[EXHIBIT 10.47]
SPD FILM LAMINATION LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
GLASS WHOLESALERS, LTD. d/b/a CRAFTSMAN
FABRICATED GLASS, LTD.
This License Agreement ("Agreement") effective as of
October 16, 2007 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
GLASS WHOLESALERS, LTD. d/b/a CRAFTSMAN
FABRICATED GLASS, LTD., a Texas corporation (hereinafter
called "LICENSEE"). The "Effective Date" of this Agreement
shall be the date which is the last date of formal execution of
this Agreement by duly authorized representatives of the parties
to this Agreement as indicated on the signature page of this
Agreement.
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves and Light Valve Film (all as hereinafter defined)
and of methods and apparatus relating to products incorporating
such concepts (which products, can include, without limitation
thereto, windows for buildings and vehicles, sunvisors, sunroofs,
flat panel displays, eyewear and rear-view mirrors); and is
possessed of and can convey information and know-how for
such products and rights to manufacture, use and sell such
products; and
WHEREAS, LICENSEE is interested in 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 promises and
the mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the
respective meanings set forth in this Article 1.
"Authorized User" means LICENSOR and/or any other person
or entity listed by LICENSOR on Schedule B hereof who has
been granted permission by LICENSOR to receive 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.
"Licensed Territory" means all countries of the world.
"Light Valve" means a variable light transmission device
comprising: a cell including cell walls, containing or adapted to
contain an activatable material, described hereinafter, such that a
change in the optical characteristics of the activatable material
affects the characteristics of light absorbed by, transmitted
through and/or reflected from the cell; means incorporated in or
on the cell, or separate therefrom for applying an electric or
magnetic field to the activatable material within the cell; and
coatings, (including, but not limited to, electrodes), spacers,
seals, electrical and/or electronic components, and other
elements incorporated in or on, or combined with, the cell. The
activatable material, which the cell contains or is adapted to
contain, includes in it solid suspended particles, which when
subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the device, and
may be either in the form of 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.
"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
or Light Valve Film and that consist of concepts invented or
developed by LICENSOR and which are deemed significant by
LICENSOR. Know-how of LICENSOR's suppliers and of
LICENSOR's other licensees and their sublicensees under
licenses from LICENSOR shall not be considered Technical
Information owned or controlled by LICENSOR.
2 GRANT OF 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 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 2.1 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 nothing
contained in this Agreement 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.
2.2 No Other Rights. LICENSEE agrees that, except for
the specific licenses granted to it under Section 2.1 hereof,
LICENSEE has not acquired any rights or licenses under this
Agreement to use Light Valves or Light Valve Film or any
components thereof made by or for LICENSEE pursuant to this
Agreement except for the purposes of research and development
pursuant to Section 4.1 hereof and as specifically licensed in
Section 2.1 hereof.
2.3 Sublicenses. LICENSEE shall have the right to grant
non-exclusive sublicenses to any wholly-owned and controlled
subsidiary of LICENSEE, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing that it wishes to become
a sublicensee hereunder prior to doing so and agrees to be bound
by the terms and conditions of this Agreement. All sublicenses
shall (i) be non-exclusive, (ii) shall terminate with the
termination of the rights and licenses granted to LICENSEE
under Section 2.1 hereof, and be otherwise limited in accordance
with the limitations and restrictions which are imposed on the
rights and licenses granted to LICENSEE hereunder, (iii)
contain confidentiality provisions no less protective than those
contained in Section 12.1 hereof, and (iv) shall contain such
other terms, conditions, and licenses as are necessary to enable
LICENSEE to fulfill its obligations hereunder. LICENSEE shall
send LICENSOR a copy of every sublicense agreement or other
agreement entered into by LICENSEE in connection with a
sublicense hereunder within thirty (30) days of the execution
thereof, and shall also notify LICENSOR prior to any change in
ownership of a sublicensee. LICENSOR may terminate any such
sublicense if there is any change in the ownership or control of a
sublicensee.
3 REPORTS AND RECORD-KEEPING.
3.1 Reports. Within 15 days after the end of each month,
LICENSEE shall send to LICENSOR a monthly 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
month to Authorized Users and samples provided to third parties
with LICENSOR's consent, with the amounts sold or otherwise
provided to each Authorized User, including sample recipients,
and their identity clearly broken down. The first report
submitted under this Agreement shall cover the period from the
Effective Date of the Agreement to the end of the first month in
which Light Valve Film is obtained or Laminated Light Valve
Film is sold, or otherwise disposed of by LICENSEE hereunder.
In addition, LICENSEE shall provide LICENSOR with monthly
reports of its other activities involving this License Agreement,
which data shall include data showing the total number of
laminations performed for customers hereunder during that
month, and out of such total number of laminations, a
breakdown of how many of such laminations were successful in
the judgment of LICENSEE, and for any unsuccessful
laminations, a brief description of what was observed, and
LICENSEE's opinion (if any) as to the cause or causes of any
lamination problems, and the laminating conditions (including
time, temperature, pressure and other relevant data) under which
all such laminations were performed. LICENSEE shall also
furnish to LICENSOR at the same time it becomes available to
any third party, a copy of each brochure, standard price list,
advertisement or other marketing and promotional materials
prepared, published or distributed by LICENSEE or its
sublicensees relating to Laminated Light Valve Film.
LICENSOR shall have the right, but not the obligation, to
approve any use by LICENSEE of LICENSOR's name, logo, or
other information about LICENSOR or its technology and
licensees, and to require the correction of any inaccurate
information.
3.2 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each report supported thereby, true and accurate
records, files, data and books of accounts that relate to the
acquisition, processing, lamination, sale or other disposition of
Laminated Light Valve Film, reasonably required for the full
computation and verification of the information to be given in
the statements herein provided for. LICENSOR and LICENSEE
agree that an independent certified public accounting firm
(selected by LICENSOR from the largest ten certified public
accounting firms in the United States of America, or any country
in the Licensed Territory) may audit such records, files and
books of accounts to determine the accuracy of the statements
given by LICENSEE pursuant to Section 3.1 hereof. Such an
audit shall be made upon reasonable advance notice to
LICENSEE and during usual business hours. The cost of the
audit shall be borne by LICENSOR, unless the audit shall
disclose a material breach by LICENSEE of any term of this
Agreement, or an inaccuracy greater than 2% in any report
provided to LICENSOR by LICENSEE, during the audited
period, in which case LICENSEE shall bear the full cost of such
audit. The results of the audit shall be kept confidential pursuant
to the provisions of Section 12.1 except to the extent required by
a party hereto to enforce its rights hereunder, or which is
otherwise required to be disclosed by law or under generally
accepted accounting principles.
3.3 Customer Referrals. Although LICENSOR is under
no obligation to do so, LICENSOR may from time to time refer
customers to LICENSEE, which customers may be existing or
prospective licensees of LICENSOR, architects, designers,
builders, developers, consumers or other purchasers of products
from LICENSEE (a "Referred Customer"). In the event that
such Referred Customer purchases, leases or rents products or
services from LICENSEE other than a Laminated Light Valve
Film, LICENSEE shall include the details of such transaction in
its monthly report under Section 3.1 hereof, and shall pay
LICENSOR a sales commission equal to 15% of the amount
received from such customer. In the case of Referred Customers
who are not licensees or prospective licensees of LICENSOR,
no such payment shall be due from LICENSEE to LICENSOR if
the Referred Customer was already a customer of LICENSEE
prior to the date of referral by LICENSOR and LICENSEE
informs LICENSOR of such fact at the time that the referral by
LICENSOR is made.
4 OBLIGATIONS OF LICENSOR AND LICENSEE.
4.1 Development of Laminated Light Valve Film.
LICENSOR and LICENSEE may cooperate to develop initial
specifications for Laminated Light Valve Film. LICENSEE
shall then use its reasonable efforts to make Laminated Light
Valve Film meeting such specifications for the evaluation and
use of LICENSOR and licensees and prospective licensees of
LICENSOR, and for use by LICENSEE but only for internal
research and development. After consultation with LICENSEE,
LICENSOR may at any time propose additional size or other
specifications of the Laminated Light Valve Film to be
processed under this Agreement with the disclosure of additional
Technical Information to LICENSEE with respect to such size
or other specifications of Laminated Light Valve Film.
LICENSEE may use all commercially reasonable efforts
throughout the term of this Agreement to improve the quality of
Laminated Light Valve Film. However, LICENSEE shall be
solely responsible for determining the specifications for all
Laminated Light Valve Film laminated by LICENSEE
hereunder, and for any improvements therein.
4.2 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.
4.3 Compliance. LICENSEE agrees that, without
limitation, any manufacture, sale, lease, use or other disposition
of Laminated Light Valve Film that is not in strict accordance
with (1) the provisions of this Agreement, (2) restrictions on the
type of product, or the territory in which such product may be
made, used, sold or otherwise disposed of by or for an
Authorized User, or other provisions or restrictions, which are
contained in any other agreement in force between LICENSOR
and an Authorized User which is known to LICENSEE which
relates to Light Valves, Light Valve Film, or components
thereof, or (3) with the provisions of any other agreement then in
force to which LICENSEE is a party and which relates to Light
Valves, Light Valve Film, or components thereof shall be
deemed a material breach of this Agreement.
4.4 End Users. LICENSEE agrees to require all direct
recipients of Laminated Light Valve Film to whom Laminated
Light Valve Film is sold, leased, provided to, 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. LICENSEE agrees to take all steps to reasonably
assure itself that Laminated Light Valve Film sold, leased or
otherwise disposed of by or for LICENSEE is being used for
permitted application and territory only. If a party which is not
then listed on Schedule B hereto wishes to obtain samples of
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.
4.5 Laws and Regulations. LICENSEE agrees that it shall
be solely responsible for complying with all laws and
regulations affecting the processing, use and sale or other
disposition of Laminated Light Valve Film by LICENSEE and
its sublicensees, and for obtaining all approvals necessary from
governmental agencies and other entities. LICENSEE agrees to
maintain a file of all such approvals and to send LICENSOR a
copy of all such approvals (including English translations
thereof in the case of approvals required by any foreign country)
within 10 business days of any written request for such copies
by LICENSOR. LICENSEE represents and warrants to
LICENSOR that no approval from any governmental agency or
ministry, or from any third party, is required to effectuate the
terms of this Agreement or the transactions contemplated
hereby.
4.6 Purchase of Components from Others. By virtue of
the disclosure of Technical Information, other information, and
training, if any, provided from time to time by LICENSOR to
LICENSEE and to its other licensees, and each of their
sublicensees and affiliates, any component 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 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 Light Valve Film and Components shall be
used only in strict accordance with the provisions of this
Agreement, and that such Light Valve Film and 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 Light Valve Film or 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
Light Valve Film or Component or other item. LICENSEE
acknowledges that LICENSOR has not made any
representations or warranties regarding the availability of any
Light Valve Film or Component, or the price thereof, and that in
all respects LICENSEE shall deal directly with the suppliers of
such Light Valve Film or Components and will obtain from
them information regarding availability, pricing, and/or other
terms relating to such Light Valve Film or Components.
4.7 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Light Valve Film,
material, Component, or information provided hereunder, and
LICENSEE expressly acknowledges and agrees that any such
Light Valve Film, 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 LICENSOR be liable
to LICENSEE or any third party 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 Light Valve Film, material, Component or information
provided hereunder.
4.8 Analysis. LICENSEE represents and agrees that it will
only incorporate Light Valve Film and Components received
from authorized suppliers into Laminated Light Valve Film
during the term of this Agreement and not thereafter, and for no
other purpose, and that LICENSEE will not directly or
indirectly attempt to reverse-engineer any material provided to it
hereunder by LICENSOR or any supplier of any Component or
of Light Valve Film.
4.9 Inventory. LICENSEE agrees to purchase and maintain
adequate inventories of Light Valve Film from any authorized
supplier of Light Valve Film to meet the anticipated
requirements of licensees of LICENSOR for Laminated Light
Valve Film during the term of this Agreement.
4.10 Promotional Activities. LICENSEE shall promptly
develop and maintain a web site relating to its business which
prominently features LICENSOR's SPD technology and
LICENSEE's relationship to LICENSOR, and shall participate
at industry trade shows and conferences and/or engage in other
marketing and promotional activities reasonably necessary to
promote LICENSOR's SPD technology and LICENSEE's
business relating thereto.
4.11 No other obligations. LICENSEE and LICENSOR
have no other obligations to each other except as expressly
provided in this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that
either party may adopt and use for Light Valve Film, 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 or processed 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 or
to use trademarks specified by LICENSOR on LICENSEE's
products or services relating to LICENSOR's technology or this
License Agreement.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times
ample product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement and
shall name LICENSOR as an additional insured. Upon request,
LICENSEE shall provide LICENSOR 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 processing, sale,
use, lease or other disposition of Laminated Light Valve Film,
and related materials (other than sales by LICENSEE to
LICENSOR pursuant to Section 4.2 hereof), or other use of the
information and rights granted hereunder. Any knowledge of
LICENSEE's or its sublicensee's activities by LICENSOR or its
representatives shall in no way impose any liability on
LICENSOR or reduce the responsibilities of LICENSEE
hereunder or relieve it from any of its obligations and warranties
under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the
right to file patent applications in the United States and in
foreign countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) If during the
term of this Agreement, LICENSOR makes any improvements
or modifications which are invented or developed by or on
behalf of LICENSOR after the Effective Date of this Agreement
and on or before December 31, 2007, and which relate in any
way to or are useful in the lamination of Light Valve Film, such
improvements and modifications shall from time to time be
disclosed to LICENSEE and be automatically included, on a
non-exclusive basis, in the rights and licenses granted pursuant
to Section 2.1 hereof, and any patents and/or patent applications
relating thereto shall automatically be added to Schedule A
hereof.
(b) Any future improvements or modifications invented or
developed by or on behalf of LICENSEE, LICENSEE's
sublicensees and LICENSOR (other than as specifically
described in Sections 7.2(a)) after the Effective Date of this
Agreement, if any, which relate in any way to or are useful in
the lamination, design, operation, manufacture and assembly of
Light Valves, Light Valve Film and/or to the suspensions or
other components used or usable in Light Valves and/or Light
Valve Film shall not be included in this Agreement. Upon
written request by the non-inventing party, LICENSOR and
LICENSEE shall negotiate with each other regarding the grant
of nonexclusive rights and licenses to use such improvements
and modifications, but neither party shall be obligated to grant
such rights and licenses to one another.
(c) During the term of this Agreement each of the parties
hereto agrees to inform the other in writing (without any
obligation to reveal details which would be confidential
information), at least as frequently as once a year in January of
each calendar year, if any significant improvements or
modifications (other than as specifically described in Section
7.2(a)) have been made relating to the subject matter of this
Agreement, and as to the general nature of any such
improvements and modifications.
(d) Notwithstanding the foregoing, LICENSOR may, but
shall not be required to, voluntarily and without additional cost
to LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE
rights in such certain future improvements and modifications,
and any information so disclosed will be considered Technical
Information which LICENSEE shall be obligated to keep
confidential pursuant to Section 12.1 of this Agreement. In
connection therewith, LICENSOR may voluntarily add patents
and/or patent applications to Schedule A hereof. No disclosure
of any information by LICENSOR shall in any way establish a
course of dealing or otherwise require LICENSOR to make any
future disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that
any patent application now or hereafter listed on or incorporated
into Schedule A shall be filed or maintained in any foreign
country. If so designated and if legally possible to do so,
LICENSOR agrees to promptly file, prosecute and maintain
such applications and resulting patents, and LICENSEE shall
pay to LICENSOR the complete cost, including reasonable
attorney's fees, to file, prosecute and maintain during the term of
this Agreement 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 Light
Valve Film 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. Upon request by
LICENSEE, during the term of this Agreement and when
mutually convenient to LICENSOR and LICENSEE,
LICENSOR may make its personnel available to consult with
LICENSEE and its contractors, with compensation to
LICENSOR for such consultation to be mutually agreed to by
LICENSOR and LICENSEE. 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, email or mail to one another in regard to
any information or data furnished pursuant to this Agreement,
including any information disclosed pursuant to Section 3.1
hereof.
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. 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, 2010 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, 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, 2010 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 Laminated Light Valve Film hereunder.
Notwithstanding the foregoing, LICENSOR may terminate this
Agreement at any time upon at least 30 days' notice to
LICENSEE if LICENSEE shall have failed to make any
payment when due or at any time breach any material term of
this Agreement and such payment is not made or such breach is
not cured within any applicable cure period specified in Article
11 of this Agreement, or has repeatedly provided inaccurate
reports hereunder, or if there has been a cessation by
LICENSEE of general operations or of work related to
Laminated Light Valve Film.
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall
cease, and LICENSEE shall immediately return to LICENSOR
all Technical Information furnished to LICENSEE under this
Agreement, together with all reproductions, copies and
summaries thereof; provided, however, that LICENSEE may
retain solely for archival purposes one copy of all such
documents in its legal department files, (2) at LICENSOR's
option, LICENSEE shall, within 30 days of the date of such
termination or expiration, either (A) sell and deliver to
LICENSOR under the terms specified in Section 4.2 any
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 Light
Valve Film in inventory or in the process of being laminated 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 Light Valve Film in the process of being laminated)
not sold under this Section 10.4 and (3) if this Agreement is
terminated for any reason by either party, or expires,
LICENSEE hereby grants to LICENSOR a nonexclusive,
royalty-free, irrevocable, worldwide license with the right to
grant sublicenses to others to utilize all technical information,
improvements and/or modifications (whether or not the subject
of patents or pending patent applications) developed or invented
by or on behalf of LICENSEE and/or its sublicensees,
subcontractors, or agents hereunder through the date of such
termination or expiration of this Agreement relating to Light
Valves, Light Valve Film or the components or lamination
thereof which relate to or arise out of Technical Information
disclosed by LICENSEE to LICENSOR or are otherwise
developed by LICENSEE, and upon such termination or
expiration, LICENSEE shall provide LICENSOR in reasonable
detail complete information regarding such technical
information, improvements and/or modifications. The foregoing
license shall be self-effectuating, but LICENSEE agrees upon
written notice by LICENSOR at any time hereafter to deliver to
LICENSOR within 30 days of such notice any document or
other instrument reasonably requested by LICENSOR to convey
such license rights to LICENSOR such as, by way of example,
confirmations or instruments of conveyance or assignment. No
termination of this Agreement by expiration or otherwise shall
release LICENSEE or LICENSOR from any of its continuing
obligations hereunder, if any, or limit, in any way any other
remedy one party may have against the other party.
Notwithstanding the foregoing, LICENSEE's obligations to
LICENSOR under Sections 3.1, 3.2,3.3, 4.2, 4.3, 4.4, 4.5, 4.6,
4.7, 4.8, 6.1, 6.2, 7.2, 8.5, 10.2, 10.4, 12.1, and Articles 13 and
14 shall survive any termination or expiration of this Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) LICENSEE'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.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for
itself, its sublicensees, and their employees and agents that for
twenty (20) years from the later of the Effective Date of this
Agreement or the latest date of its receipt of information
disclosed to LICENSEE by LICENSOR pursuant to this
Agreement, such information shall be held in confidence;
provided, however, there shall be no obligation to treat as
confidential information which is or becomes available to the
public other than through a breach of this obligation, or which
was already possessed by LICENSEE in writing (or otherwise
provable to be in the possession of LICENSEE) prior to the
Effective Date of this Agreement (and was not received from
LICENSOR) or which is shown by LICENSEE to have been
received by it from a third party who had the legal right to so
disclose it without restrictions and without breach of any
agreement with LICENSOR or its licensees. The burden of
proving the availability of any exception of confidentiality shall
be on the LICENSEE. LICENSOR shall affix an appropriate
legend on all written documentation given to LICENSEE which
contains confidential information, but failure to so affix such
legend shall not affect the confidential nature of such
information. LICENSEE acknowledges that the list of patent
applications contained on Schedule A shall be deemed to be
confidential information. Other than for the oral information
conveyed during any training conducted pursuant to this
Agreement, if any, all of which shall be deemed to be
confidential information, if confidential information is otherwise
conveyed orally by LICENSOR after training has been
completed, LICENSOR shall specify to LICENSEE at the time
such information is being conveyed (or in a subsequent letter
referring to the conversation) that the information conveyed is
confidential. It is understood and agreed that, unless otherwise
provided in a separate agreement between LICENSEE and
LICENSOR, LICENSEE has no obligation hereunder to provide
LICENSOR with any confidential or proprietary information,
and that LICENSOR shall have no obligation hereunder to
LICENSEE to maintain in confidence or refrain from
commercial or other use of any information which LICENSOR
is or becomes aware of under this Agreement. The terms and
provisions of this Agreement or any other agreement between
the parties shall not be considered confidential, and the parties
hereto acknowledge that, pursuant to the Securities Exchange
Act of 1934, as amended, and the regulations promulgated
thereunder, LICENSOR may file copies of this Agreement with
the Securities and Exchange Commission and with NASDAQ
and with any other stock exchange on which LICENSOR's
securities may be listed. LICENSEE agrees that for the period
of time during which LICENSEE is obligated to keep Technical
Information confidential hereunder, LICENSEE will not make,
use, sell, lease or otherwise dispose of products using or directly
or indirectly derived from confidential information or sample
materials supplied to LICENSEE by LICENSOR or its
licensees, sublicensees, or any of their affiliates relating to Light
Valve Film, Light Valves or components thereof, 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, a description of the
other party, and its logos, for marketing, sales, technical
assistance, investor relations, disclosure and public relations
purposes, and that information permitted to be disclosed by a
party under this Section 13.1.3 may appear on such party's (or
its subsidiaries'or sublicensees') Internet web site, along with
links to the Internet web sites, and specific pages therefrom, of
the other party and its subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents
and warrants that it has the right to convey the rights and
licenses granted by this Agreement, and otherwise to perform its
obligations under this Agreement. LICENSOR has caused its
employees who are employed to do research, development, or
other inventive work to disclose to it any invention or
information within the scope of this Agreement and to assign to
it rights in such inventions and information in order that
LICENSEE shall receive, by virtue of this Agreement, the
licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is
not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by
any third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a)
that LICENSEE will be able to develop, manufacture, sell or
otherwise commercialize Laminated Light Valve Film, or (b) as
to the validity of any patent.
13.4 Representation. LICENSOR hereby represents and
warrants that, as of the Effective Date hereof, to the best of its
knowledge there have been no claims, actions or proceedings
brought or threatened against it or its licensees alleging that any
Light Valve Film, and Light Valves manufactured using
Technical Information or other technical information disclosed
by LICENSOR constitutes infringement of any patent of any
third party.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be
interpreted, construed, governed and enforced in accordance
with and governed by the laws of the State of New York, and
LICENSOR and LICENSEE hereby submit to the exclusive
jurisdiction of the state or federal courts located in the County of
Nassau and State of New York for such purposes. Should any
dispute arise between LICENSOR and LICENSEE in
connection with this Agreement, LICENSOR and LICENSEE
shall first endeavor to settle such dispute in an amicable manner
through mutual consultation.
14.2 Confidentiality In Court Proceeding. In order to
protect and preserve the confidential information of a party
which the parties recognize may be exchanged pursuant to the
provisions of this Agreement, the disclosing party may request,
and the receiving party shall not oppose, the court in any action
relating to this Agreement to enter a protective order to protect
information which is confidential information under Section
12.1 and to seal the record in the action or to hold the
proceedings, or portion of the proceedings, in camera; provided,
that the requested terms do not prejudice the receiving party's
interests. Nothing, however, shall preclude either party from
thereafter moving to unseal its own records or to have matter
and information designated as confidential under any relevant
protective order designated otherwise in accordance with the
circumstances as they shall appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision
that is legal and enforceable and is as nearly as possible
consistent with the intentions underlying the original provision.
If the remainder of this Agreement is not materially affected by
such declaration or finding and is capable of substantial
performance, then the remainder shall be enforced to the extent
permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing to
the contrary, the failure of either party to insist in any one or
more instances upon the strict performance of any one or more
of the provisions of this Agreement, or to exercise any right
contained in this Agreement or provided by law, shall not
constitute or be construed as a waiver or relinquishment of the
performance of such provision or right or the right subsequently
to demand such strict performance or exercise of such right, and
the rights and obligations of the parties shall continue
unchanged and remain in full force and effect.
14.5 Captions. The captions and headings in this
Agreement are inserted for convenience and reference only and
in no way define or limit the scope or content of this Agreement
and shall not affect the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign this
Agreement or its rights hereunder without the prior written
consent of LICENSOR except to a successor to substantially all
of its business relating to Light Valves and whose obligations
hereunder are guaranteed to LICENSOR by LICENSEE.
LICENSOR may assign all of its rights and obligations
hereunder to any successor to any of its business interests or to
any company controlling or controlled by LICENSOR. All
assignees shall expressly assume in writing the performance of
all the terms and conditions of this Agreement to be performed
by the assigning party, and an originally signed instrument of
such assumption and assignment shall be delivered to the non-
assigning party within 30 days of the execution of such
instrument.
14.7 Schedules. All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth
fully in this Agreement.
14.8 Entire Agreement. This Agreement constitutes the
entire understanding and agreement between LICENSOR and
LICENSEE with respect to the subject matter hereof, supersedes
all prior agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference
to this Agreement and which is executed in writing by the
parties; provided, however, that either party may unilaterally
waive in writing any provision imposing an obligation on the
other.
14.9 Notices. Any notice required or permitted to be given
or made in this Agreement shall be in writing and shall be
deemed given on the earliest of (i) actual receipt, irrespective of
method of delivery, (ii) on the delivery day following dispatch if
sent by express mail (or similar next day courier service), or (iii)
on the sixth day after mailing by registered or certified air mail,
return receipt requested, postage prepaid and addressed as
follows:
LICENSOR: ▇▇▇▇▇▇ ▇. ▇▇▇▇, Chairman and CEO
Research Frontiers Incorporated
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, President
Glass Wholesalers, Ltd. d/b/a
Craftsman Fabricated Glass, Ltd.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
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: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President
Date: October 16, 2007
GLASS WHOLESALERS, LTD.
d/b/a CRAFTSMAN FABRICATED GLASS, LTD.
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, President
Date: October 16, 2007