[EXHIBIT 10.30- 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.]
SPD-SMART WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
CUSTOM GLASS CORPORATION
This License Agreement ("Agreement") effective as of April
17, 2003 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
CUSTOM GLASS CORPORATION, a Delaware corporation
("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 is also interested in laminating Light
Valve Film to glass or plastic ("Laminated Light Valve Film") and
providing such Laminated Light Valve Film to other licensees of
LICENSOR; 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.
"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 Laminated 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 Laminated Light Valve Film
laminated by LICENSEE may be sold, leased or transferred to such
person or entity, and/or the application that such Laminated 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 Laminated 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 Laminated Light Valve Film is making any improper use
of such Laminated Light Valve Film, in which case LICENSEE shall
promptly notify LICENSOR of such improper use.
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 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 other
window products not specifically defined herein, including but not
limited to windows for boats and other watercraft, aircraft, space
craft and space-stations, and non-window products such as but not
limited to displays, eyewear, sunvisors, toys, mirrors or filters for
scientific instruments, lamps or contrast enhancement of displays.
The term "display" means any device for displaying letters, numbers,
images or other indicia or patterns. 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 Transportation Vehicle Window
Product.
"Licensed Territory " means the United States, Canada and Mexico.
"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.
"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 mass 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 "mass transportation
vehicle" shall mean busses, trains (including light rail trains and
monorails), used for mass transit, but shall exclude passenger cars,
recreational vehicles, trucks, mobile cranes, construction vehicles,
boats or other watercraft, aircraft, space craft and space-stations and
other types of vehicles not specifically enumerated above.
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, 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 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.
"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.
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
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 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 or to make Laminated Light Valve Film under
Section 2.4 hereof, 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 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.
2.4 Lamination Work for other Licensees of Research
Frontiers. In addition to the rights and licenses granted hereunder,
LICENSEE may laminate Light Valve Film obtained by LICENSEE
from suppliers of such Light Valve Film authorized to supply such
Light Valve Film to LICENSEE, and to provide such Laminated
Light Valve Film solely to an Authorized User in the Authorized
User's permitted territory and for the applications specified and
purpose permitted on Schedule B hereof. The license granted
pursuant to this Section 2.4 shall be royalty-free to LICENSEE and
its permitted sublicensees hereunder. By virtue of the disclosure of
Technical Information and training, if any, provided by LICENSOR
under this Agreement, all Laminated 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 the lamination and
disposition of Laminated Light Valve Film and, except as otherwise
specifically provided for elsewhere in this Agreement, nothing
contained in this Section 2.4 shall permit LICENSEE to make, sell,
use or otherwise dispose of other Light Valve products, including
Light Valves and Light Valve Film and components thereof.
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 LICENSOR an earned royalty
which shall be ten percent (10%) (subject to Section 3.3 hereof) 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
LICENSEE and sold, leased, used or otherwise disposed of by or for
LICENSEE or a permitted sublicensee. Payments under this Section
3.1 shall be made on a quarterly basis and made within 15 days after
the end of the calendar quarter 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 quarter,
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 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 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. In addition to the foregoing report,
Within 15 days after the end of each fiscal quarter, LICENSEE shall
also send to LICENSOR a quarterly report setting forth in reasonable
detail the quantity of Light Valve Film purchased or otherwise
obtained by LICENSEE and the quantity of Laminated Light Valve
Film sold, leased, disposed of, or delivered by or for LICENSEE and
its sublicensees during such quarter 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.
3.2 Minimum Royalties - Regardless of whether LICENSEE is
selling any Licensed Products, during the term of this Agreement
LICENSEE agrees to pay LICENSOR the non-refundable minimum
royalties (in U.S. Dollars) specified below for each of the stated
periods:
[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.
Notwithstanding the foregoing, [Confidential Information Omitted
and filed separately with the Securities and Exchange Commission]
if LICENSEE elects, by checking the following box [ X ] to pay a
fifteen percent (15%) earned royalty on sales of Licensed Products
under Section 3.1 hereof. All other payments shall be due on the date
specified in this Agreement, or if no date is specified, within 30 days
of invoice. All payments made to LICENSOR shall be paid by wire
transfer of immediately available funds to the account of Research
Frontiers Incorporated at Chase Manhattan Bank, ▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, Account No.: ▇▇▇-▇▇▇-▇▇▇, ABA
Wire Code No.: 021 000 021, or to such other account or place, as
LICENSOR may specify in a notice to LICENSEE.
3.4 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 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) 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 no more frequently than annually. The cost of the audit shall
be borne by LICENSOR, unless the audit shall disclose a breach by
LICENSEE of any term of this Agreement, or an underpayment error
in excess of two percent of the total monies paid 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.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of Laminated
Light Valve Film or 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 Laminated Light Valve Film or 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 Laminated Light Valve Film or Licensed
Products. LICENSEE agrees to take all steps to reasonably assure
itself that Laminated Light Valve Film or Licensed Products sold,
leased or otherwise disposed of by or for LICENSEE is being used
for permitted purposes only. If a party which is not then listed on
Schedule B hereto wishes to obtain samples of Laminated Light
Valve Film or to purchase Laminated 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 Laminated
Light Valve Film from LICENSEE.
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
Laminated Light Valve Film and 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 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.
4.4 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 Laminated Light Valve Film or 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 Sections 2.1 and 2.4 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 Light Valve Film or
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 Laminated Light Valve Film or 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
Laminated Light Valve Film or Licensed Products during the term of
this Agreement.
4.8 LICENSOR Purchases. Upon request of LICENSOR and
with reasonable prior notice, LICENSEE shall sell and deliver to
LICENSOR, Laminated 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 or laminate for them)
and sell Light Valve Film under the terms of agreements between
them and LICENSOR, or may independently manufacture, laminate
and sell Light Valve Film 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 Laminated Light Valve Film from LICENSEE.
Notwithstanding anything contained herein to the contrary, during
the term of this Agreement LICENSOR may provide Laminated
Light Valve Film obtained by LICENSOR pursuant to this Section
4.8 to third parties so long as LICENSOR does not receive from the
recipient for the provision of such Laminated Light Valve Film any
monetary payment in excess of LICENSOR's purchase price plus
shipping, administrative, overhead and related costs to such
recipient.
4.9 Inventory. [Confidential Information Omitted and filed
separately with the Securities and Exchange Commission]
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for 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
Licensed Products, Laminated Light Valve Film, 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. Upon request,
LICENSEE shall provide LICENSOR of evidence of such insurance.
6.2 Indemnification. LICENSEE, and its affiliates, successors
and assigns and sublicensees (each, an "Indemnifying Party"), each
hereby indemnify and agree to hold harmless LICENSOR and its
shareholders, officers, directors, agents and employees (each, an
"Indemnified Party"), against any liability, damage, loss, fine,
penalty, claim, cost or expense (including reasonable costs of
investigation and settlement and attorneys', accountants' and other
experts' fees and expenses) arising out of any action or inaction by
any Indemnifying Party relating to this Agreement including an
Indemnifying Party's manufacture, sale, use, lease or other
disposition of Laminated Light Valve Film or 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 Laminated Light Valve Film or 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. In connection therewith,
LICENSOR, may voluntarily add patents and/or patent applications
to Schedule A hereof. No disclosure of any information by
LICENSOR shall in any way establish a course of dealing or
otherwise require LICENSOR to make any future disclosure of
information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that any
patent application now or hereafter listed on or incorporated into
Schedule A shall be filed or maintained in any foreign country
included in the Licensed Territory. If so designated and if legally
possible to do so, LICENSOR agrees to promptly file, prosecute and
maintain such applications and resulting patents, and LICENSEE
shall pay to LICENSOR the complete cost, including reasonable
attorney's fees, to file, prosecute and maintain 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 Laminated Light Valve Film or
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 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. Each party shall provide
appropriate notices of patents, or other similar notice of the patent
rights of the other party on all products utilizing the patented
inventions of the other party. Either party may add its own patent
notice to any copy or embodiment which contains its patented
inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and exclusive
owner of the patents and patent applications listed on Schedule A,
and that, except for the rights granted hereunder, LICENSEE shall
not have any rights or attempt to assert any ownership rights in and
to those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend from the
Effective Date of this Agreement to the date of termination of this
Agreement. Unless sooner terminated or extended, as herein
provided for below, this Agreement shall terminate upon the
expiration of the later of (A) the last to expire of the patents now or
hereafter listed in Schedule A hereof, and (B) the expiration of the
period in which LICENSEE is obligated to maintain confidential
Technical Information of LICENSOR pursuant to Section 12.1
hereof.
10.2 Termination by LICENSEE. LICENSEE may terminate
this Agreement effective as of December 31, 2007 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. After the expiration or
termination of this Agreement, LICENSEE shall have no right to
sell, and no obligation to manufacture and deliver, Licensed Products
or Laminated Light Valve Film 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, 2005 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 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. 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 or Laminated Light Valve Film which shall
then be in the possession of LICENSEE, and, if requested by
LICENSOR, LICENSEE shall finish and deliver to LICENSOR any
Licensed Products or Laminated Light Valve Film 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 Laminated Light Valve Film and
Licensed Products (and Laminated Light Valve Film 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, 2007, 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, Laminated
Light Valve Film 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, 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, 3.5, 4.2, 4.3, 4.4, 4.5,
4.6, 6.1, 6.2, 7.2, 8.3, 8.4, 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, 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 payments specified in Article 3 hereof without
LICENSOR's prior written consent, and the parties hereto
acknowledge that, pursuant to the Securities Exchange Act of 1934,
as amended, and the regulations promulgated thereunder,
LICENSOR may file copies of this Agreement with the Securities
and Exchange Commission and with NASDAQ and with any other
stock exchange on which LICENSOR's securities may be listed.
LICENSEE agrees that for the period of time during which
LICENSEE is obligated to keep information confidential hereunder,
LICENSEE will not make, use, sell, lease or otherwise dispose of
products using or directly or indirectly derived from 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 (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 Laminated Light Valve Film or 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: ▇▇▇▇ ▇. ▇▇▇▇, President
Custom Glass Corporation
R.D. 8. ▇▇▇▇▇ ▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
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.
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:___________________________________________
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President
Date: April 17, 2003
CUSTOM GLASS CORPORATION
By:___________________________________________
▇▇▇▇ ▇. ▇▇▇▇, President
Date: April 17, 2003
Schedule A
(As of April 17, 2003)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
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]
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities and
Exchange Commission]
Schedule B (As of April 17, 2003)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR
LAMINATED 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)
AP Technoglass Co. Sunroof glass for other licensees Worldwide
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ Corp. SPD displays Worldwide
BOS GmbH Variable light transmission
sunshades and sunvisors Worldwide
Cricursa ▇▇▇▇▇▇▇▇▇ Curvados S.A. Architectural and
automotive windows 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
InspecTech Aero Service, Inc. Aircraft windows and cabin dividers Worldwide
(except Korea)
Isoclima S.p.A. Architectural and automotive windows Worldwide
(except Korea)
N.V. Bekaert S.A. Architectural and automotive windows Worldwide
(except Korea)
Razor's Edge Technologies, Inc. Architectural windows Worldwide
(except Korea)
SPD Systems, Inc. Architectural and appliance
windows Worldwide
(except Korea)
ThermoView Industries, Inc. Architectural windows Worldwide
(except Korea)
[INFORMATION REGARDING OTHER AUTHORIZED USERS WILL BE
PROVIDED BY LICENSOR TO LICENSEE FROM TIME TO TIME IN THE
FUTURE]