[EXHIBIT 10.34- 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 SMART WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
SAINT-GOBAIN GLASS FRANCE S.A.
This License Agreement ("Agreement") effective as of June 16,
2003 by and between RESEARCH FRONTIERS INCORPORATED,
a Delaware corporation ("LICENSOR") and SAINT-GOBAIN GLASS
FRANCE S.A., a corporation organized under the laws of France and
a wholly-owned and controlled subsidiary of Compagnie de Saint-
Gobain S.A. ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to Light
Valves and Licensed Products (both as hereinafter defined) and of
methods and apparatus relating to products incorporating such
concepts; 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; 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 "Applicable Percentage" for each calendar year shall be 8% for the
calendar years 2003 and 2004, 7% for the calendar years 2005, and
2006, 6% for the calendar years 2007 and 2008, and 5% for each
calendar year thereafter.
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.
"Licensed Product" means a Light Valve Architectural Window
Product, Light Valve Transportation Vehicle Window Product, Light
Valve Appliance Window Product, Light Valve Sunvisor Product, or
a Light Valve Automotive Mirror 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 other window products not specifically defined herein,
including but not limited to windows for aircraft, space craft and
space-stations, and non-window products such as but not limited to
displays, eyewear, and toys. 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, Light Valve Transportation Vehicle Window
Product, Light Valve Appliance Window Product, Light Valve
Sunvisor Product, or a Light Valve Automotive Mirror Product
incorporating a Light Valve. A Licensed Product shall include Light
Valve Architectural Window Products and Light Valve Transportation
Vehicle Window Products used for security (i.e. armored and bullet-
resistant) glazings, as well as a Light Valve placed in front of an
information display to enhance the contrast of the information shown
on the display.
"Licensed Territory " means all countries of the world except North
and South Korea, and shall include North and South Korea at such
time, if ever, that any exclusive license given in North or South Korea,
including any future extensions thereof, expires.
"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 in the form a liquid suspension, gel, film or
other material. LICENSEE's current liquid crystal windows such as are
being sold under the Privalite name shall not be considered a Light
Valve.
"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 Appliance Window Product" means a Light Valve
intended for use and used solely as a viewing window on or in kitchen
and laundry home appliances, including but not limited to ovens,
ranges, refrigerators, freezers, stoves, dishwashers, automatic washers,
clothes dryers, domestic ice makers, wine coolers, trash compactors
and microwave ovens, but shall not include Light Valves used or
intended for use as or in any other type of appliance product.
"Light Valve Automotive Mirror Product" means a means a Light
Valve used or intended for use solely as an interior or exterior mirror
(other than a vanity or cosmetic mirror) attached to and used in
Transportation Vehicle, but shall not include an interior or exterior
mirror attached to and installed as original equipment in non-military
and commercial automotive vehicles classified in Class 5 through 8,
namely trucks, buses, construction vehicles, firetrucks, and other
specialty land vehicles, all with gross vehicle weights over 16,000
pounds.
"Light Valve Sunvisor Product" means a Light Valve intended for use
and used solely as a sunvisor (which may comprise more than one
segment) attached to the interior of Transportation Vehicle in the
manner hereinafter described, which is capable of being controlled
automatically or by the user to protect the user's eyes from sunlight or
glare, and each segment of which has a viewing area no larger than
0.25 (one-quarter) square meter. A Light Valve Sunvisor Product must
either be (a) attached to the interior of a window or windshield, the
interior of the body, or to an accessory on the inside, of a
Transportation Vehicle by means of a relatively small rod, post or hinge
mechanism, or (b) attached to the housing of a rear-view mirror inside
such Transportation Vehicle provided that the sunvisor so attached is
not used to obstruct the mirror so as to vary the reflectivity of such
mirror, and is only used to block sunlight or glare next to such mirror.
"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. 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
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 "Net Selling Price" of a Licensed Product on which royalties are
payable shall be the larger of the following: (A) the genuine bona fide
arm's length selling price of Processing Sublicensee hereunder ex
works Processing Sublicensee's factories at which customers (which
customers can be affiliated or non-affiliated with such Processing
Sublicensee, provided that LICENSEE or its Processing Sublicensee(s)
does not discriminate against non-affiliated customers, provided that
Processing Sublicensee may charge different prices for different
customers if there is a commercially reasonable reason for doing so
such, but not limited to, as differences in sales volumes) are billed in
the usual course of business for a Licensed Product; (B) $50 in the case
of a Licensed Product which has a surface area of less than two square
feet, and $100 in the case of a Licensed Product which has a surface
area of at least two square feet. The aforementioned $50 and $100
figures specified in clause (B) above shall be adjusted upward as of
each January 1st hereafter beginning on January 1, 2004 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 ex works Processing Sublicensee's factories, 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 total amount of
deductions for clause (iv) above may not constitute more than 15% of
the gross selling price of said product, if any. LICENSOR and
LICENSEE acknowledge that neither LICENSEE nor its Processing
Sublicensee(s) currently provide, nor intend to provide, wiring,
installation and related services with respect to Licensed Products. If
these services are included in the future, the Net Selling Price shall
include amounts charged for any wiring, installation, and related
services provided by Processing Sublicensee hereunder.
"Processing Sublicensee" shall mean LICENSEE's sublicensee(s) who
will be processing (i.e. laminating SPD film into a glazing) the
Licensed Products. The parties hereto understand that all
manufacturing, sales, leases or other dispositions of Licensed Products
under this Agreement shall be carried out by a Processing Sublicensee,
and if no such sublicensee has been designated by LICENSEE to be the
Processing Sublicensee hereunder to carry out such activities, then
Processing Sublicensee shall mean LICENSEE. At the Effective Date,
Techniver, SA will be the Processing Licensee and will consolidate and
report all sales of Licensed Products for purposes of fulfilling
LICENSEE's reporting obligations under Section 3.1 hereof.
"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 Light Valves, Licensed Products and/or to the suspensions or other
components used or usable for Licensed Products or Light Valves
including, but not limited to, particles, particle precursors, coatings,
polymers, liquid suspensions and suspending liquids, or any
combination thereof, and that consist of concepts invented or developed
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.
"Transportation Vehicle" shall mean passenger cars, recreational
vehicles, boats, trucks, mobile cranes, and trains, but shall not include
other types of vehicles such as military vehicles, aircraft, space craft
and space-stations.
2 GRANT OF LICENSE.
2.1 License. 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, if added
in the future pursuant to the provisions of Section 7.2(c) hereof,
hereafter listed on Schedule A attached hereto or (ii) unexpired patents
which issue from pending patent applications now or, if added in the
future pursuant to the provisions of Section 7.2(c) hereof, hereafter
listed in Schedule A, to make, have made, and to lease, sell, or
otherwise dispose of Licensed Products in the Licensed Territory.
2.2 No Other Rights. LICENSEE agrees that, except for the
specific licenses granted to it under Section 2.1 hereof for use in
Licensed Products, LICENSEE has not acquired any rights or licenses
under this Agreement to use Light Valves or any components thereof
made by or for LICENSEE or its sublicensees pursuant to this
Agreement.
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 which agree in writing 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 after the execution thereof. LICENSOR may
terminate any such sublicense if there is any change in the ownership
or control of a sublicensee.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-
KEEPING.
3.1 Royalties and Reports on Net Sales. During the term of this
Agreement, LICENSEE agrees to pay, or cause Processing Sublicensee
to pay, LICENSOR an earned royalty which shall be the Applicable
Percentage 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 hereof, and which are manufactured by or for
Processing Sublicensee and sold, leased, used or otherwise disposed of
by or for Processing Sublicensee. Payments under this Section 3.1
shall be made on a quarterly basis and made within 45 days after the
end of the calendar quarter in which such Licensed Products were sold,
leased, used or otherwise disposed of by or for Processing Sublicensee
hereunder. Each royalty payment shall be in U.S. dollars and shall be
accompanied by a statement by Processing Sublicensee showing in
reasonable detail the amount of Licensed Products sold, used, leased or
otherwise disposed of by or for Processing Sublicensee during the
preceding quarter, any deductions taken or credits applied, and the
currency exchange rate used to report sales made in currencies other
than U.S. dollars. Processing Sublicensee shall use the exchange rates
for buying U.S. dollars in effect on the last day of each quarter, as
specified in The New York Times. The first such statement shall cover
the period from the Effective Date of this Agreement to the end of the
first calendar quarter in which a Licensed Product is sold, used, leased
or otherwise disposed of by or for Processing Sublicensee. Upon
LICENSEE's request, but no more frequently than once a year,
Processing Sublicensee shall furnish to LICENSOR at the same time
it becomes publicly available, a copy of brochures published or
distributed by Processing Sublicensee relating to Licensed Products.
Failure to provide such materials shall not be considered a material
breach of this Agreement. Although sales reports must still be
submitted quarterly as outlined above, notwithstanding anything
contained in this Section 3.1 to the contrary, during the calendar years
2003, 2004 and 2005, Processing Sublicensee may pay earned royalties
under this Section 3.1 for the entire calendar year on or before
December 31 of such calendar year provided that Processing
Sublicensee has complied on a timely basis with all of its reporting and
other obligations under this Agreement.
3.2 Minimum Royalties - Regardless of whether Processing
Sublicensee is selling any Licensed Products, during the term of this
Agreement LICENSEE agrees to pay LICENSOR the non-refundable
minimum annual 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]
3.3 Time and Method of Payment. The initial payment under
Section 3.2 shall be paid to LICENSOR within 10 days of the Effective
Date of this Agreement, and each subsequent payment under Section
3.2 to LICENSOR shall be made on or before January 31 of each
license year commencing January 1, 2004. 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 ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ 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 Sales, Use and Returns. 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.
3.5 Recordkeeping. LICENSEE shall keep and shall cause each
Processing Sublicensee to keep for six (6) years after the date of
submission of each statement supported thereby, true and accurate
records, files and books of accounts that relate to Licensed Products,
all data 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 France) may audit
such records, files and books of accounts to determine the accuracy of
the statements given by Processing Sublicensee pursuant to Section 3.1
hereof. Such an audit shall be made upon reasonable advance notice to
Processing Sublicensee and during usual business hours no more
frequently than annually. The cost of the audit shall be borne by
LICENSOR, unless the audit shall disclose a breach by Processing
Sublicensee of any term of this Agreement, or an underpayment error
in excess of five percent of the total monies paid to LICENSOR by
Processing Sublicensee during the audited period, in which case
Processing Sublicensee shall bear the full cost of such audit.
Processing Sublicensee 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.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation, any
manufacture, sale, lease, use or other disposition of Licensed Products
that is not in strict accordance with the provisions of this Agreement
shall be deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct recipients
of Licensed Products to whom Licensed Products are 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. LICENSEE
agrees to take all steps to reasonably assure itself that Licensed
Products sold, leased or otherwise disposed of by or for LICENSEE are
being used for permitted purposes only.
4.3 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
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 and LICENSOR each represent and warrant to the other
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.
4.4 Purchase of Components from Others. By virtue of the
disclosure of Technical Information and information, 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
of 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
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.
4.5 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.
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 Licensed Product,
material, Component or information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it will only
incorporate Components received from authorized suppliers into
Licensed Products 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.
4.7 Personnel. LICENSEE agrees to assign personnel from its
technical staff who shall be responsible for the development of
Licensed Products during the term of this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Licensed Products or, in the case of
LICENSOR, 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 Licensed Products or, in the case of LICENSOR, products
incorporating Light Valves, under such ▇▇▇▇ or marks, and may use the
adopting party's logo in connection therewith. If legally required for
the protection of LICENSOR's intellectual property, 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, and LICENSEE shall have reasonable
discretion on how it complies with the provisions of this Section 5.1.
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.
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 or relating to an Indemnifying Party's
manufacture, sale, use, lease or other disposition of 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 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, and/or to the suspensions or other components used
or usable in Licensed Products 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.
(b) 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 have been made relating to the subject
matter of this Agreement, and as to the general nature of any such
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. However, other than Technical Information disclosed on
or prior to the Effective Date of this Agreement, any future information
about improvements and modifications which LICENSOR wishes to
directly disclose to LICENSEE shall first be described by LICENSOR
to LICENSEE in a general non-confidential way and LICENSEE may
then request by written notice that LICENSOR disclose to LICENSEE
the more detailed Technical Information which would be subject to the
Confidentiality and other provisions of Section 12.1.If LICENSEE does
not request by written notice that such Technical Information be
disclosed to it, then the disclosure of such information by LICENSOR
shall not extend the time period provided for in Section 12.1. In
connection therewith, LICENSOR, may voluntarily add patents and/or
patent applications to Schedule A hereof and LICENSOR shall provide
LICENSEE with written notice listing such additional patents and/or
patent applications to be so added to Schedule A hereof. Such patents
and patent applications shall not be incorporated into Schedule A
unless LICENSEE shall notify LICENSOR within ninety (90) days of
LICENSOR's notice that LICENSEE agrees to add such patents and
patent applications to Schedule A, in which case such patents or patent
applications shall be added to Schedule A effective as of the date of the
original notice by LICENSOR. No addition of any patent or patent
application to Schedule A hereof nor any disclosure of any information
by LICENSOR shall in any way establish a course of dealing or
otherwise require LICENSOR to add any future patents or patent
applications to Schedule A hereof or 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, if added in the future pursuant to the provisions of
Section 7.2(c) hereof, 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 any such patent application and resulting
patents specifically so designated by LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. Materials. Upon request by LICENSEE, during the term of
this Agreement and when mutually convenient to LICENSOR and
LICENSEE, LICENSOR shall supply LICENSEE with small quantities
of materials related to Licensed Products for experimental use only by
LICENSEE, and shall charge LICENSEE $750 per man/day plus the
cost of any other materials used in making such materials, plus the cost
of shipping such materials to 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.
8.2 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.
8.3 Visits. During all visits (such visit to be authorized in writing
by the party concerned) 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; 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, regardless of how such damage occurs.
8.4 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. To the extent required by law
and only in territories where it is so required and requested by a party,
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
last to expire of the patents (or patents issuing from patent applications)
now or, if added in the future with LICENSEE's consent pursuant to
the provisions of Section 7.2(c) hereof, hereafter listed in Schedule A
hereof (the "Licensed Patents"). Except as specifically provided for in
Section 10.4 with respect to certain Licensed Products that may be sold
out of inventory by LICENSEE shortly after the termination of this
Agreement, if this Agreement shall terminate (other than through
expiration after the last to expire of the Licensed Patents), all rights and
licenses granted under Section 2.1 hereof shall terminate and
LICENSEE shall have no obligation to pay royalties to LICENSOR
pursuant to Section 3.1 hereof after such termination. Notwithstanding
anything to the contrary in this Agreement, if this Agreement has not
been terminated prior to its expiration by LICENSEE pursuant to
Section 10.2 hereof, or by LICENSOR pursuant to the second sentence
of Section 10.3 hereof, and this Agreement then so expires, then upon
the last to expire of the Licensed Patents, the present license shall be
fully paid up and LICENSEE shall have the nonexclusive royalty-free
license to use the Technical Information received by it now or, if
provided in the future to LICENSEE with LICENSEE's consent
pursuant to the provisions of Section 7.2(c) hereof, to make, have
made, and to lease, sell or otherwise dispose of Licensed Products.
10.2 Termination by LICENSEE. LICENSEE may terminate this
Agreement for any reason effective as of December 31, 2006 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. 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.
10.3 Termination by LICENSOR. LICENSOR may terminate
this Agreement at any time effective as of December 31, 2006 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 year's notice of any early termination under this Section
10.3 if LICENSEE is producing and selling Licensed Products
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 repeatedly provide
inaccurate reports hereunder, or if there has been a cessation by
LICENSEE of general operations or of work related to Licensed
Products.
10.4 Effect of Termination. Except for the royalty-free license
specifically provided for in the last sentence of Section 10.1 which may
become effective upon the expiration of this Agreement, 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 at
LICENSEE's direct cost of manufacture any Licensed Products which
shall then be in the possession of LICENSEE, and, if requested by
LICENSOR, LICENSEE shall finish and deliver to LICENSOR any
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 Licensed Products (and Licensed Products
in the process of manufacture) not sold under this Section 10.4 and (3)
if this Agreement is terminated for any reason on or before December
31, 2006, 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 (but only if 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, or Licensed Products, 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, and
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 (to the
extent that Licensed Products have been sold by LICENSEE but such
sale has not yet been reported by LICENSEE and a royalty paid
thereon) , 3.5, 4.2, 4.3, 4.4, 4.5, 4.6, 6.1, 6.2, 8.3, 8.4, 10.1, 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 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 (subject to the provisions and
limitations contained in Section 7.2(c) hereof), 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. 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 is confidential information of LICENSOR. If confidential
information is otherwise conveyed orally by LICENSOR, 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 payment terms 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 Licensed Products, Light Valves, or
Components, 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, or
electrochromic devices, 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, 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, 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 Internet web site. Any links between
LICENSOR's and LICENSEE's, or their subsidiaries' and
sublicensees', Internet web sites shall require the consent of such
parties. The parties have agreed on the initial press release which shall
be issued in conjunction with this License Agreement, and both parties
must agree prior to issuing any subsequent formal press releases
regarding this License Agreement. Neither party may unreasonably
withhold or delay any consent if the other party has been advised in
writing (with a copy of such written communication being provided to
the other party) by its lawyers or accountants that such press release is
necessary under Generally Accepted Accounting Principles or under
other applicable laws or regulations. The parties agree that any agreed-
upon press release may be issued over the news wires such as
BusinessWire or PR Newswire, as well as placed on the issuing party's
Internet web site, but that copies of the press release may not be
emailed to mass distribution lists by a party without the other party's
consent.
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 Licensed Products, or (b) as to the validity of any
patent.
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: ▇▇▇▇▇▇ ▇. ▇▇▇▇, Chairman and CEO
Research Frontiers Incorporated
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE: ▇▇▇▇-▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Deputy Director,Technology
Saint-Gobain Glass France S.A.
"Les Miroirs"
▇▇, ▇▇▇▇▇▇ ▇'▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇
Facsimile: (▇▇) ▇ ▇▇ ▇▇ ▇▇ ▇▇
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.
14.14 Schedule A. Schedule A lists, to the best of LICENSOR's
knowledge, all patents and patent applications relating to Licensed
Products owned or controlled by LICENSOR as of the Effective Date.
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
Date: June 16, ▇▇▇▇
▇▇▇▇▇-▇▇▇▇▇▇ GLASS FRANCE S.A.
By:/s/ ▇▇▇▇-▇▇▇ Dechoux-Vice
▇▇▇▇-▇▇▇ Dechoux-Vice President R&D
Date: June 16, 2003
Schedule A
(As of June 16, 2003)
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 07/22/14
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/xx
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 2/26/19
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
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 04/25/21
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 Application No. 10/330,645 filed
December 27, 2002, a continuation-in-part of this
patent]
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