LICENSOR Purchases. If LICENSEE is able to develop and
manufacture SPD Emulsions and Light Valve Film suitable for use by
Authorized Users, upon request of LICENSOR and with reasonable prior
notice, LICENSEE shall sell and deliver to LICENSOR, Licensed Products,
SPD Emulsions, Light Valve Film or components thereof at LICENSEE's
prevailing market prices and in quantities mutually agreed upon by
LICENSOR and LICENSEE. LICENSEE acknowledges that LICENSOR and its
present and/or future licensees (or entities who have been granted
the option of entering into license agreements with LICENSOR) may
independently manufacture (or have third parties manufacture for
them) and sell Light Valve Film or SPD Emulsions under the terms
of agreements between them and LICENSOR, or may independently
manufacture and sell Light Valve Film or SPD Emulsions which
LICENSOR produces, or has produced on its behalf. Nothing
contained in this Agreement shall impose any obligation on
LICENSOR or any other parties to purchase any SPD Emulsions or
Light Valve Film from LICENSEE. Notwithstanding anything
contained herein to the contrary, during the term of this
Agreement LICENSOR may provide Licensed Products, SPD Emulsions
and Light Valve Film obtained by LICENSOR pursuant to this Section
4.2 to third parties so long as LICENSOR does not receive from the
recipient for the provision of such Licensed Products, SPD Emulsions
or Light Valve Film any monetary payment in excess of LICENSOR's
purchase price plus shipping, administrative, overhead and related
costs to such recipient.
4.3 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of Licensed
Products, SPD Emulsions or Light Valve Film that is not in strict
accordance with (1) the provisions of this Agreement, (2)
restrictions on the type of product, or the territory in which such
product may be, made, used, sold or otherwise disposed of by or
for an Authorized User, or other provisions or restrictions, which
are contained in any other agreement in force between LICENSOR and
an Authorized User which is known to LICENSEE which relates to
Light Valves, SPD Emulsions or Light Valve Film, or (3) with the
provisions of any other agreement then in force to which LICENSEE
is a party and which relates to Light Valves, SPD Emulsions or
Light Valve Film, shall be deemed a material breach of this Agreement.
4.4 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products, SPD Emulsions and Light Valve
Film to whom Licensed Products, SPD Emulsions or Light Valve Film
is sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to LICENSOR or its
affiliates for any claims, warranties, or liability relating to
such Licensed Products, SPD Emulsions or Light Valve Film.
LICENSEE agrees to take all steps to reasonably assure itself
that Licensed Products, SPD Emulsions and Light Valve Film sold,
leased or otherwise disposed of by or for LICENSEE is being used
for permitted application and territory only. If a party which
is not then listed on Schedule B hereto wishes to obtain samples
of SPD Emulsions or Light Valve Film or to purchase SPD Emulsions
or Light Valve Film from LICENSEE, LICENSEE shall notify LICENSOR
and shall refer such party to LICENSOR. If such party enters into
a suitable agreement with LICENSOR, LICENSOR shall inform LICENSEE
whether such party may then obtain samples or purchase SPD Emulsions
or Light Valve Film from LICENSEE.
4.5 Laws and Regulations. LICENSEE agrees that it shall be
solely responsible for complying with all laws and regulations
affecting the manufacture, use and sale or other disposition of
Licensed Products, SPD Emulsions and Light Valve Film by LICENSEE
and its sublicensees, and for obtaining all approvals necessary from
governmental agencies and other entities. LICENSEE agrees to maintain
a file of all such approvals and to send LICENSOR a copy of all such
approvals (including English translations thereof in the case of
approvals required by any foreign country) within 10 business days
of any written request for such copies by LICENSOR. LICENSEE
represents and warrants to LICENSOR that no approval from any
governmental agency or ministry, or from any third party, is
required to effectuate the terms of this Agreement or the
transactions contemplated hereby.
4.6 Purchase of Components from Others. By virtue
of the disclosure of Technical Information, other information,
and training, if any, provided from time to time by LICENSOR to
LICENSEE and to its other licensees, and each of their sublicensees
and affiliates, any component used to manufacture a Light Valve,
including, without limitation, materials, suspensions, films, polymers,
coatings, particle precursors, and particles (each, a "Component"),
which LICENSEE or its sublicensees makes, has made for it, or purchases
from any third party for use in Licensed Products, SPD Emulsions or
Light Valve Film shall be deemed to have been manufactured at least
in part using the Technical Information provided by LICENSOR if
LICENSEE or any supplier of a Component to LICENSEE has had access
to Technical Information of any kind of LICENSOR or its licensees
and their sublicensees, consultants, subcontractors, agents or
representatives. LICENSEE and its sublicensees each hereby agrees
that (i) all Components shall be used only in strict accordance with
the provisions of this Agreement, and that such Components may not
be used for any other purpose or resold by LICENSEE or its sublicensees
except as specifically permitted by the license granted in Section 2.1
hereof, and (ii) LICENSEE and its sublicensees will only look to the
manufacturer or supplier of such Component or other item used by LICENSEE
or its sublicensees and not to LICENSOR or its affiliates for any claims,
warranties, or liability relating to such Component or other item.
LICENSEE acknowledges that LICENSOR has not made any representations
or warranties regarding the availability of any Component, or the price
thereof, and that in all respects LICENSEE shall deal directly with the
suppliers of such Components and will obtain from them information
regarding availability, pricing, and/or other terms relating to such
Components.
4.7 No Warranties by LICENSOR. LICENSOR does not represent or
warrant the performance of any Licensed Product or of any material,
Component, or information provided hereunder, and LICENSEE expressly
acknowledges and agrees that any such material, Component or information
provided by LICENSOR hereunder is provided "AS IS" and that LICENSOR makes
no warranty with respect thereto and DISCLAIMS ALL WARRANTIES, EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT
THERETO, ITS USE OR ANY INABILITY TO USE IT, OR THE RESULTS OF ITS USE.
In no event shall LICENSOR be liable for any damages, whether in contract
or tort (including negligence), including but not limited to direct,
consequential, special, exemplary, incidental and indirect damages,
arising out of or in connection with this Agreement or the use, the
results of use, or the inability to use any Licensed Product, material,
Component or information provided hereunder.
4.8 Analysis. LICENSEE represents and agrees that it will
only incorporate Components received from authorized suppliers into
Licensed Products, SPD Emulsions and Light Valve Film and for no
other purpose, and that LICENSEE will not directly or indirectly
attempt to reverse-engineer any material provided to it hereunder
by LICENSEE or any supplier of any Component.
4.9 Personnel. LICENSEE agrees to assign personnel from
its technical staff who shall be responsible for the development
of Licensed Products, SPD Emulsions and Light Valve Film during
the term of this Agreement.
4.10 Promotional Activities. LICENSEE agrees that it
shall maintain, either at its own facilities or that of any
laminating subcontractor selected by LICENSEE, adequate inventories
of SPD light control film purchased from any authorized supplier of
Light Valve film or otherwise produced by LICENSEE to meet on a
timely basis the anticipated requirements of LICENSEE for incorporation
into Licensed Products during the term of this Agreement. In addition,
LICENSEE shall promptly develop and maintain a web site relating to its
business which prominently features LICENSOR's SPD technology and
LICENSEE's relationship to LICENSOR, and shall participate at
industry trade shows and conferences and/or engage in other marketing
and promotional activities reasonably necessary to promote LICENSOR's
SPD technology and LICENSEE's business relating thereto.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for SPD Emulsions, Light Valve Film, Licensed
Products or other products incorporating Light Valves are and shall
remain the exclusive property of the adopting party, and the other
party shall not obtain any rights and license to such marks under
this Agreement, but may inform others that the adopting party has
licensed or produced SPD Emulsions, Light Valve Film, Licensed
Products or products incorporating Light Valves under such ▇▇▇▇
or marks, and may use the adopting party's logo in connection therewith.
LICENSOR may require LICENSEE or its permitted sublicensees to indicate
on packaging that such product is licensed from Research Frontiers
Incorporated or to otherwise include language and/or designations
approved by LICENSOR indicating an affiliation with Research Frontiers
Incorporated or to use trademarks specified by LICENSOR on LICENSEE's
Licensed Products.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times ample
product liability and other liability insurance covering its operations
relating to the subject matter of this Agreement and shall name LICENSOR
as an additional insured. Upon request, LICENSEE shall provide LICENSOR
with evidence of such insurance.
6.2 Indemnification. LICENSEE, and its affiliates, successors
and assigns and sublicensees (each, an "Indemnifying Party"), each
hereby indemnify and agree to hold harmless LICENSOR and its shareholders,
officers, directors, agents and employees (each, an "Indemnified Party"),
against any liability, damage, loss, fine, penalty, claim, cost or expense
(including reasonable costs of investigation and settlement and attorneys',
accountants' and other experts' fees and expenses) arising out of any
action or inaction by any Indemnifying Party relating to this Agreement
including an Indemnifying Party's manufacture, sale, use, lease or other
disposition of SPD Emulsions, Light Valve Film, and Licensed Products and
related materials, or other use of the information and rights granted
hereunder. Any knowledge of LICENSEE's or its sublicensee's activities
by LICENSOR or its representatives shall in no way impose any liability
on LICENSOR or reduce the responsibilities of LICENSEE hereunder or
relieve it from any of its obligations and warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the
right to file patent applications in the United States and in foreign
countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future improvements
or modifications invented or developed by or on behalf of LICENSEE,
LICENSEE's sublicensees and LICENSOR (other than as specifically
described at the end of this Section 7.2(a)) after the Effective
Date of this Agreement, if any, which relate in any way to or are
useful in the design, operation, manufacture and assembly of Licensed
Products, SPD Emulsions, Light Valve Film and/or to the suspensions or
other components used or usable in Licensed Products, SPD Emulsions
and/or Light Valve Film shall not be included in this Agreement.
Upon written request by the non-inventing party, LICENSOR and
LICENSEE shall negotiate with each other regarding the grant of
nonexclusive rights and licenses to use such improvements and
modifications, but neither party shall be obligated to grant
such rights and licenses to one another. Notwithstanding anything
contained herein to the contrary, LICENSOR shall have the right to
use, license and sublicense any improvement, modification or invention
which is jointly developed by LICENSEE or its officers, directors,
employees, affiliates, contractors, or consultants, on the one hand,
and LICENSOR or its officers, directors, employees, affiliates,
contractors or consultants, on the other hand.
(b) During the term of this Agreement LICENSEE agrees
to inform LICENSOR in writing (without any obligation to reveal
details which would be confidential information), at least as
frequently as once a year in January of each calendar year, if
any technology or improvements or modifications thereto has been
developed by or for LICENSEE which would be useful for use in
conjunction with Light Valves or Licensed Products, and as to
the general nature of any such technology or improvements and
modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but
shall not be required to, voluntarily and without additional
cost to LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE rights
in such certain future improvements and modifications, and
any information so disclosed will be considered Technical
Information which LICENSEE shall be obligated to keep
confidential pursuant to Section 12.1 of this Agreement.
In connection therewith, LICENSOR, may voluntarily add
patents and/or patent applications to Schedule A hereof.
No disclosure of any information by LICENSOR shall in any
way establish a course of dealing or otherwise require
LICENSOR to make any future disclosure of information
under this Agreement.
7.3 Foreign Patent Applications. During the
term of this Agreement, LICENSEE shall have the right
to designate that any patent application now or hereafter
listed on or incorporated into Schedule A shall be filed
or maintained in any foreign country included in the
Licensed Territory. If so designated and if legally
possible to do so, LICENSOR agrees to promptly file,
prosecute and maintain such applications and resulting
patents, and LICENSEE shall pay to LICENSOR the complete
cost, including reasonable attorney's fees, to file,
prosecute and maintain during the term of this Agreement
any such patent application and resulting patents
specifically so designated by LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. Documentation. Within thirty calendar
days after the Effective Date of this Agreement,
LICENSOR shall furnish LICENSEE with all Technical
Information owned or controlled by LICENSOR, which
is reasonably necessary or desirable in order for
LICENSEE to manufacture SPD Emulsions, Light Valve
Film and Licensed Products. Such Technical Information,
which relates to experimental products, shall include,
without limitation thereto photocopies of all U.S.
Patents and patent applications relating to SPD Emulsions,
Light Valve Film and Licensed Products owned or controlled
by LICENSOR as of the Effective Date of this Agreement.
LICENSOR shall not be obligated hereunder to furnish
copies of LICENSOR's foreign patents and patent
applications, but will furnish a list thereof in
Schedule A hereto.
8.2 Training. LICENSEE's technically
skilled personnel designated by LICENSEE (with travel
and living expenses paid by LICENSEE) shall make one
or more visits for training relating to the manufacture
of SPD Emulsions, Light Valve Film, and Licensed Products
and to inspect LICENSOR's research and development facilities
relating to SPD Emulsions, Light Valve Film and Licensed
Products. The visits of employees of LICENSEE to LICENSOR's
facility shall be carried out within the six-month period
commencing with the Effective Date of this Agreement, and
shall not exceed 200 man-hours during such period.
8.3 Materials and Training. Upon request by LICENSEE,
and to the extent LICENSOR deems appropriate, during the term
of this Agreement, and when mutually convenient to LICENSOR
and LICENSEE, LICENSOR shall supply LICENSEE with training in
LICENSOR's facility and with small quantities of materials
related to Licensed Products and SPD Emulsions for experimental
use only by LICENSEE, and shall charge LICENSEE $1,500 per
man/day plus the cost of any other materials used in providing
such training or making such materials, plus the cost of
shipping such materials to LICENSEE. Upon request by LICENSEE,
during the term of this Agreement and when mutually convenient
to LICENSOR and LICENSEE, LICENSOR may make its personnel
available to consult with LICENSEE and its contractors, with
compensation to LICENSOR for such consultation to be mutually
agreed to by LICENSOR and LICENSEE, and if no such agreement
has been reached, at the rate specified in this first sentence
of this Section 8.1.The respective number of engineers for
dispatch and the duration of their stay shall be agreed to
by LICENSOR and LICENSEE separately from time to time.
All expenses to be incurred in connection with the dispatch
of LICENSOR's engineers, if any. under this Section 8.3
including the traveling and living expenses of such engineers
of LICENSOR to LICENSEE's facility, if such travel to LICENSEE's
facilities is agreed to by LICENSOR, shall be borne and paid
by LICENSEE. Each invoice submitted by LICENSOR for such
service shall include detailed explanations of the charges,
and, if requested by LICENSEE, copies of receipts. The
parties acknowledge that LICENSOR has no obligation to
transfer to LICENSEE any Technical Information other than
as may be embodied in such sample materials, and that,
other than sample materials, if any, that may be supplied
by LICENSOR as aforesaid, LICENSEE will be acquiring
materials from authorized suppliers other than LICENSOR.
8.4 Inquiries. LICENSEE and LICENSOR may also
at any time during the term of this Agreement make
reasonable inquiry by telephone, facsimile or mail
to one another in regard to any information or data
furnished pursuant to this Agreement.
8.5 Visits. If a party supplies the other
with any materials or information, and also during
all visits by either party to the facilities of the
other party, visitors shall comply with all reasonable
rules of the host company, and each party to this
Agreement will indemnify and hold the other party
harmless from any liability, claim or loss whatsoever
(i) for any injury to, or, death of, any of its employees
or agents while such persons are present at the facility
of the other party or working with any such materials or
information; and (ii) for any damages to its own property
or to the property of any such employee or agent which
may occur during the presence of any such person at the
facility of the other party, or while working with any
such materials or information, regardless of how such
damage occurs.
8.6 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the
other shall be used solely for the purposes set forth in
this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall
provide appropriate notices of patents, or other similar notice
of the patent rights of the other party on all products utilizing
the patented inventions of the other party. Either party may
add its own patent notice to any copy or embodiment which
contains its patented inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and
exclusive owner of the patents and patent applications
listed on Schedule A, and that, except for the rights
granted hereunder, LICENSEE shall not have any rights
or attempt to assert any ownership rights in and to
those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement
shall extend from the Effective Date of this Agreement
to the date of termination of this Agreement. Unless
sooner terminated or extended, as herein provided for
below, this Agreement shall terminate upon the expiration
of the later of (A) the last to expire of the patents now
or hereafter listed in Schedule A hereof, and (B) the
expiration of the period in which LICENSEE is obligated
to maintain confidential Technical Information of LICENSOR
pursuant to Section 12.1 hereof.
10.2 Termination by LICENSEE. LICENSEE may
terminate this Agreement effective as of December 31, 2014
or as of any anniversary thereof by giving LICENSOR prior
notice thereof unless sooner terminated as hereinafter provided.
Such notice shall be made in writing and shall be given between
60 and 90 days prior to the effective date for which such
termination is to be effective. Notwithstanding anything
else contained in this Agreement to the contrary, no
notice of termination by LICENSEE shall be effective on
the date given unless such notice shall also be accompanied
by a payment of all amounts due and owing by LICENSEE to
LICENSOR under this Agreement or otherwise at the time
such notice is given, and all additional unpaid amounts
due as of the effective date of termination shall be
paid as of the effective date of such termination. No
acceptance of payment by LICENSOR shall be deemed to be
an acknowledgment by LICENSOR that the provisions of this
Section 10.2 have been complied with, or prejudice any
rights that LICENSOR may otherwise have under this Agreement.
If LICENSEE decides to terminate this Agreement for any
reason, LICENSEE shall provide LICENSOR, along with the
aforementioned notice of termination, with a written
report describing the reasons for such termination.
After the expiration or termination of this Agreement,
LICENSEE shall have no right to sell, and no obligation
to manufacture and deliver, SPD Emulsions, Light Valve
Film or Licensed Products to any Authorized User or to
any other party.
10.3 Termination by LICENSOR. LICENSOR may terminate
this Agreement at any time effective as of December 31, 2014
or as of any anniversary thereof upon at least 30 days'
notice to LICENSEE for any reason, provided, however, that
LICENSOR shall give LICENSEE at least one years' notice of
any early termination under this Section 10.3 if LICENSEE is
producing and selling Licensed Products, SPD Emulsions or
Light Valve Film hereunder. Notwithstanding the foregoing,
LICENSOR may terminate this Agreement at any time upon at
least 30 days' notice to LICENSEE if LICENSEE shall have
failed to make any payment when due or at any time breach
any material term of this Agreement and such payment is
not made or such breach is not cured within any applicable
cure period specified in Article 11 of this Agreement, or
has repeatedly provided inaccurate reports hereunder, or
if there has been a cessation by LICENSEE of general
operations or of work related to SPD Emulsions, Light
Valve Film or Licensed Products.
10.4 Effect of Termination. If this Agreement
expires or is terminated for any reason whatsoever, in
addition to any other remedies which one party may have
against the other: (1) all of LICENSEE's rights and
licenses under this Agreement shall cease, and LICENSEE
shall immediately return to LICENSOR all Technical
Information furnished to LICENSEE under this Agreement,
together with all reproductions, copies and summaries
thereof; provided, however, that LICENSEE may retain
solely for archival purposes one copy of all such
documents in its legal department files, (2) at
LICENSOR's option, LICENSEE shall, within 30 days
of the date of such termination or expiration, either
(A) sell and deliver to LICENSOR at LICENSEE's direct
cost of manufacture any SPD Emulsions, Light Valve Film
or Licensed Products which shall then be in the possession
of LICENSEE, and, if requested by LICENSOR, LICENSEE shall
finish and deliver to LICENSOR any SPD Emulsions, Light
Valve Film or Licensed Products in the process of
manufacture as soon as possible and, in any case, not
later than 30 days after receiving LICENSOR's request,
and/or (B) with respect to any unsold inventory and
work in the process of manufacture, to complete such
work in process and sell any remaining inventory during
the period not to exceed six months from the date of
termination or expiration of this Agreement provided
that at the completion of such six-month period,
LICENSEE shall promptly destroy and dispose of any
SPD Emulsions, Light Valve Film (and SPD Emulsions
and Light Valve Film in the process of manufacture)
and Licensed Products not sold under this Section
10.4 and (3) if this Agreement is terminated for any
reason or expires, upon such termination or expiration,
LICENSEE hereby grants to LICENSOR a nonexclusive,
royalty-free, irrevocable, worldwide license with the
right to grant sublicenses to others to utilize all
technical information, improvements and/or modifications
(whether or not the subject of patents or pending patent
applications) developed or invented by or on behalf of
LICENSEE and/or its sublicensees, subcontractors, or
agents hereunder through the date of such termination
or expiration of this Agreement relating to Light Valves,
Licensed Products, Light Valve Film or SPD Emulsions, and
upon such termination or expiration, LICENSEE shall
provide LICENSOR in reasonable detail complete
information regarding such technical information,
improvements and/or modifications. The foregoing
license shall be self-effectuating, but LICENSEE
agrees upon written notice by LICENSOR at any time
hereafter to deliver to LICENSOR within 30 days of
such notice any document or other instrument reasonably
requested by LICENSOR to convey such license rights to
LICENSOR such as, by way of example, confirmations or
instruments of conveyance or assignment. No termination
of this Agreement by expiration or otherwise shall
release LICENSEE or LICENSOR from any of its continuing
obligations hereunder, if any, or limit, in any way any
other remedy one party may have against the other party.
Notwithstanding the foregoing, LICENSEE's obligations to
LICENSOR under Sections 3.1, 3.2, 3.4, 4.6, 4.7, 4.8, 6.1,
6.2, 7.2, 8.5, 10.2, 10.4, 12.1, and Articles 13 and 14
shall survive any termination or expiration of this Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events
shall constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment when
due in a timely manner or a party's material breach or material
failure to punctually perform any of its duties and obligations
under this Agreement, which material breach or failure, if
curable, remains uncured for thirty (30) days after written
notice of such breach or failure is received by the breaching
party; or (b) a material misrepresentation is made by a party
in any representation or warranty contained in this Agreement
and the misrepresented facts or circumstances, if curable,
remain uncured thirty (30) days after written notice of such
misrepresentation is received by the breaching party; and,
in either case, if such breach or misrepresentation is not
curable, termination shall occur thirty (30) days after such
misrepresentation or breach at the option of the non-breaching
party; or
11.1.2 The failure by a party upon request to provide
the other party with adequate assurances of its performance of
all obligations under this Agreement upon: (a) such first party's
filing of a voluntary petition in bankruptcy; (b) the filing of
any involuntary petition to have such first party declared
bankrupt which has not been dismissed within ninety (90) days
of its filing; (c) the appointment of a receiver or trustee
for such first party which has not been rescinded within ninety
(90) days of the date of such appointment; or (d) such first
party otherwise becoming insolvent or otherwise making an
assignment for the benefit of creditors.
11.2 Default by a Party. If there occurs an Event
of Default with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or
specific performance; and/or
(c) terminate this Agreement and the licenses
granted to LICENSEE hereunder whereupon the non-defaulting
party shall have no further obligations under this Agreement
except those which expressly survive termination, and except
with respect to royalty payments due and owing to LICENSOR
as of the termination date or any subsequent period specified
in Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees
for itself, its sublicensees, and their employees and agents
that for twenty (20) years from the later of the Effective
Date of this Agreement or the latest date of its receipt of
information disclosed to LICENSEE by LICENSOR pursuant to
this Agreement, such information shall be held in confidence;
provided, however, there shall be no obligation to treat as
confidential information which is or becomes available to
the public other than through a breach of this obligation,
or which was already possessed by LICENSEE in writing (or
otherwise provable to be in the possession of LICENSEE)
prior to the Effective Date of this Agreement (and was
not received from LICENSOR) or which is shown by LICENSEE
to have been received by it from a third party who had the
legal right to so disclose it without restrictions and
without breach of any agreement with LICENSOR or its
licensees. The burden of proving the availability of any
exception of confidentiality shall be on the LICENSEE.
LICENSOR shall affix an appropriate legend on all written
documentation given to LICENSEE which contains confidential
information, but the failure to so affix such legend
shall not affect the confidential nature of such
information. LICENSEE acknowledges that the list of
patent applications contained on Schedule A shall be
deemed to be confidential information of LICENSOR.
Other than for the oral information conveyed during
the training conducted pursuant to Sections 8.2 and
8.3 hereof, if any, all of which shall be deemed to
be confidential information, if confidential information
is otherwise conveyed orally by LICENSOR after training
has been completed, LICENSOR shall specify to LICENSEE
at the time such information is being conveyed (or in a
subsequent letter referring to the conversation) that
the information conveyed is confidential. It is
understood and agreed that, unless otherwise provided
in a separate agreement between LICENSEE and LICENSOR,
LICENSEE has no obligation hereunder to provide LICENSOR
with any confidential or proprietary information, and
that LICENSOR shall have no obligation hereunder to
LICENSEE to maintain in confidence or refrain from
commercial or other use of any information which
LICENSOR is or becomes aware of under this Agreement.
The terms and provisions of this Agreement or any other
agreement between the parties shall not be considered
confidential except that LICENSEE may not disclose the
minimum annual royalty payments specified in Article 3
hereof without LICENSOR's prior written consent, and
the parties hereto acknowledge that, pursuant to the
Securities Exchange Act of 1934, as amended, and the
regulations promulgated thereunder, LICENSOR may
file copies of this Agreement with the Securities
and Exchange Commission and with NASDAQ and with
any other stock exchange on which LICENSOR's
securities may be listed. LICENSEE agrees that
for the period of time during which LICENSEE is
obligated to keep information confidential hereunder,
LICENSEE will not make, use, sell, lease or otherwise
dispose of products using or directly or indirectly
derived from confidential information or sample
materials supplied to LICENSEE by LICENSOR or its
licensees, sublicensees, or any of their affiliates
relating to Light Valve Film, SPD Emulsions, Licensed
Products, or Light Valves or which otherwise comprise
suspended particles, which when subjected to a suitable
electric or magnetic field, orient to produce a change
in the optical characteristics of the suspension
("SPD Technology") unless an agreement between LICENSOR
and LICENSEE permitting it to do so is in full force and
effect and the royalties, if any, provided in such
agreement are being paid to LICENSOR on such products.
The foregoing restriction shall not apply to products
(i) which do not directly or indirectly incorporate
SPD Technology, such as, but not limited to, liquid
crystal devices, electrochromic devices, or similar
technology, or (ii) which incorporate technology
involving suspended particles, which when subjected
to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of
the suspension but which is independently developed
and which is not in any way directly or indirectly
derived from any Technical Information of LICENSOR
or its licensees, sublicensees, or any of their
affiliates. LICENSEE shall have the burden of
proving by clear and convincing evidence that the
availability of any exception of confidentiality
exists or that the foregoing restrictions do not
apply to a particular product. Nothing contained
in this section, however, shall be construed as
granting LICENSEE any rights or licenses with
respect to any Technical Information or patents
of LICENSOR or its other licensees or their
sublicensees.
(b) LICENSEE will have the right to provide
materials to, and to disclose information of LICENSOR
to a subcontractor relating to this Agreement; provided,
however, that LICENSEE shall only disclose such
information as is strictly necessary to enable
said subcontractor to perform its manufacturing task,
and provided that prior to disclosing any information
to said subcontractor, said subcontractor has signed
a secrecy agreement with LICENSEE at least as
protective of LICENSOR's Technical Information as
the provisions of this Agreement, including, without
limitation, said subcontractor's specific agreement
to be bound by the provisions of Section 12.1 hereof
to the same extent as LICENSEE. For such purposes,
LICENSEE may develop a standard form of secrecy
agreement for LICENSOR's approval, after which
LICENSEE may use such secrecy agreement with all
subcontractors without LICENSOR's prior approval
of the secrecy agreement being necessary. LICENSEE
shall have all subcontractors sign said secrecy
agreement prior to the disclosure of Technical
Information to said subcontractor, and LICENSEE
shall send LICENSOR a copy of every such secrecy
agreement within thirty (30) days after the
execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party
represents and warrants to the other that:
13.1.1 Valid Agreement. The execution and
delivery of this Agreement by the officer or representative
so doing, and the consummation of the transactions contemplated
hereby, have been duly authorized by all necessary corporate
action by LICENSOR and LICENSEE and this Agreement is a valid
and binding obligation enforceable against the parties in
accordance with its terms, except to the extent limited by
bankruptcy, insolvency, moratorium and other laws of general
application relating to general equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with
its rights and obligations pursuant to any agreement by a
party and any other entity; and
13.1.3 Publicity. The parties shall have the right
to use non-confidential information, including but not
limited to information concerning this Agreement, a description
of the other party and its logos, for marketing, sales,
technical assistance, investor relations, disclosure and
public relations purposes, and that information permitted
to be disclosed by a party under this Section 13.1.3 may
appear on such party's (or its subsidiaries'or sublicensees')
Internet web site, along with links to the Internet web sites,
and specific pages therefrom, of the other party and its
subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR
represents and warrants that it has the right to convey
the rights and licenses granted by this Agreement, and
otherwise to perform its obligations under this Agreement.
LICENSOR has caused its employees who are employed to do
research, development, or other inventive work to disclose
to it any invention or information within the scope of this
Agreement and to assign to it rights in such inventions and
information in order that LICENSEE shall receive, by virtue
of this Agreement, the licenses granted to it under Section
2.1 hereof.
13.2.2 Infringement. As of the date hereof,
LICENSOR is not aware of any claim for patent infringement
or the misappropriation of trade secrets, being asserted
against it by any third party; or of any infringement of
the patents listed on Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto
are currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement
(a) that LICENSEE will be able to develop, manufacture,
sell or otherwise commercialize SPD Emulsions, Light
Valve Film, or Licensed Products, or (b) as to the
validity of any patent.
13.4 Representation. LICENSOR hereby represents
and warrants that, as of the Effective Date hereof, to the
best of its knowledge there have been no claims, actions or
proceedings brought or threatened against it or its licensees
alleging that any SPD Emulsions, Light Valve Film, Licensed Products
and Light Valves manufactured using Technical Information or
other technical information disclosed by LICENSOR constitutes
infringement of any patent or intellectual property right of
any third party, nor is LICENSOR aware of any patent or
intellectual property right of any third party which would be
infringed by LICENSEE's manufacture, use or sale of SPD Emulsions,
Light Valve Film or Licensed Products if LICENSEE's manufacture,
use or sale of SPD Emulsions, Light Valve Film and Licensed
Products is done in strict compliance with the terms and
conditions of this Agreement and only uses Technical
Information disclosed by LICENSOR hereunder.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be
interpreted, construed, governed and enforced in accordance
with and governed by the laws of the State of New York, and
LICENSOR and LICENSEE hereby submit to the exclusive jurisdiction
of the state or federal courts located in the County of Nassau and
State of New York for such purposes.
14.2 Confidentiality In Court Proceeding. In order to
protect and preserve the confidential information of a party which
the parties recognize may be exchanged pursuant to the provisions
of this Agreement, the disclosing party may request, and the
receiving party shall not oppose, the court in any action relating
to this Agreement to enter a protective order to protect information
which is confidential information under Section 12.1 and to seal
the record in the action or to hold the proceedings, or portion
of the proceedings, in camera; provided, that the requested terms
do not prejudice the receiving party's interests. Nothing, however,
shall preclude either party from thereafter moving to unseal its own
records or to have matter and information designated as confidential
under any relevant protective order designated otherwise in
accordance with the circumstances as they shall appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision
that is legal and enforceable and is as nearly as possible consistent
with the intentions underlying the original provision. If the
remainder of this Agreement is not materially affected by such
declaration or finding and is capable of substantial performance,
then the remainder shall be enforced to the extent permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing to
the contrary, the failure of either party to insist in any one or
more instances upon the strict performance of any one or more of the
provisions of this Agreement, or to exercise any right contained in
this Agreement or provided by law, shall not constitute or be
construed as a waiver or relinquishment of the performance of such
provision or right or the right subsequently to demand such strict
performance or exercise of such right, and the rights and obligations
of the parties shall continue unchanged and remain in full force and
effect.
14.5 Captions. The captions and headings in this Agreement
are inserted for convenience and reference only and in no way define
or limit the scope or content of this Agreement and shall not affect
the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign this
Agreement or its rights hereunder without the prior written consent
of LICENSOR except to a successor to substantially all of its
business relating to Light Valves and whose obligations hereunder
are guaranteed to LICENSOR by LICENSEE. LICENSOR may assign all of
its rights and obligations hereunder to any successor to any of its
business interests or to any company controlling or controlled by
LICENSOR. All assignees shall expressly assume in writing the
performance of all the terms and conditions of this Agreement to
be performed by the assigning party, and an originally signed
instrument of such assumption and assignment shall be delivered
to the non-assigning party within 30 days of the execution of
such instrument.
14.7 Schedules. All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth
fully in this Agreement.
14.8 Entire Agreement. This Agreement constitutes the
entire understanding and agreement between LICENSOR and LICENSEE
with respect to the subject matter hereof, supersedes all prior
agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed only
by an agreement in writing which makes specific reference to this
Agreement and which is executed in writing by the parties; provided,
however, that either party may unilaterally waive in writing any
provision imposing an obligation on the other.
14.9 Notices. Any notice required or permitted to be
given or made in this Agreement shall be in writing and shall be
deemed given on the earliest of (i) actual receipt, irrespective
of method of delivery, (ii) on the delivery day following dispatch
if sent by express mail (or similar next day courier service), or
(iii) on the sixth day after mailing by registered or certified air
mail, return receipt requested, postage prepaid and addressed as
follows:
LICENSOR: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President and CEO
Research Frontiers Incorporated
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LICENSEE: ▇▇▇▇▇▇ ▇▇▇, CEO
ID Research Pty Ltd.
ID Research Building,
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or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice
in accordance with this provision.
14.10 Bankruptcy Code. In the event that either party
should file a petition under the federal bankruptcy laws, or that
an involuntary petition shall be filed against such party, the
parties intend that the non-filing party shall be protected in
the continued enjoyment of its rights hereunder to the maximum
feasible extent including, without limitation, if it so elects,
the protection conferred upon licensees under section 365(n) of
Title 17 of the U.S. Code. Each party agrees that it will give
the other party immediate notice of the filing of any voluntary
or involuntary petition under the federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits
hereto have been drafted jointly by the parties and in the event
of any ambiguities in the language hereof, there shall no be
inference drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed
in any number of counterparts, each of which shall be deemed
an original, but all of which shall constitute one and the
same instrument.
14.13 Status of the Parties. The status of the parties
under this Agreement shall be solely that of independent contractors.
No party shall have the right to enter into any agreements on behalf
of the other party nor shall it represent to any person that it has
such right or authority.
The parties, through their duly authorized representatives,
and intending to be legally bound, have executed this Agreement, as
of the date and year first above written, whereupon it became
effective in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President and Chief Executive Officer
Date: February 8, 2010
ID RESEARCH PTY LTD.
By: /s/ ▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇ ▇▇▇, Chief Executive Officer
Date: February 8, 2010
Schedule A
(As of February 8, 2010)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
5,093,041 ▇▇▇▇▇▇ ▇. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,279,773 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Incorporating A
Suspension Stabilized With A Block Polymer"
1/18/94 3/23/12
5,325,220 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve With Low Emissivity
Coating As Electrode"
6/28/94 3/9/13
5,463,491 ▇▇▇▇▇▇ ▇. Check III
"Light Valve Employing a Film
Comprising An Encapsulated Liquid Suspension And
Method of Making Such Film"
10/31/95 11/6/12
5,463,492 ▇▇▇▇▇▇ ▇. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve"
10/31/95 11/6/12
5,461,506 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same"
10/24/95 5/11/13
5,467,217 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same"
11/14/95 5/11/13
5,516,463 ▇▇▇▇▇▇ ▇. Check III et al
"Method of Making Light
Polarizing Particles"
05/14/96 07/08/14
5,650,872 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Valve Containing
Ultrafine Particles"
07/22/97 12/08/14
5,728,251 ▇▇▇▇▇▇ ▇. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve"
03/17/98 09/27/15
5,764,402 ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇; ▇▇▇▇▇▇
▇▇▇▇▇
"Optical Cell Control System"
06/09/98 04/24/15
5,838,482 ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇; ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
"Optical Cell" 11/17/98 05/16/15
5,691,849 ▇▇▇▇ ▇▇▇▇▇▇▇; ▇▇▇▇-▇▇▇▇▇▇▇▇
▇▇▇▇▇▇; ▇▇▇▇▇ ▇▇▇▇
"Rear-View Assembly for a Vehicle
and an Adaptor Therefor"
11/25/97 11/25/14
6,114,405 ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ et al
"Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same"
09/05/00 10/09/17
6,156,239 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Polarizing Material, Liquid
Suspensions and Films Thereof, and
Light Valve Incorporating Same"
12/05/00 02/26/19
6,271,956B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Method and Materials for Enhancing
the Adhesion of SPD Films and Light Valves
Comprising Same"
08/07/01 03/02/20
6,301,040 ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
"SPD Films Having Improved Properties
and Light Valves Comprising Same"
10/09/01 05/24/20
6,334,967 B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Polarizing Particles of
Improved Particle Size Distribution"
01/01/02 12/21/20
(See also listing for PCT/US99/15508)
6,416,827 ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
"SPD Films and Light Valves Comprising
Same" 07/09/02 [10/27/20]
6,429,961B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ et al
"Methods for Retrofitting Windows
With Switchable and Non-Switchable Window
Enhancements and Retrofitted Windows Produced
Thereby" 08/06/02 10/03/20
6,517,746 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al.
"Polyhalide Particles and Light Valves Comprising
Same" 02/11/03 01/05/21
6,522,446 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Anisometrically Shaped Metal Particles,Liquid
Suspensions and Films Thereof And Light Valves
Comprising Same"
02/18/03 04/25/21
6,529,312B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Anisometrically Shaped Carbon and/or
Graphite Particles, Liquid Suspensions and Films
Thereof And Light Valves Comprising
Same" 03/04/03 06/07/19
[See also U.S. Patent No. 6,987,602 filed
December 27, 2002, a continuation-in-part
of this patent]
6,606,185B2 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"SPD Films and Light Valves Comprising Liquid
Suspensions of Heat-Reflective
Particles of Mixed Metal Oxides and Methods of
Making Such Particles"
08/12/03 12/08/14
6,804,040 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, et al
"Method and Device for Controlling Voltage
Provided to a Suspended Particle Device"
10/12/04 02/13/23
6,897,997 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
"Method and Device for Controlling Voltage
Provided to a Suspended Particle
Device" 05/24/05 02/13/23
(continuation-in-part of 6,804,040)
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
6,900,923 "Siloxane Matrix Polymers and SPD
Light Valve Films Incorporating Same"
05/31/05 06/18/23
▇▇▇▇▇▇ ▇. ▇▇▇▇, et al
6,936,193 "SPD Light Valve Film Incorporating
New Suspending Media,and Light Valve
Incorporating Same"
08/30/05 04/14/23
6,987,602 B2 ▇▇▇▇▇▇ ▇. ▇▇▇▇, et al
"Anisometrically Shaped Carbon and/or
Graphite Particles, Liquid Suspensions and Films
Thereof And Light Valves Comprising Same"
01/17/06 06/07/19
(continuation-in-part of patent 6,529,312B1)
7,361,252 ▇▇▇▇▇▇ ▇. Slovak, et al
"Methods for Laminating Films for SPD Light
Valves and SPD Light Valves Incorporating Such
Laminated Films" (claims priority from
60/562,329)
04/22/08 10/26/25
7,417,785 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
"Methods and Circuits for Distributing Power
to SPD Loads" 08/26/08 01/18/25
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
PENDING INTERNATIONAL APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
Patent Number
or
Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
FOREIGN PATENTS AND PATENT APPLICATIONS
Patent Number
or
Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
Schedule B (As of the Effective Date)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR SPD EMULSIONS
Current film making licensees
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR LIGHT VALVE FILM
Current end-product licensees
[INFORMATION REGARDING OTHER AUTHORIZED USERS WILL BE PROVIDED BY
LICENSOR TO LICENSEE FROM TIME TO TIME IN THE FUTURE]