[EXHIBIT 10.41- 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 END-PRODUCT LICENSE
AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
▇. ▇. ▇▇▇▇▇▇ DE NEMOURS AND COMPANY
This License Agreement ("Agreement") is effective as of
the Effective Date by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
▇. ▇. ▇▇▇▇▇▇ DE NEMOURS AND COMPANY, a Delaware
corporation (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 of methods and apparatus relating to
products incorporating such concepts (which products, can
include, without limitation thereto, windows for buildings and
vehicles, sunvisors, sunroofs, flat panel displays, eyewear and
rear-view mirrors); 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 promises 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.
"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 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 or a Light Valve Transportation Vehicle 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, including but not limited to windows for aircraft,
space craft and space-stations, boats and other marine windows,
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. Nothing contained herein
shall permit LICENSEE to sell, lease, or otherwise dispose of a
Light Valve which is not combined or intended to be combined
as described above into a Light Valve Architectural Window
Product or a Light Valve Transportation Vehicle Window
Product.
"Licensed Territory " means all countries of the world except
North and South Korea with respect to sales of Licensed
Products, and all countries of the world with respect to 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 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 either 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.
"Light Valve Transportation Vehicle Window Product" means a
Light Valve used or intended for use solely as a window
(including sunroofs and window panes which are an integral part
of the internal or external structure) integrally incorporated in a
transportation vehicle of a type not designed or primarily
intended for military use. The term "Light Valve Transportation
Vehicle Window Product" shall not include a Light Valve used
or intended for use as a sunvisor, but may include Light Valves
which are used or intended for use in a non-military
transportation vehicle as, or as part of, or are laminated to, or
whose surface area is primarily attached to, a window, sunroof
or windshield. The term "transportation vehicle" shall mean
passenger cars, recreational vehicles, trucks, mobile cranes, and
trains, but shall not include other types of vehicles such as
aircraft, space craft and space-stations, boats, ships and other
watercraft.
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, 2005 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. 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 wholly-owned and controlled
subsidiary of LICENSEE, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing 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. 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 ten percent (10%) 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 15 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 Authorized Users 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 [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.
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) 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 material 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. The results of the
audit shall be kept confidential pursuant to the provisions of
Section 12.1 except to the extent required by a party hereto to
enforce its rights hereunder, or which is otherwise required to be
disclosed by law or under generally accepted accounting
principles.
3.3 Time and Method of Payment. The initial payment
under Section 3.1 shall be paid to LICENSOR within 10 days of
the Effective Date of this Agreement, and each subsequent
payment under Section 3.1 to LICENSOR shall be made on or
before January 31 of each license year commencing January 1,
2005. 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.: 825-
624-290, 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 sale of SPD Emulsions, Light Valve Film to an
Authorized User, or a Licensed Product upon which a royalty is
paid by LICENSEE to LICENSOR pursuant to Section 3.1
hereof), LICENSEE shall include the details of such transaction
in its monthly report under Section 3.1 hereof, and shall pay
LICENSOR a sales commission equal to 10% 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 may 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 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.
Except for any breach of the terms of this Agreement, in no
event shall any party to this Agreement 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 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 work on the development of
Licensed Products, SPD Emulsions and Light Valve Film during
the term of this Agreement.
4.10 Promotional Activities. LICENSEE may undertake to
promote SPD Emulsions, Licensed Products or Light Valve
Films in any manner that LICENSEE reasonably believes will
benefit LICENSEE's activities in the relevant market.
LICENSEE, however, is under no obligation to promote said
products in any particular manner or to any particular degree.
4.11 No other obligations. LICENSEE and LICENSOR
have no other obligations to each other except as expressly
provided in this Agreement.
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.
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. LICENSOR acknowledges that LICENSEE is self-
insured, and as such is not required to acquire or maintain
additional liability insurance.
6.2 Agree to Hold Harmless. LICENSEE, and its
affiliates, successors and assigns and sublicensees (each, a
"Licensed Party"), each hereby agree to hold harmless
LICENSOR and its shareholders, officers, directors, agents and
employees, 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 Licensed Party relating to this Agreement
including a Licensed Party's manufacture, sale, use, lease or
other disposition of SPD Emulsions, Light Valve Film, and
Licensed Products and related materials (other than sales by
LICENSEE to LICENSOR pursuant to Section 4.2 hereof), 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
improvements or modifications which are invented or developed
by or on behalf of LICENSOR prior to the Effective Date of this
Agreement which relate in any way to or are useful in the
design, operation, manufacture and assembly of SPD Emulsions
and/or Light Valve Film or Licensed Products shall be included
in the rights and licenses granted pursuant to Section 2.1 hereof,
and any patents and/or patent applications relating thereto shall
be included on Schedule A hereof.
(b) Any future improvements or modifications invented or
developed by or on behalf of LICENSEE, LICENSEE's
sublicensees and LICENSOR (other than as specifically
described in Sections 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.
(c) During the term of this Agreement each of the parties
hereto agrees to inform the other 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 significant improvements or
modifications (other than as specifically described in Section
7.2(a)) have been made relating to the subject matter of this
Agreement, and as to the general nature of any such
improvements and modifications.
(d) 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. 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 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 (1) a document entitled
Handbook of Technical Information Relating to Variable
Density Optical Devices Incorporating an Activatable Material
which contains confidential and proprietary information of
LICENSOR relating to the materials, specifications,
formulation, manufacturing method and manufacturing
equipment relating to SPD Emulsions, Light Valve Film and
Licensed Products, and (2) 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. To assist LICENSEE's employees
while they are at LICENSOR's facility, LICENSOR's technical
staff shall provide up to 200 man-hours assistance during such
period at no cost to LICENSEE. Additionally, there shall be no
cost to LICENSEE for materials used for training during the
initial training at LICENSOR's facility.
8.3 Materials and Additional Training. Upon request by
LICENSEE during the term of this Agreement, and when
mutually convenient to LICENSOR and LICENSEE,
LICENSOR shall supply LICENSEE with additional training in
LICENSOR's or LICENSEE's facility and with small quantities
of materials related to SPD Emulsions for experimental use only
by LICENSEE, and shall charge LICENSEE $750 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. 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 under this Section 8.3 including the
traveling and living expenses of such engineers of 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 by LICENSOR to LICENSEE
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 if patent marking is
required by law or to protect a party's intellectual property
rights. 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 the Agreement effective as of the second anniversary
of the date that LICENSE has completed its training pursuant to
Section 8.2 hereof, with adequate notice as herein provided. At
the second anniversary if notice of termination of this
Agreement has not been provided LICENSOR, LICENSEE may
not effectively terminate this Agreement until December 31,
2008 or on any anniversary thereof. Termination by LICENSEE
shall be effected by giving LICENSOR prior notice thereof.
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. 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, 2008 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 60 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 repeatedly provide
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, either (A) sell and deliver to LICENSOR under the
terms specified in Section 4.2 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 on or before December
31, 2008, 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 of this Agreement relating to Light
Valves, Licensed Products, Light Valve Film or SPD Emulsions
which relate to or arise out of Technical Information disclosed
by LICENSEE to LICENSOR, and upon such termination,
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. 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 Technical
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. Should any
dispute arise between LICENSOR and LICENSEE in
connection with this Agreement, LICENSOR and LICENSEE
shall first endeavor to settle such dispute in an amicable manner
through mutual consultation.
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: ▇▇▇▇▇▇ ▇. ▇▇▇▇, Chairman and CEO
Research Frontiers Incorporated
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Global Product Manager
Glass Laminating Solutions
▇. ▇. ▇▇▇▇▇▇ de Nemours and Company
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇
Facsimile:(302)773-263
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
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/ ▇▇▇▇▇▇ ▇. ▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇, Chairman and CEO
Date: April 13, 2004
▇. ▇. ▇▇▇▇▇▇ DE NEMOURS AND COMPANY
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Vice President R&D, P & IP
Date: April 13, 2004
Schedule A
(As of April 13, 2004)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
(*-indicates a patent with respect to non-US filings)
Date Expiration
Patents in the United States Issued Date
4,772,103 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Containing an Improved
Suspension, and Liquids Therefor" 9/20/88 8/8/06
5,002,701 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 3/26/08
4,877,313 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Polarizing Materials and
Suspensions Thereof" 10/31/89 2/10/09
5,093,041 ▇▇▇▇▇▇ ▇. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92
10/31/06
5,279,773 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
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
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,764,402 ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇; ▇▇▇▇▇▇ ▇▇▇▇▇
"Optical Cell Control System" 06/09/98
xx/xx/xx
5,838,482 ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇; ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
"Optical Cell" 11/17/98 xx/xx/x
x
5,691,849 ▇▇▇▇ ▇▇▇▇▇▇▇; ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇; ▇▇▇▇▇ ▇▇▇▇
"Rear-View Assembly for a Vehicle
and an Adaptor Therefor" 11/25/97
xx/xx/xx
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 05/24/2
0
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
Date Expiration
Patents in the United States Issued Date
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 04/25/2
1
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 Application No. 10/330,645 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 12/08/1
4
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]
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
Name of Customer Licensed Application Permitted Territory
Research Frontiers Incorporated All applications
Worldwide
Air Products and Chemicals, Inc. Light Valve Film for sale to
other specified Worldwide
licensees of Research Frontiers
Film Technologies International, Inc. Light Valve Film for
sale to other specified Worldwide
licensees of Research Frontiers
General Electric Company Light Valve Film for sale to
other specified Worldwide
licensees of Research Frontiers
Hankuk Glass Industries, Inc./SPD Inc. Light Valve Film for sale to
other specified Worldwide
licensees of Research Frontiers
Hitachi Chemical Co., Ltd. Light Valve Film for sale to
other specified Worldwide
licensees of Research Frontiers
Isoclima S.p.A. Light Valve Film for sale to
other specified Worldwide
licensees of Research Frontiers
N.V. Bekaert S.A. Light Valve Film for sale to
other specified Worldwide
licensees of Research Frontiers
Polaroid Corporation Light Valve Film for sale to
other specified Worldwide
licensees of Research Frontiers
Schedule B (Continued)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR LIGHT
VALVE FILM
Name of Customer
Licensed Application Permitted Territory
Research Frontiers Incorporated All applications
Worldwide
American Glass Products Architectural and automotive windows
Worldwide
(except Korea)
AGC Automotive Americas Sunroof glass for other licensees
Worldwide
Asahi Glass Co. Sunroof glass for other licensees
Worldwide
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ Corp. SPD displays
Worldwide
BOS GmbH Variable light transmission sunshades and
sunvisors
Worldwide
BRG Group, Ltd. Architectural and automotive windows
Worldwide
(except Korea)
Cricursa ▇▇▇▇▇▇▇▇▇ Curvados S.A. Architectural and automotive windows
Worldwide
(except Korea)
Custom Glass Corporation Windows and sunroofs for mass
transit trains/busses Worldwide
(except Korea)
Glaverbel, S.A. Automotive vehicle rear-view mirrors,
Worldwide
transportation vehicle sunvisors,
and (except Korea
architectural and automotive
windows
for
windows)
Global Mirror GmbH Rear-view mirrors and sunvisors
Worldwide
Hankuk Glass Industries Inc./SPD Inc. Broad range of SPD light control
products
Worldwide
including windows, flat panel
displays,
automotive vehicle rear-view mirrors and
sunvisors (installed as original equipment
on Korean-made cars), and sunroofs; SPD film
for licensees and prospective licensees
Innovative Glass Corporation Architectural windows
U.S., Canada,
and Mexico
InspecTech Aero Service, Inc. Aircraft and marine windows and cabin
dividers
Worldwide
(except Korea)
Isoclima S.p.A. Architectural and automotive windows
Worldwide
(except Korea)
Kerros Ltd. (IntelliTint) Automotive windows and sunroofs
Worldwide
(except Korea)
Laminated Technologies, Inc./LTI Smartglass Licensed to provide laminated
SPD-Smart
glass
Worldwide
to other licensees of Research Frontiers and for
certain (except Korea
architectural window products to existing
customers. for windows)
Leminur, Ltd. Architectural windows Russian
Federation,
Armenia,
Azerbaijan,
Belarus,
Estonia, Georgia,
Kazakhstan,
Kyrgyz
Republic, Latvia,
Lithuania,
Moldova,
Tajikistan,
Turkmenistan,
Ukraine,
and Uzbekistan.
N.V. Bekaert S.A. Architectural and automotive windows
Worldwide
(except Korea)
▇▇▇▇▇▇▇▇▇▇ plc Licensed to provide laminated SPD-Smart
glass
Worldwide
to other licensees of Research Frontiers.
Prelco Inc. Architectural windows, train and bus
windows U.S., Canada,
and Mexico
SmartGlass Ireland Ltd. Architectural windows
Republic of
Ireland
SPD Technologies, Inc. Architectural windows
Worldwide
(except Korea)
Saint-Gobain Glass France, SA Architectural windows, automotive and
other Worldwide
transportation vehicle windows
(other than aircraft (except Korea)
and spacecraft), kitchen and
laundry home appliance
windows, and automotive
sunvisors and rear-view
mirrors for cars, SUVs, light trucks
and other
transportation vehicles (other than
as original equipment
mirrors on heavy trucks, busses,
construction vehicles,
firetrucks and other vehicles in
Class 5-8 or weighing
over 16,000 pounds)
SPD Systems, Inc. Architectural, marine and appliance
windows
Worldwide
(except Korea)
ThermoView Industries, Inc. Architectural windows
Worldwide
(except Korea)
Traco Inc. Architectural windows
Worldwide
(except Korea)
Vision (Environmental Innovation) Ltd. Architectural windows
United Kingdom
[INFORMATION REGARDING OTHER AUTHORIZED USERS WILL BE
PROVIDED BY LICENSOR TO LICENSEE FROM TIME TO TIME IN THE
FUTURE]