[EXHIBIT 10.27- 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
CRICURSA XXXXXXXXX CURVADOS S.A.
This License Agreement ("Agreement") effective as of October
24, 2002 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
CRICURSA XXXXXXXXX CURVADOS S.A., a corporation organized
under the laws of Spain ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to Light
Valves and Licensed Products (both as hereinafter defined) and of
methods and apparatus relating to products incorporating such
concepts; and is possessed of and can convey information and
know-how for such products and rights to manufacture, use and sell
such products; and
WHEREAS, LICENSEE is interested in manufacturing and selling
Licensed Products; and
WHEREAS, LICENSEE desires to acquire from LICENSOR, and
LICENSOR desires to grant to LICENSEE, certain rights and licenses
with respect to such technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises and the
mutual covenants herein and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the
parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the respective
meanings set forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is the
last date of formal execution of this Agreement by duly authorized
representatives of the parties to this Agreement as indicated on the
signature page of this Agreement.
"Licensed Product" means a Light Valve Architectural Window
Product or a Light Valve Transportation Vehicle Window Product
incorporating a Light Valve. The term "Licensed Product" shall not
include Light Valves used or intended for use in any product other than
as specifically defined herein, such as other window products not
specifically defined herein, including but not limited to windows for
aircraft, space craft and space-stations, and non-window products such
as but not limited to displays, eyewear, sunvisors, toys, mirrors or
filters for scientific instruments, lamps or contrast enhancement of
displays. The term "display" means any device for displaying letters,
numbers, images or other indicia or patterns. Nothing contained herein
shall permit LICENSEE to sell, lease, or otherwise dispose of a Light
Valve which is not combined or intended to be combined as described
above into a Light Valve Architectural Window Product or a Light
Valve Transportation Vehicle Window Product.
"Licensed Territory " means all countries of the world except North and
South Korea.
"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 Architectural Window Product" means a Light Valve used
or intended for use solely as a window integrally incorporated in, or
attached as a fixture to the external structure or internal structure of any
building, whether permanent or temporary, and whether above or below
ground.
"Light Valve Transportation Vehicle Window Product" means a Light
Valve used or intended for use solely as a window (including sunroofs
and window panes which are an integral part of the internal or external
structure) integrally incorporated in a transportation vehicle of a type
not designed or primarily intended for military use. The term "Light
Valve Transportation Vehicle Window Product" shall not include a
Light Valve used or intended for use as a sunvisor, but may include
Light Valves which are used or intended for use in a non-military
transportation vehicle as, or as part of, or are laminated to, or whose
surface area is primarily attached to, a window, sunroof or windshield.
The term "transportation vehicle" shall mean passenger cars,
recreational vehicles, trucks, boats, mobile cranes, and trains, but shall
not include other types of vehicles such as aircraft, space craft and
space-stations.
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; (B) 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, multiplied by a fraction, the numerator of which is the direct
cost of all components included in the window associated with the
incorporation of a Light Valve, and the denominator of which is the
total direct cost for such product; and (C) $100 per window. The
aforementioned $100 figure specified in clause (C) 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, 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.
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 five percent (5%) 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 45 days after the end of the calendar quarter in which such
Licensed Products were sold, leased, used or otherwise disposed of by
or for 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.
3.2 Initial Fee and Minimum Annual Royalties - Regardless of
whether LICENSEE is selling any Licensed Products, during the term
of this Agreement LICENSEE agrees to pay LICENSOR the initial
license fee of [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission]
3.3 Time and Method of Payment. The initial 12[Confidential
Information Omitted and filed separately with the Securities and
Exchange Commission] All other payments shall be due on the date
specified in this Agreement, or if no date is specified, within 30 days
of invoice. All payments made to LICENSOR shall be paid by wire
transfer of immediately available funds to the account of Research
Frontiers Incorporated at Chase Manhattan Bank, 0000 Xxxxxxx Xxxx,
Xxxxxxxx, Xxx Xxxx 00000, Account No.: 000-000-000, 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 or Spain) 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.
3.6 Special Conditions. In addition to any other breaches which
may occur by LICENSEE, it shall be considered a material breach of
the terms of this License Agreement if LICENSEE has not achieved the
milestones specified on Schedule B hereof as a "Licensee Milestone"
in a timely manner.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation, any
manufacture, sale, lease, use or other disposition of Licensed Products
that is not in strict accordance with the provisions of this Agreement
shall be deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct recipients
of Licensed Products to whom Licensed Products is sold, leased, or
otherwise disposed of by LICENSEE or its sublicensees, to look only
to LICENSEE and not to LICENSOR or its affiliates for any claims,
warranties, or liability relating to such Licensed Products. LICENSEE
agrees to take all steps to reasonably assure itself that Licensed
Products sold, leased or otherwise disposed of by or for LICENSEE is
being used for permitted purposes only.
4.3 Laws and Regulations. LICENSEE agrees that it shall be
solely responsible for complying with all laws and regulations affecting
the manufacture, use and sale or other disposition of Licensed Products
by LICENSEE and its sublicensees, and for obtaining all approvals
necessary from governmental agencies and other entities. LICENSEE
agrees to maintain a file of all such approvals and to send LICENSOR
a copy of all such approvals (including English translations thereof in
the case of approvals required by any foreign country) within 10
business days of any written request for such copies by LICENSOR.
LICENSEE 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 Licensed Products
shall be deemed to have been manufactured at least in part using the
Technical Information provided by LICENSOR if LICENSEE or any
supplier of a Component to LICENSEE has had access to Technical
Information of any kind of LICENSOR or its licensees and their
sublicensees, consultants, subcontractors, agents or representatives..
LICENSEE and its sublicensees each hereby agrees that (i) all
Components shall be used only in strict accordance with the provisions
of this Agreement, and that such Components may not be used for any
other purpose or resold by LICENSEE or its sublicensees except as
specifically permitted by the license granted in Section 2.1 hereof, and
(ii) LICENSEE and its sublicensees will only look to the manufacturer
or supplier of such Component or other item used by LICENSEE or its
sublicensees and not to LICENSOR or its affiliates for any claims,
warranties, or liability relating to such Component or other item.
LICENSEE acknowledges that LICENSOR has not made any
representations or warranties regarding the availability of any
Component, or the price thereof, and that in all respects LICENSEE
shall deal directly with the suppliers of such Components and will
obtain from them information regarding availability, pricing, and/or
other terms relating to such Components.
4.5 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Licensed Product or of any
material, Component, or information provided hereunder, and
LICENSEE expressly acknowledges and agrees that any such material,
Component or information provided by LICENSOR hereunder is
provided "AS IS" and that LICENSOR makes no warranty with respect
thereto and DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, WITH RESPECT THERETO, ITS USE
OR ANY INABILITY TO USE IT, OR THE RESULTS OF ITS USE.
Except for any breach of the terms of this Agreement, in no event shall
any party to this Agreement be liable for any damages, whether in
contract or tort (including negligence), including but not limited to
direct, consequential, special, exemplary, incidental and indirect
damages, arising out of or in connection with this Agreement or the
use, the results of use, or the inability to use any Licensed Product,
material, Component or information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it will only
incorporate Components received from authorized suppliers into
Licensed Products and for no other purpose, and that LICENSEE will
not directly or indirectly attempt to reverse-engineer any material
provided to it hereunder by LICENSEE or any supplier of any
Component.
4.7 Personnel. LICENSEE agrees to assign personnel from its
technical staff who shall be responsible for the development of
Licensed Products during the term of this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Licensed Products or other products
incorporating Light Valves are and shall remain the exclusive property
of the adopting party, and the other party shall not obtain any rights and
license to such marks under this Agreement, but may inform others that
the adopting party has licensed or produced Licensed Products or
products incorporating Light Valves under such xxxx or marks, and
may use the adopting party's logo in connection therewith. LICENSOR
may require LICENSEE or its permitted sublicensees to indicate on
packaging that such product is licensed from Research Frontiers
Incorporated or to otherwise include language and/or designations
approved by LICENSOR indicating an affiliation with Research
Frontiers Incorporated.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times ample
product liability and other liability insurance covering its operations
relating to the subject matter of this Agreement and, upon request of
LICENSOR, shall name LICENSOR as an additional insured on
relevant insurance policies and 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 Licensed Products,
and related materials, or other use of the information and rights granted
hereunder. Any knowledge of LICENSEE's or its sublicensee's
activities by LICENSOR or its representatives shall in no way impose
any liability on LICENSOR or reduce the responsibilities of
LICENSEE hereunder or relieve it from any of its obligations and
warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the right to
file patent applications in the United States and in foreign countries
covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or on behalf
of LICENSEE, LICENSEE's sublicensees and LICENSOR after the
Effective Date of this Agreement, if any, which relate in any way to or
are useful in the design, operation, manufacture and assembly of
Licensed Products, and/or to the suspensions or other components used
or usable in Licensed Products shall not be included in this Agreement.
Upon written request by the non-inventing party, LICENSOR and
LICENSEE shall negotiate with each other regarding the grant of
nonexclusive rights and licenses to use such improvements and
modifications, but neither party shall be obligated to grant such rights
and licenses to one another.
(b) During the term of this Agreement each of the parties hereto
agrees to inform the other in writing (without any obligation to reveal
details which would be confidential information), at least as frequently
as once a year in January of each calendar year, if any significant
improvements or modifications have been made relating to the subject
matter of this Agreement, and as to the general nature of any such
improvements and modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but shall not
be required to, voluntarily and without additional cost to LICENSEE
disclose certain information relating to future improvements and
modifications and license to LICENSEE rights in such certain future
improvements and modifications, and any information so disclosed
will be considered Technical Information which LICENSEE shall be
obligated to keep confidential pursuant to Section 12.1 of this
Agreement. 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 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, if the
rules of the host are followed.
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.
10.3 Termination by LICENSOR. LICENSOR may terminate
this Agreement at any time effective as of December 31, 2007 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 termination under this Section 10.3 if
LICENSEE is producing and selling Licensed Products
hereunder.[Confidential Information Omitted and filed separately with
the Securities and Exchange Commission] 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 which shall then be in the
possession of LICENSEE, and, if requested by LICENSOR,
LICENSEE shall finish and deliver to LICENSOR any Licensed
Products in the process of manufacture as soon as possible and, in any
case, not later than 30 days after receiving LICENSOR's request,
and/or (B) with respect to any unsold inventory and work in the process
of manufacture, to complete such work in process and sell any
remaining inventory during the period not to exceed six months from
the date of termination or expiration of this Agreement provided that at
the completion of such six-month period, LICENSEE shall promptly
destroy and dispose of any Licensed Products (and Licensed Products
in the process of manufacture) not sold under this Section 10.4 and (3)
if this Agreement is terminated for any reason on or before December
31, 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, or Licensed Products, and upon such termination, LICENSEE
shall provide LICENSOR in reasonable detail complete information
regarding such technical information, improvements and/or
modifications. The foregoing license shall be self-effectuating, and
LICENSEE agrees upon written notice by LICENSOR at any time
hereafter to deliver to LICENSOR within 30 days of such notice any
document or other instrument reasonably requested by LICENSOR to
convey such license rights to LICENSOR such as, by way of example,
confirmations or instruments of conveyance or assignment. No
termination of this Agreement by expiration or otherwise shall release
LICENSEE or LICENSOR from any of its continuing obligations
hereunder, if any, or limit, in any way any other remedy one party may
have against the other party. Notwithstanding the foregoing,
LICENSEE's obligations to LICENSOR under Sections 3.1, 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 payment or credit terms specified in Arcticle 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 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 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: Xxxxxx X. Xxxx, Chairman
Research Frontiers Incorporated
000 Xxxxxxxxx Xxxx Xxxxx
Xxxxxxxx, Xxx Xxxx 00000-0000 XXX
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
LICENSEE: Xxxxxxxx Xxxxxxxxx, General Manager
Cricursa Xxxxxxxxx Curvados S.A.
Poligon Ind. Coll xx xx Xxxxx
00000 Xxxxxxxxxx
Xxxxxxxxx, Xxxxx
Facsimile: 000-00-0-000-00 60
Telephone: 000-00-0-000-00 11
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:_____________________________________________
Xxxxxx X. Xxxxxx, President
Date: October 24, 2002
CRICURSA XXXXXXXXX CURVADOS S.A.
By:___________________________________________
Xxxxxxxx Xxxxxxxxx, General Manager
Date: October 24, 2002
Schedule A
(As of October 7, 2002)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
4,772,103 Xxxxxx X. Xxxx
"Light Valve Containing an Improved
Suspension, and Liquids Therefor" 9/20/88 8/8/06
5,002,701 Xxxxxx X. Xxxx
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 3/26/08
4,877,313 Xxxxxx X. Xxxx et al
"Light Polarizing Materials and
Suspensions Thereof" 10/31/89 2/10/09
5,093,041 Xxxxxx X. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 Xxxx Xxxxxxxxx
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 Xxxxxx X. Xxxx
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92 10/31/06
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,279,773 Xxxxxx X. Xxxx
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
5,325,220 Xxxxxx X. Xxxx
"Light Valve With Low Emissivity
Coating As Electrode" 6/28/94 3/9/13
5,463,491 Xxxxxx X. 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 Xxxxxx X. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" 10/31/95 11/6/12
5,461,506 Xxxxxx X. 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 Xxxxxx X. 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 Xxxxxx X. Check III et al
"Method of Making Light
Polarizing Particles" 05/14/96 07/08/14
5,650,872 Xxxxxx X. Xxxx et al
"Light Valve Containing
Ultrafine Particles" 07/22/97 07/22/14
5,728,251 Xxxxxx X. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/1
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,764,402 Xxxx-Xxxxxxxx Xxxxxx; Xxxxxx Xxxxx
"Optical Cell Control System" 06/09/98 xx/xx/xx
5,838,482 Xxxxxx Xxxxxxxxx; Xxxxxx Xxxxxxx
"Optical Cell" 11/17/98 xx/xx/xx
5,691,849 Xxxx Xxxxxxx; Xxxx-Xxxxxxxx Xxxxxx; Xxxxx Xxxx
"Rear-View Assembly for a Vehicle
and an Adaptor Therefor" 11/25/97 xx/xx/xx
6,114,405 Xxxxxxx Xxxxxx 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 Xxxxxx X. Xxxx et al
"Light Polarizing Material, Liquid
Suspensions and Films Thereof, and Light
Valve Incorporating Same" 12/05/00 2/26/19
6,271,956B1 Xxxxxx X. Xxxx 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 Xxxxxxxxxx Xxxxxxxxxx et al
"SPD Films Having Improved Properties and
Light Valves Comprising Same" 10/09/01 05/24/20
6,334,967 B1 Xxxxxx X. Xxxx 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 Xxxxxxxxxx Xxxxxxxxxx et al
"SPD Films and Light Valves Comprising Same"07/09/02 [10/27/20]
6,429,961B1 Xxxxxx X. Xxxxxx et al
"Methods for Retrofitting Windows With Switchable
and Non-Switchable Window Enhancements and
Retrofitted Windows Produced Thereby" 08/06/02 10/03/20
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission]
