[EXHIBIT 10.43- 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 ELECTRONICS LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
SPD CONTROL SYSTEMS CORPORATION
This License Agreement ("Agreement") effective as of
October 25, 2005 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
SPD CONTROL SYSTEMS CORPORATION, a New York
corporation ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves and Licensed Products (both as hereinafter
defined) and of methods and apparatus relating to products
incorporating such concepts; and is possessed of and can convey
information and know-how for such products and rights to
manufacture, use and sell such products; and
WHEREAS, LICENSEE is interested in manufacturing and
selling Licensed Products and also desires to provide for hire
external consulting and engineering services as well as the
internal creation of products other than Licensed Products which
incorporate hardware and/or software related systems; 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 electronics, including but not limited
to, circuit boards, controllers, connectors and wiring, used to
operate products incorporating a Light Valve, but shall not
include products incorporating a Light Valve unless a separate
license agreement between LICENSOR and LICENSEE or its
affiliated companies specifically permitting the production of
products incorporating a Light Valve is hereafter signed and
becomes effective. Nothing contained herein shall permit
LICENSEE to sell, lease, or otherwise dispose of a Light Valve.
"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.
The "Net Selling Price" of a Licensed Product on which
royalties are payable shall be 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. 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 (other than bona fide sample and demonstration units not
used in actual product installations, which shall not give rise to
the payment of a royalty under Section 3.1 hereof so long as
they are loaned or provided by LICENSEE to the end user at
LICENSEE's direct cost of components used to make such units
and no other consideration or payment is received by
LICENSEE from the recipient of such sample or demonstration
unit), 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 Licensed
Products, 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 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 15 days after the end of the calendar quarter in which
such Licensed Products were sold, leased, used or otherwise
disposed of by or for LICENSEE or a permitted sublicensee
hereunder. Each royalty payment shall be in U.S. dollars and
shall be accompanied by a statement by LICENSEE showing in
reasonable detail the amount of Licensed Products sold, used,
leased or otherwise disposed of by or for LICENSEE and its
sublicensees during the preceding quarter, any deductions taken
or credits applied, and the currency exchange rate used to report
sales made in currencies other than U.S. dollars. LICENSEE
shall use the exchange rates for buying U.S. dollars in effect on
the last day of each quarter, as specified in The New York
Times. The first such statement shall cover the period from the
Effective Date of this Agreement to the end of the first calendar
quarter in which a Licensed Product is sold, used, leased or
otherwise disposed of by or for LICENSEE or its sublicensees.
If requested by LICENSOR in writing at any time hereafter, the
aforementioned quarterly reports and payments may be required
to be made by LICENSEE on a monthly basis rather than on a
quarterly basis as aforesaid. In addition, LICENSEE shall
provide LICENSOR with monthly reports of its activities
involving the development of Licensed Products. 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. 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. LICENSEE agrees that it will not
discriminate against or among licensees of LICENSOR in terms
of pricing, delivery terms, quality control, or other terms or
conditions of sale, or the fulfillment of orders. No royalty shall
be due under this Section 3.1 of this License Agreement if such
product does not use any intellectual property rights of
LICENSOR.
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 payment
under Section 3.2 shall be paid to LICENSOR within 10 days of
the Effective Date of this Agreement. Each subsequent payment
under Section 3.2 to LICENSOR, shall be made on or before
[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, Returns and other Credits. 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. In
addition, if another licensee of LICENSOR (an "RFI Licensee")
has paid LICENSOR a royalty on a sale of their products, and
such royalty includes a royalty for the selling price of a Licensed
Product (to the extent that such royalty is separately designated
or identifiable as a Licensed Product supplied by LICENSEE in
a sales report given to LICENSOR by such RFI Licensee and
exceeds any guaranteed minimum royalty payments made by
such RFI Licensee to LICENSOR) supplied by LICENSEE or
its permitted sublicensees hereunder to such RFI Licensee upon
which LICENSEE has already paid LICENSOR a royalty, then a
credit shall be allowed against royalties accruing thereafter
under this Agreement equal to the royalty paid by LICENSEE to
LICENSOR on the sale of such Licensed Product to such RFI
Licensee. No royalty shall be due under Section 3.1 of this
License Agreement if such product does not use any intellectual
property rights of LICENSOR.
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) 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 product used as part of an overall system using SPD
Technology, LICENSEE shall include the details of such
transaction in its next periodic report under Section 3.5 hereof,
and shall pay LICENSOR a sales commission equal to 10% of
the amount received from such customer for which a royalty
under Section 3.1 hereof is not paid; provided, however, that a
sales commission of 4% shall apply if the product sold does not
involve a system for controlling light, heat, or glare. No such
payment shall be due from LICENSEE to LICENSOR if the
referred customer was already a customer of LICENSEE prior to
the date of referral by LICENSOR and LICENSEE informs
LICENSOR of such fact at the time that the referral by
LICENSOR is made. LICENSOR agrees to provide new and
existing licensees with contact information for LICENSEE, and
to provide LICENSEE with information about the key personnel
(to the extent that such contact information has been provided to
LICENSOR) at other licensees of LICENSOR. Such
information shall be considered by LICENSEE to be
confidential information of LICENSOR hereunder.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without
limitation, any manufacture, sale, lease, use or other disposition
of Licensed Products that is not in strict accordance with the
provisions of this Agreement shall be deemed a material breach
of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products are
sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to LICENSOR
or its affiliates for any claims, warranties, or liability relating to
such Licensed Products. LICENSEE agrees to take all steps to
reasonably assure itself that Licensed Products sold, leased or
otherwise disposed of by or for LICENSEE 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 also will
promptly obtain certifications and approvals of its Licensed
Products from Underwriters Laboratories in the United States of
America and similar organizations in foreign countries where
Licensed Products are sold or marketed, and to the extent
applicable, FCC certification. 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. LICENSEE
and its sublicensees each hereby agrees that LICENSEE and its
sublicensees will only look to the manufacturer or supplier of
any 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
not directly or indirectly attempt to reverse-engineer any
material provided to it hereunder by LICENSOR or its licensees
or their sublicensees.
4.7 Personnel. LICENSEE agrees to assign a sufficient
number of people 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, based
upon historical and anticipated demand by its customers, it shall
maintain adequate inventories of Licensed Products to meet on a
timely basis the anticipated requirements of LICENSOR and its
licensees and their sublicensees during the term of this
Agreement. In addition, 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, to the extent reasonably
necessary, shall participate at industry trade shows and
conferences and/or engage in other marketing and promotional
activities reasonably necessary to promote LICENSOR's SPD
technology and LICENSEE's business relating thereto.
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 or
to use trademarks specified by LICENSOR on LICENSEE's
Licensed Products. LICENSOR also licenses and permits
LICENSEE to use the term "SPD" as part of its corporate name.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times
ample product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement and
shall name LICENSOR as an additional insured. Upon request,
LICENSEE shall provide LICENSOR of evidence of such
insurance.
6.2 Indemnification. LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an "Indemnifying
Party"), each hereby indemnify and agree to hold harmless
LICENSOR and its shareholders, officers, directors, agents and
employees (each, an "Indemnified Party"), against any liability,
damage, loss, fine, penalty, claim, cost or expense (including
reasonable costs of investigation and settlement and attorneys',
accountants' and other experts' fees and expenses) arising out of
any action or inaction by any Indemnifying Party relating to this
Agreement including an Indemnifying Party's 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. Notwithstanding anything
contained herein to the contrary, LICENSOR shall have the
right to use, license and sublicense any improvement,
modification or invention which is jointly developed 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 $750 per man/day plus the cost of
any other materials used in making such materials, plus the cost
of shipping such materials to LICENSEE. Upon request by
LICENSEE, during the term of this Agreement and when
mutually convenient to LICENSOR and LICENSEE,
LICENSOR may make its personnel available to consult with
LICENSEE and its contractors, with compensation to
LICENSOR for such consultation to be mutually agreed to by
LICENSOR and LICENSEE. Each invoice submitted by
LICENSOR for such service shall include detailed explanations
of the charges, and, if requested by LICENSEE, copies of
receipts. The parties acknowledge that LICENSOR has no
obligation to transfer to LICENSEE any Technical Information
other than as may be embodied in such sample materials, and
that, other than sample materials, if any, that may be supplied by
LICENSOR as aforesaid, LICENSEE will be acquiring
materials from authorized suppliers other than LICENSOR.
8.2 Inquiries. LICENSEE and LICENSOR may also at any
time during the term of this Agreement make reasonable inquiry
by telephone, facsimile 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.
LICENSOR may visit and inspect any facility of LICENSEE or
any business or person working for or on behalf of LICENSEE
on the subject matter of this Agreement.
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, 2006 or
as of any anniversary thereof by giving LICENSOR prior notice
thereof unless sooner terminated as hereinafter provided. Such
notice shall be made in writing and shall be given between 60
and 90 days prior to the effective date for which such
termination is to be effective. If LICENSEE decides to terminate
this Agreement for any reason, LICENSEE shall provide
LICENSOR, along with the aforementioned notice of
termination, with a written report describing the reasons for such
termination.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time effective as of December
31, 2006 or as of any anniversary thereof upon at least 30 days'
notice to LICENSEE for any reason, provided, however, that
LICENSOR shall give LICENSEE at least one years' notice of
any early termination under this Section 10.3 if LICENSEE is
producing and selling Licensed Products hereunder.
Notwithstanding the foregoing, LICENSOR may terminate this
Agreement at any time upon at least 30 days' notice to
LICENSEE if LICENSEE shall have failed to make any
payment when due or at any time breach any material term of
this Agreement and such payment is not made or such breach is
not cured within any applicable cure period specified in Article
11 of this Agreement, or repeatedly provide inaccurate reports
hereunder, or if there has been a cessation by LICENSEE of
general operations or of work related to Licensed Products. In
addition, notwithstanding anything contained herein to the
contrary, LICENSOR may terminate this license upon 90 days
written notice at any time that the actual royalties received by
LICENSOR from LICENSEE in any year pursuant to Section
3.1 hereof does not exceed the amounts for that year specified in
Section 3.2 hereof.
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall
cease, and LICENSEE shall immediately return to LICENSOR
all Technical Information furnished to LICENSEE under this
Agreement, together with all reproductions, copies and
summaries thereof; provided, however, that LICENSEE may
retain solely for archival purposes one copy of all such
documents in its legal department files, (2) at LICENSOR's
option, LICENSEE shall, within 30 days of the date of such
termination or expiration, either (A) sell and deliver to
LICENSOR 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 or expires, upon such termination or
expiration, LICENSEE will either (A) sell its business to a third
party to make Licensed Products (provided however that
LICENSOR shall have the right to approve in its sole and
absolute discretion any such successor entity if intellectual
property rights of LICENSOR are needed for such successor
entity to operate its business), provided further, however, that
such third party can insure the uninterrupted and adequate
supply of Licensed Products to all RFI Licensees (as that term is
defined in Section 3.4 hereof) and their customers, or, if
compliance with all of the conditions described in this Clause
(A) of this Section 10.4 are not possible or cease to apply, then
(B) grant to LICENSOR a nonexclusive, royalty-free,
irrevocable, worldwide license with the right to grant
sublicenses to others to utilize all technical information,
improvements and/or modifications (whether or not the subject
of patents or pending patent applications) developed or invented
by or on behalf of LICENSEE and/or its sublicensees,
subcontractors, or agents hereunder through the date of such
termination or expiration of this Agreement relating to Light
Valves, or Licensed Products, 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 thirty (30) days after written notice of such
breach or failure is received by the breaching party; or (b) a
material misrepresentation is made by a party in any
representation or warranty contained in this Agreement and the
misrepresented facts or circumstances, if curable, remain
uncured thirty (30) days after written notice of such
misrepresentation is received by the breaching party; and, in
either case, if such breach or misrepresentation is not curable,
termination shall occur thirty (30) days after such
misrepresentation or breach at the option of the non-breaching
party; or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's
filing of a voluntary petition in bankruptcy; (b) the filing of any
involuntary petition to have such first party declared bankrupt
which has not been dismissed within ninety (90) days of its
filing; (c) the appointment of a receiver or trustee for such first
party which has not been rescinded within ninety (90) days of
the date of such appointment; or (d) such first party otherwise
becoming insolvent or otherwise making an assignment for the
benefit of creditors.
11.2 Default by a Party. If there occurs an Event of
Default with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or
specific performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting
party shall have no further obligations under this
Agreement except those which expressly survive
termination, and except with respect to royalty
payments due and owing to LICENSOR as of the
termination date or any subsequent period specified in
Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for
itself, its sublicensees, and their employees and agents that for
twenty (20) years from the later of the Effective Date of this
Agreement or the latest date of its receipt of information
disclosed to LICENSEE by LICENSOR pursuant to this
Agreement, such information shall be held in confidence;
provided, however, there shall be no obligation to treat as
confidential information which is or becomes available to the
public other than through a breach of this obligation, or which
was already possessed by LICENSEE in writing (or otherwise
provable to be in the possession of LICENSEE) prior to the
Effective Date of this Agreement (and was not received from
LICENSOR) or which is shown by LICENSEE to have been
received by it from a third party who had the legal right to so
disclose it without restrictions and without breach of any
agreement with LICENSOR or its licensees. LICENSOR shall
affix an appropriate legend on all written documentation given
to LICENSEE which contains confidential information.
LICENSEE acknowledges that the list of patent applications
contained on Schedule A is confidential information of
LICENSOR. If confidential information is otherwise conveyed
orally by LICENSOR, LICENSOR shall specify to LICENSEE
at the time such information is being conveyed (or in a
subsequent letter referring to the conversation) that the
information conveyed is confidential. It is understood and
agreed that, unless otherwise provided in a separate agreement
between LICENSEE and LICENSOR, LICENSEE has no
obligation hereunder to provide LICENSOR with any
confidential or proprietary information, and that LICENSOR
shall have no obligation hereunder to LICENSEE to maintain in
confidence or refrain from commercial or other use of any
information which LICENSOR is or becomes aware of under
this Agreement. The terms and provisions of this Agreement or
any other agreement between the parties shall not be considered
confidential except that LICENSEE may not disclose the
minimum annual royalty payments specified in Article 3 hereof
without LICENSOR's prior written consent, and the parties
hereto acknowledge that, pursuant to the Securities Exchange
Act of 1934, as amended, and the regulations promulgated
thereunder, LICENSOR may file copies of this Agreement with
the Securities and Exchange Commission and with NASDAQ
and with any other stock exchange on which LICENSOR's
securities may be listed. LICENSEE agrees that for the period
of time during which LICENSEE is obligated to keep
information confidential hereunder, LICENSEE will not make,
use, sell, lease or otherwise dispose of products using or directly
or indirectly derived from Licensed Products, Light Valves, or
Components, or which otherwise comprise suspended particles,
which when subjected to a suitable electric or magnetic field,
orient to produce a change in the optical characteristics of the
suspension ("SPD Technology") unless an agreement between
LICENSOR and LICENSEE permitting it to do so is in full
force and effect and the royalties, if any, provided in such
agreement are being paid to LICENSOR on such products. The
foregoing restriction shall not apply to products (i) which do not
directly or indirectly incorporate SPD Technology, such as, but
not limited to, liquid crystal devices, or electrochromic devices,
or (ii) which incorporate technology involving suspended
particles, which when subjected to a suitable electric or
magnetic field, orient to produce a change in the optical
characteristics of the suspension but which is independently
developed and which is not in any way directly or indirectly
derived from any Technical Information of LICENSOR or its
licensees, sublicensees, or any of their affiliates. LICENSEE
shall have the burden of proving by clear and convincing
evidence that the availability of any exception of confidentiality
exists or that the foregoing restrictions do not apply to a
particular product. Nothing contained in this section, however,
shall be construed as granting LICENSEE any rights or licenses
with respect to any Technical Information or patents of
LICENSOR or its other licensees or their sublicensees.
(b) LICENSEE will have the right to provide materials to,
and to disclose information to, a subcontractor relating to this
Agreement; provided, however, that LICENSEE shall only
disclose such information as is strictly necessary to enable said
subcontractor to perform its manufacturing task, and provided
that prior to disclosing any information to said subcontractor,
said subcontractor has signed a secrecy agreement with
LICENSEE at least as protective of LICENSOR's Technical
Information as the provisions of this Agreement, including,
without limitation, said subcontractor's specific agreement to be
bound by the provisions of Section 12.1 hereof to the same
extent as LICENSEE. For such purposes, LICENSEE may
develop a standard form of secrecy agreement for LICENSOR's
approval, after which LICENSEE may use such secrecy
agreement with all subcontractors without LICENSOR's prior
approval of the secrecy agreement being necessary. LICENSEE
shall have all subcontractors sign said secrecy agreement prior
to the disclosure of Technical Information to said
subcontractor, and LICENSEE shall send LICENSOR a copy of
every such secrecy agreement within thirty (30) days after the
execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents
and warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery of
this Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have
been duly authorized by all necessary corporate action by
LICENSOR and LICENSEE and this Agreement is a valid and
binding obligation enforceable against the parties in accordance
with its terms, except to the extent limited by bankruptcy,
insolvency, moratorium and other laws of general application
relating to general equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with its
rights and obligations pursuant to any agreement by a party and
any other entity; and
13.1.3 Publicity. The parties shall have the right to use
non-confidential information, including but not limited to
information concerning this Agreement, a description of the
other party, and its logos for marketing, sales, technical
assistance, investor relations, disclosure and public relations
purposes, and that information permitted to be disclosed by a
party under this Section 13.1.3 may appear on such party's (or
its subsidiaries' or sublicensees') Internet web site, along with
links to the Internet web sites, and specific pages therefrom, of
the other party and its subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents
and warrants that it has the right to convey the rights and
licenses granted by this Agreement, and otherwise to perform its
obligations under this Agreement. LICENSOR has caused its
employees who are employed to do research, development, or
other inventive work to disclose to it any invention or
information within the scope of this Agreement and to assign to
it rights in such inventions and information in order that
LICENSEE shall receive, by virtue of this Agreement, the
licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is
not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by
any third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a)
that LICENSEE will be able to develop, manufacture, sell or
otherwise commercialize 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 and CEO
Research Frontiers Incorporated
000 Xxxxxxxxx Xxxx Xxxxx
Xxxxxxxx, Xxx Xxxx 00000-0000 XXX
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
LICENSEE: Xx. Xxx Xxxxxxxxx, Chairman
SPD Control Systems Corporation
000 Xxxxxxxxxx Xxxxx Xxxxxxx, Xxxxx 000
Xxxxxxxxx, Xxx Xxxx 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.
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: October 25, 2005
SPD CONTROL SYSTEMS CORPORATION
By: /s/ Xxx Xxxxxxxxx
Xxx Xxxxxxxxx, Chairman
Date: October 20, 2005
Schedule A
(As of October 25, 2005)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued
Date
5,764,402 Xxxx-Xxxxxxxx Xxxxxx; Xxxxxx Xxxxx
"Optical Cell Control System" 06/09/98 04/24/15
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)
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
PENDING INTERNATIONAL APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
Patent Number
or
Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
FOREIGN PATENTS AND PATENT APPLICATIONS
Patent Number
or
Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
