[EXHIBIT 10.50 - Certain portions of this document have been
omitted in the publicly filed version of this document pursuant
to the Registrant's request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Omitted confidential information is indicated in brackets
in this Exhibit.]
SPD-SMART WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
PPG INDUSTRIES INC.
This License Agreement ("Agreement") effective as of
September 29, 2008 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR")
and PPG INDUSTRIES INC., a Pennsylvania corporation,
acting through its Automotive OEM Glass SBU
("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 only a Light Valve Transportation
Vehicle Window Product incorporating a Light Valve. The term
"Licensed Product" shall not include Light Valves used or
intended for use in any product other than as specifically
defined herein, such as but not limited to, other window
products not specifically defined herein, such as, but not limited
to, Light Valve Architectural Window Products, window
products for vehicles not specifically included in the definition
of Light Valve Transportation Vehicle Window Product, 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 incorporated or intended
to be incorporated as described above into a Light Valve
Transportation Vehicle Window Product.
"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 in the form of a liquid suspension, gel, film or other
material.
"Light Valve Architectural Window Product" means a Light
Valve used or intended for use solely as a window integrally
incorporated in, or attached as a fixture to the external structure
or internal structure of any building, whether permanent or
temporary, and whether above or below ground.
"Light Valve Transportation Vehicle Window Product" means a
Light Valve used or intended for use as a window (including
sunroofs, windshields, and side and rear window panes which
are an integral part of the internal or external structure)
integrally incorporated in a military or civilian transportation
vehicle. The term "Light Valve Transportation Vehicle Window
Product" shall not include a Light Valve used or intended for
use as a sunvisor, but may include Light Valves which are used
or intended for use in a military or civilian transportation
vehicle as, or as part of, or are laminated to, or the surface area
of which is primarily attached to, a window, sunroof or
windshield. The term "transportation vehicle" shall mean
passenger cars, recreational vehicles, trucks, mobile cranes,
buses, heavy trucks and trains, but shall not include other types
of vehicles such as aircraft, boats, spacecraft and space stations.
The "Net Selling Price" of Licensed Products on which royalties
are payable shall be the genuine selling price of LICENSEE and
its sublicensees hereunder f.o.b. factory at which nonaffiliated
customers are billed in the usual course of business for Licensed
Products, as packed for shipment to the customer, 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 Licensed Products to
the customer's premises or place of installation or delivery; (iv)
the cost to LICENSEE or its sublicensees hereunder of any part
or component included in Licensed Products which is purchased
directly from LICENSOR; (v) insurance costs and the costs of
packing material, boxes, cartons and crates required for
shipping; provided, however, that the Net Selling Price of a
Licensed Product may not be less than 90% of the gross selling
price of said Licensed Product after all deductions therefrom
excluding materials purchased by LICENSEE from LICENSOR
pursuant to subsection (iv) hereof, if any. If a Licensed Product
is leased, sold, used or to 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. If a Licensed
Product is sold in combination with other products or as a part
or component of another product and a single selling price is
billed for such combination product, the Net Selling Price for
the computation of royalties payable hereunder on such
Licensed Product shall be equal to the product of the single
selling price for such combination product (reduced as may be
permitted by subsections (i-v) above) times the actual cost of
manufacturing such Licensed Product divided by the actual cost
of manufacturing such combination product. The calculation of
the Net Selling Price of a Licensed Product when the
LICENSEE is not a Tier 1 supplier (i.e. a direct supplier to the
manufacturer of a final product in a supply chain) shall be based
upon the selling price received by the Tier 1 supplier
incorporating glazing provided by the LICENSEE (reduced as
may be permitted by subsections (i-v) above). The method for
reporting the Net Selling Price in such instances when
LICENSEE is not a Tier 1 supplier will be either agreed to
between LICENSOR and LICENSEE on a case by case basis or
set forth in each commercial contract between LICENSEE and
such Tier 1 supplier, and shall include either (A) the Tier 1
supplier providing LICENSEE with documentation of the Net
Selling Price for purposes of the royalty calculation made
pursuant to Section 3.1 hereof and payment by LICENSEE, or
(B) the Tier 1 supplier calculating the Net Selling Price and
paying the royalty calculated pursuant to Section 3.1 hereof
directly to LICENSOR. For purposes of calculation of Net
Selling Price by a Tier 1 supplier who is not a licensee of
LICENSOR, such Tier 1 supplier may provide an aggregate
amount of the total Net Selling Price of Licensed Products sold
within a reporting period. In cases where the Tier 1 supplier is
not a licensee of LICENSOR, payments made directly to
LICENSOR from the Tier 1 supplier pursuant to clause (B)
above shall be considered the same as payments made by
LICENSEE pursuant to Section 3.1 hereof. In cases where the
Tier 1 supplier is also a licensee of LICENSOR, no royalty shall
be due from LICENSEE if such Tier 1 supplier is licensed by
LICENSOR to sell a Licensed Product.. When LICENSEE is a
Tier 1 supplier, the calculation of the Net Selling Price shall be
based upon the selling price received by LICENSEE.
"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, electronics and electronic systems,
lamination procedures 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, and all foreign
counterparts thereof to make, have made, and to lease, sell, or
otherwise dispose of Licensed Products in the Licensed
Territory. Notwithstanding anything contained herein or in
Schedule A hereto to the contrary, no rights or licenses shall be
granted hereunder with respect to any new particle (other than
LICENSOR's current polyiodide crystal) now or hereafter under
development or invented by or for LICENSOR or comprising
part of the activatable material of a Light Valve emulsion or
film sold or for sale by any other licensee of LICENSOR.
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 each of which
acknowledges to LICENSOR in writing for each sublicense 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 in a sublicensee.
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 ten percent (10%) of the Net
Selling Price of Licensed Products which embody, or the
manufacture of which utilizes, any of the rights granted under
Section 2.1 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 30 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 an average quarterly exchange rate for buying U.S.
dollars , as downloaded from Bloomberg and shall provide
LICENSOR with the data and calculation used to calculate such
average quarterly exchange rate. 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. In addition, LICENSEE shall
provide LICENSOR with quarterly updates of its activities
involving the development of Licensed Products. LICENSEE
shall also furnish to LICENSOR upon release, a copy of each
brochure, price list (to the extent publicly disclosed),
advertisement or other marketing and promotional materials
prepared, published or distributed by LICENSEE or its
sublicensees relating to Licensed Products. LICENSOR shall
have the right, but not the obligation, to approve any use by
LICENSEE of LICENSOR's name, logo, or other information
about Licensed Products, and to require the correction of any
inaccurate information. Upon written notice to LICENSEE,
LICENSOR may change the above-referenced quarterly periods
to become calendar monthly periods at any time after the
royalties payable under this Section 3.1 exceed the Minimum
Royalties specified in Section 3.2 hereof, in which case
LICENSEE shall have the option to either provide sales reports
and payments monthly as aforesaid, or to make monthly
estimated sales reports and payments of royalties thereon, with a
final reconciliation being done for the third month in each
calendar quarter.
3.2 Minimum Royalties - Regardless of whether
LICENSEE is selling any Licensed Products, during the term of
this Agreement LICENSEE agrees to pay LICENSOR an initial
fee of [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission] upon signing of
this License Agreement and the non-refundable minimum royalties
(in U.S. Dollars) specified below for each of the stated periods:
Period Minimum Royalty
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
3.3 Time and Method of Payment. The initial fee and
payment for the first minimum annual royalty payment under
Section 3.2 shall be paid to LICENSOR within 10 days of the
Effective Date of this Agreement, and each subsequent payment
under Section 3.2 to LICENSOR shall be made on or before
January 31 of each license year commencing January 1, 2009.
All other payments shall be due on the date specified in this
Agreement, or if no date is specified, within 60 days of invoice.
All payments that remain unpaid past their due date shall bear
interest at an annual rate equal to the lesser of 25% or the
maximum interest rate permitted by law. 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 any country in the Licensed Territory
where books, records, or information relating to this Agreement
are kept) 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 Customer Referrals. Although LICENSOR is under
no obligation to do so, LICENSOR may from time to time refer
customers to LICENSEE. In the event that such customer
purchases, leases or rents products or services from LICENSEE
other than a Licensed Product upon which a royalty is paid by
LICENSEE to LICENSOR, LICENSEE shall include the details
of such transaction in its next quarterly report under Section 3.5
hereof, and shall pay LICENSOR a sales commission equal to
ten percent (10%) of the amount received from such customer
for which a royalty under Section 3.1 hereof is not paid. No
such payment shall be due from LICENSEE to LICENSOR if
the referred customer was already a customer of LICENSEE (or
LICENSEE can provide written evidence that it was already in
discussions with such person or entity about becoming 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. In addition, if
a sale to a customer would otherwise require a payment by
LICENSEE to LICENSOR pursuant to this Section 3.6 above,
and the product or service sold, leased or rented to such
customer does not involve a product or service involving the
variable, dynamic (i.e. control that is provided by a response
after the change of certain parameters) or adaptive control of
light or glare, or privacy, then in such case the applicable
percentage sales commission shall be 5% instead of 10%, and
such payments referred to in this sentence shall only be due for
sales, leases or rentals of products or services not involving the
variable, dynamic (i.e. control that is provided by a response
after the change of certain parameters) or adaptive control of
light, or glare, or privacy, invoiced or sold to such referred
customer within one year of the date of the first invoice by
LICENSEE to such referred customer. Notwithstanding
anything contained in this Section 3.6 to the contrary, no
payment shall be due to LICENSOR under this Section 3.6
unless LICENSEE has sent LICENSOR a written notice via
email, fax or overnight courier indicating that it wishes to have
the provisions this Section 3.6 apply to a referral or prospective
referral of a customer by LICENSOR to LICENSEE.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without
limitation, any manufacture, sale, lease, use or other disposition
of Licensed Products that is not in strict accordance with the
provisions of this Agreement shall be deemed a material breach
of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products are
sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to LICENSOR
or its affiliates for any claims, warranties, or liability relating to
such Licensed Products. LICENSEE agrees to take reasonable
steps to 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 is unaware of any approval from
any governmental agency or ministry, or from any third party,
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. In no event shall LICENSOR 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 the production of any material provided to it
hereunder by LICENSOR 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.
4.8 Promotional Activities. LICENSEE agrees that it
shall maintain, either at its own facilities or that of any
laminating subcontractor selected by LICENSEE, adequate
inventories of SPD light control film purchased from any
authorized supplier of Light Valve film to meet on a timely
basis the anticipated requirements of LICENSEE for
incorporation into Licensed Products during the term of this
Agreement. In addition, to the extent commercially reasonable
and consistent with LICENSEE's current practices, 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 all major industry trade shows and
conferences and engage in other marketing and promotional
activities reasonably necessary to promote LICENSOR's SPD
technology and LICENSEE's business relating thereto.
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 provided
that use of such logo complies with the logo owner's use policy
with respect thereto. LICENSOR acknowledges that it may not
use the logo of PPG Industries, Inc. without LICENSOR's prior
written consent. 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 Licensed Products. LICENSOR and LICENSEE
will cooperate and work in good faith together regarding the
commercially-reasonable compliance with the provisions of this
Section 5.1.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times
ample product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement and,
if requested by LICENSOR, LICENSEE shall name
LICENSOR as an additional insured. Upon request, LICENSEE
shall provide LICENSOR of evidence of such insurance.
LICENSEE may fulfill its obligation under this Section 6.1 as
part of a general company-wide program of self-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 ("Improvements") shall not be included in this
Agreement. Upon written request by the non-inventing party,
LICENSOR and LICENSEE shall negotiate in good faith with
each other regarding the grant of nonexclusive rights and
licenses to use such Improvements, but neither party shall be
obligated to grant such rights and licenses to the other.
Notwithstanding anything contained herein to the contrary, if
the parties hereto enter into a separate agreement subsequent to
the Effective Date of this Agreement regarding the joint
development of an Improvement, each party shall have the
royalty-free right to use, license and sublicense any
Improvement which is jointly developed under such subsequent
joint development agreement by LICENSEE or its officers,
directors, employees, affiliates, contractors, or consultants, on
the one hand, and LICENSOR or its officers, directors,
employees, affiliates, contractors or consultants, on the other
hand.
(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 Licensed Products,
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 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
Licensed Products for experimental use only by LICENSEE,
and shall charge LICENSEE $1,500 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.
8.3 Visits. During all visits by either party to the
facilities of the other party, visitors shall comply with all
reasonable rules of the host company, and each party to this
Agreement will indemnify and hold the other party harmless
from any liability, claim or loss whatsoever (i) for any injury to,
or, death of, any of its employees or agents while such persons
are present at the facility of the other party; and (ii) for any
damages to its own property or to the property of any such
employee or agent which may occur during the presence of any
such person at the facility of the other party, regardless of how
such damage occurs.
8.4 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the other
shall be used solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall
provide appropriate notices of patents, or other similar notice of
the patent rights of the other party on all products utilizing the
patented inventions of the other party. Either party may add its
own patent notice to any copy or embodiment which contains its
patented inventions. If customer or government restrictions
exist, LICENSOR and LICENSEE will cooperate and work in
good faith together regarding the compliance with the
provisions of this Section 9.1 to protect LICENSOR's
intellectual property, to the extent commercially reasonable.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR is 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 for any reason effective as of
December 31, 2011 (or as such date may be extended pursuant
to the last sentence of Section 10.3) 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 at least 60 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 for any reason effective as of
December 31, 2011 (or as such date may be extended pursuant
to the last sentence of this Section 10.3) or as of any anniversary
thereof upon at least 30 days' written notice to LICENSEE,
provided, however, that LICENSOR shall give LICENSEE at
least one years' notice of any early termination under this
Section 10.3 if LICENSEE is producing and selling Licensed
Products hereunder, and provided further that if LICENSOR
gives LICENSEE a notice of termination pursuant to the first
sentence of this Section 10.3 and the effective termination date
of such notice would be prior to the expiration of a binding
contractual obligation of LICENSEE to supply Licensed
Products to a customer of LICENSEE which contract is in effect
either at the time LICENSOR's termination notice is given or
prior to December 31, 2011 (or as such date may be extended
pursuant to the last sentence of this Section 10.3), then the
LICENSEE may, by providing LICENSOR at least 10 business
days prior to the proposed termination date with a copy of the
relevant portion of such contract, extend the effective date of
LICENSOR's termination to December 31st of the calendar
year in which the aforesaid contractual obligation of LICENSEE
to its customer expires, but in no event shall the foregoing
extension imply any extension of time beyond the time period
specified in Section 10.1 above. Notwithstanding the foregoing,
LICENSOR may terminate this Agreement at any time upon at
least 30 days' written 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
provides materially inaccurate reports hereunder, or if there has
been a cessation by LICENSEE of general operations or of work
related to Licensed Products for longer than six (6) months.
LICENSEE shall have the option, exercisable by delivering to
LICENSOR on or before December 31, 2010, a wire payment of
[Confidential Information Omitted and filed separately with
the Securities and Exchange Commission] and a written notice
referring to such payment and indicating that LICENSEE wishes
to extend by five years the possible termination dates specified
in Sections 10.2 and 10.3 hereof. Upon the timely receipt of
such notice and payment, the references to "December 31, 2011"
in Sections 10.2 and 10.3 shall automatically be amended to
read "December 31, 2016" and the reference to [Confidential
Information Omitted and filed separately with the
Securities and Exchange Commission]in Section 3.2 as minimum
annual royalty for of each license year beyond 2011 shall
automatically be amended to read [Confidential Information
Omitted and filed separately with the Securities and Exchange
Commission] without further action required by the parties
to this Agreement.
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) LICENSEE may,
with respect to any unsold inventory and work in the process of
manufacture, 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 or expires, upon such termination or
expiration, LICENSEE, to the extent LICENSEE has such a
right, 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 from the Effective Date of
this agreement through the date of such termination or
expiration of this Agreement relating to Light Valves, or
Licensed Products (excluding any technology that either (A)
does not relate directly to the creation of variable light
transmission in an SPD window including, but not limited to,
infrared reflective coatings, antennas, heating grids, interlayers,
and glass fabrication technology, or (B) that relates only to
electrochromic or liquid crystal window technology that would
not otherwise be usable with SPD Technology), 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, 3.5, 3.6, 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 sixty (60) 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 sixty (60) 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 sixty (60) 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, but the
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 is
confidential information of LICENSOR. If confidential
information is otherwise conveyed orally by LICENSOR,
LICENSOR shall specify to LICENSEE at the time such
information is being conveyed (or in a subsequent letter
referring to the conversation) that the information conveyed is
confidential. It is understood and agreed that, unless otherwise
provided in a separate agreement between LICENSEE and
LICENSOR, LICENSEE has no obligation hereunder to provide
LICENSOR with any confidential or proprietary information,
and that LICENSOR shall have no obligation hereunder to
LICENSEE to maintain in confidence or refrain from
commercial or other use of any information which LICENSOR
is or becomes aware of under this Agreement. The terms and
provisions of this Agreement or any other agreement between
the parties shall not be considered confidential except that
LICENSEE may not disclose the minimum annual royalty
payments specified in Article 3 hereof without LICENSOR's
prior written consent, and the parties hereto acknowledge that,
pursuant to the Securities Exchange Act of 1934, as amended,
and the regulations promulgated thereunder, LICENSOR may
file copies of this Agreement with the Securities and Exchange
Commission and with NASDAQ and with any other stock
exchange on which LICENSOR's securities may be listed.
LICENSEE agrees that for the period of time during which
LICENSEE is obligated to keep information confidential
hereunder, LICENSEE will not make, use, sell, lease or
otherwise dispose of products using or directly or indirectly
derived from Licensed Products, Light Valves, or Components,
or which otherwise comprise suspended particles, which when
subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the suspension
("SPD Technology") unless an agreement between LICENSOR
and LICENSEE permitting it to do so is in full force and effect
and the royalties, if any, provided in such agreement are being
paid to LICENSOR on such products. The foregoing restriction
shall not apply to products (i) which do not directly or indirectly
incorporate SPD Technology, such as, but not limited to, liquid
crystal devices, or electrochromic devices, or (ii) which
incorporate technology involving suspended particles, which
when subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the suspension
but which is independently developed and which is not in any
way directly or indirectly derived from any Technical
Information of LICENSOR or its licensees, sublicensees, or any
of their affiliates. LICENSEE shall have the burden of proving
by clear and convincing evidence that the availability of any
exception of confidentiality exists or that the foregoing
restrictions do not apply to a particular product. Nothing
contained in this section, however, shall be construed as
granting LICENSEE any rights or licenses with respect to any
Technical Information or patents of LICENSOR or its other
licensees or their sublicensees.
(b) LICENSEE will have the right to provide materials
to, and to disclose information to, a subcontractor relating to this
Agreement; provided, however, that LICENSEE shall only
disclose such information as is strictly necessary to enable said
subcontractor to perform its manufacturing task, and provided
that prior to disclosing any information to said subcontractor,
said subcontractor has signed a secrecy agreement with
LICENSEE at least as protective of LICENSOR's Technical
Information as the provisions of this Agreement, including,
without limitation, said subcontractor's specific agreement to be
bound by the provisions of Section 12.1 hereof to the same
extent as LICENSEE. For such purposes, LICENSEE may
develop a standard form of secrecy agreement for LICENSOR's
approval, after which LICENSEE may use such secrecy
agreement with all subcontractors without LICENSOR's prior
approval of the secrecy agreement being necessary. LICENSEE
shall have all subcontractors sign said secrecy agreement prior
to the disclosure of Technical Information to said subcontractor,
and LICENSEE shall send LICENSOR a copy of every such
secrecy agreement within thirty (30) days after the execution
thereof.
(c) Notwithstanding anything contained in this
Agreement to the contrary, under no circumstances may
LICENSEE disclose any confidential or proprietary information
of LICENSOR outside of the Automotive OEM Glass SBU of
PPG Industries, Inc. or any affiliate thereof or successor thereto
without the prior written consent of LICENSOR, which consent
may be withheld for any reason in LICENSOR's sole and
absolute discretion.
(d) Notwithstanding anything contained in this
Agreement to the contrary, under no circumstances shall
LICENSEE be required to disclose to LICENSOR anything
information of LICENSEE considered by LICENSEE to be
confidential or proprietary information of LICENSEE unless
such information is required for LICENSOR to verify any
information required to be reported by LICENSEE hereunder or
to enforce any rights under this Agreement and LICENSOR has
signed an agreement with LICENSEE after the Effective Date of
this Agreement agreeing to keep such information confidential.
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, and a description of the
other party, 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. Each party shall
have the right to require the correction of any materially
inaccurate information.
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 or threatened
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 Licensed Products.
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 and CEO
Research Frontiers Incorporated
000 Xxxxxxxxx Xxxx Xxxxx
Xxxxxxxx, Xxx Xxxx 00000-0000 XXX
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
LICENSEE: Xxxxxxx X. Xxxxxxx
Director of Marketing and Strategic Growth
PPG INDUSTRIES INC.
000 Xxxx Xxx Xxxx,
Xxxxxxxx XX, 00000
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code. In the event that either party
should file a petition under the federal bankruptcy laws, or that
an involuntary petition shall be filed against such party, the
parties intend that the non-filing party shall be protected in the
continued enjoyment of its rights hereunder to the maximum
feasible extent including, without limitation, if it so elects, the
protection conferred upon licensees under section 365(n) of
Title 17 of the U.S. Code. Each party agrees that it will give the
other party immediate notice of the filing of any voluntary or
involuntary petition under the federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits
hereto have been drafted jointly by the parties and in the event
of any ambiguities in the language hereof, there shall no be
inference drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed
in any number of counterparts, each of which shall be deemed
an original, but all of which shall constitute one and the same
instrument.
14.13 Status of the Parties. The status of the parties
under this Agreement shall be solely that of independent
contractors. No party shall have the right to enter into any
agreements on behalf of the other party nor shall it represent to
any person that it has such right or authority.
14.14 License with Automotive OEM Glass Only. The
parties hereto agree that notwithstanding the fact that a duly
authorized officer of PPG Industries, Inc., a Pennsylvania
corporation ("PPG") signs this License Agreement, the rights
and obligations of "LICENSEE" hereunder only pertain to the
Automotive OEM Glass Business of PPG which, for purposes of
this Agreement, shall be considered by the parties hereto as a
separate and distinct business entity. All references to
"LICENSEE" hereunder shall pertain only to the Automotive
OEM Glass Business of PPG.
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/ Xxxxxx X. Xxxxxx
Xxxxxx X. Xxxxxx, President
Date: September 29, 2008
PPG INDUSTRIES INC.
By:/s/ Xxxxx Xxxxxxxxx
Xxxxx Xxxxxxxxx, President and CEO, PGW
Date: September 29, 2008
Schedule A
(As of September 29, 2008)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
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
5,279,773 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 12/08/14
5,728,251 Xxxxxx X. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/15
5,764,402 Xxxx-Xxxxxxxx Xxxxxx; Xxxxxx Xxxxx
Optical Cell Control System 06/09/98 04/24/15
5,838,482 Xxxxxx Xxxxxxxxx; Xxxxxx Xxxxxxx
Optical Cell 11/17/98 05/16/15
5,691,849 Xxxx Xxxxxxx; Xxxx-Xxxxxxxx Xxxxxx; Xxxxx Xxxx
Rear-View Assembly for a Vehicle
and an Adaptor Therefo 11/25/97 11/25/14
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 02/26/19
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
6,334,967B1 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
6,517,746 Xxxxxx X. Xxxx et al.
Polyhalide Particles and Light Valves
Comprising Same 02/11/03 01/05/21
6,522,446 Xxxxxx X. Xxxx
Anisometrically Shaped Metal Particles,
Liquid Suspensions and Films Thereof And
Light Valves Comprising Same 02/18/03 04/25/21
6,529,312B1 Xxxxxx X. Xxxx
Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same 03/04/03 06/07/19
[See also U.S. Patent No. 6,987,602 filed
December 27, 2002, a continuation-in-part of this patent]
6,606,185B2 Xxxxxx X. Xxxx
SPD Films and Light Valves Comprising Liquid
Suspensions of Heat-Reflective Particles of
Mixed Metal Oxides and Methods of Making
Such Particles 08/12/03 12/08/14
6,804,040 Xxxxxx X. Xxxxxxx, et al
Method and Device for Controlling Voltage
Provided to a Suspended Particle Device 10/12/04 02/13/23
6,897,997 Xxxxxx X. Xxxxxxx
Method and Device for Controlling Voltage
Provided to a Suspended Particle Device 05/24/05 02/13/23
(continuation-in-part of 6,804,040)
Xxxxxxxxxx Xxxxxxxxxx et al
6,900,923 "Siloxane Matrix Polymers and SPD Light Valve Films
Incorporating Same" 05/31/05 06/18/23
Xxxxxx X. Xxxx, et al
6,936,193 "SPD Light Valve Film Incorporating New
Suspending Media,and Light Valve
Incorporating Same" 08/30/05 04/14/23
6,987,602 B2 Xxxxxx X. Xxxx, et al
Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same 01/17/06 06/07/19
(continuation-in-part of patent 6,529,312B1)
7,361,252 Xxxxxx X. Slovak, et al
"Methods for Laminating Films for SPD Light Valves
and SPD Light Valves Incorporating Such Laminated
Films" (claims priority from 60/562,329) 04/22/08 10/26/25
7,417,785 Xxxxxx X. Xxxxxxx
"Methods and Circuits for Distributing Power
to SPD Loads" 08/26/08 01/18/25
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