Exhibit 10.14
ADDENDUM #1
TO
THE JOINT COOPERATION
AGREEMENT
The Joint Cooperation Agreement ("Agreement") between CopyTele, Inc.
("CopyTele") located at ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ and
Volga Svet Ltd. ("Volga"), located at 101 Prospekt 50, Let ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇ signed October 10, 1997 and amended lastly on January 25, 2001 is
added as follows:
o DEFINITIONS
1.1 "Background Patents" shall mean any and all patent applications owned
by either Party in any country of the world, other than Program
Patents, and having a first filing date or priority date before the
effective date of this Agreement that relate to FED technology. The
Parties' Background Patents (including patent applications) are set
forth in Attachment 5.
1.2 "Background Technology" shall mean the Parties' technical information
and know how existing on the Effective Date relating to FED technology
(Attachment 5).
1.3 "Program Patents" shall mean any patents or patent applications based
on inventions, ideas or designs made by the Parties in pursuit of the
Milestones.
1.4 "Program Technology" shall mean any technical information and know how
developed by the Parties in pursuit of the Milestones.
1.5 "Milestones" shall mean the development program to be achieved in this
Addendum specifying steps for the target and time schedule agreed by
the Parties set forth in Attachment 2.
1.6 "Specification" shall mean the specification of a full color FED set
forth in Attachment 1.
1.7 "Affiliate" shall mean a company over 50% of whose voting equity is
owned directly or indirectly by a Party.
1.8 "Associate" shall mean a company or an organization that supports the
Parties as set forth in Attachment 4.
1.9 "FED" shall mean a field emission display utilizing edge emission
technology.
1.10 "Module" shall mean the display device, including (a) FED, (b) the
attached associated driver circuits and (c) controller circuits.
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1.11 "Product" shall mean a Module produced on the basis of the Background
Patents, Background Technology, Program Patents or Program Technology
referred to in the Addendum.
1.12 "Effective Dates" shall mean the date of the first payment made by
CopyTele to Volga in accordance with the Addendum.
o Volga shall meet the target specification shown in Attachment 1 and
shall follow the schedule and milestones shown in Attachment 2. The
target delivery date for the first samples of the Module is five months
after the effective date of this Addendum.
o The Agreement is extended to May 10, 2004.
The Development Term and the Target shall be as below.
Phase I - Term is one year starting on the Effective Date.
- Target is five (5) inch full color Module.
Phase II - Term is one year starting on the date of
completing Phase I. - Target shall be agreed in the
last quarter of Phase I.
Phase III - Term is one year starting on the date of
completing Phase II. - Target shall be as agreed in the
last quarter of Phase II.
The Parties shall confirm completion of the Specifications in each
Phase. If the Specifications have not been met for a Phase, the Parties
shall mutually discuss further development or other options before
entering the next Phase. The Parties shall agree to the Target,
Specification, Milestones and compensation for the next Phase before
proceeding to Phase II and Phase III.
o CopyTele and Volga are in charge of developing process and prototypes
in accordance with Specifications. Futaba Corporation ("Futaba") is in
charge of commercialization and mass production if Futaba considers it
commercially viable.
Futaba is in charge of reproducing prototypes in accordance with the
prototypes supplied by CopyTele with the assistance of CopyTele and
Volga.
o Compensation -- CopyTele to Volga
1.13 CopyTele shall pay to Volga the compensation for the development which
is set forth in Attachment 3 within 10 days after submission of
invoice.
1.14 The Parties shall negotiate within six (6) months from the Effective
Date of this Addendum in partial compensation, payable by Futaba to
CopyTele for CopyTele and Volga Background Technology.
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o CopyTele, with the assistance of Volga, shall also deliver to Futaba
information and materials necessary for reproducing, producing and
testing each Product resulting from Milestones.
Volga shall warrant that no information and delivered material will
violate the laws and regulations of Russia.
o During the term of this Addendum, the Parties shall jointly apply with
Futaba for Program Patents on joint inventions, ideas and designs made
in pursuit of Milestones (hereafter collectively referred to as
"Inventions") in any country in consideration of necessity with mutual
agreement and equally bear the costs and fees incurred for each such
patent application.
The Parties shall cause their employee-inventors to execute appropriate
documents and assignments necessary to effectuate the terms of this
paragraph.
o The production and sales of Products shall be subject to the following
paragraphs until the last patent among Background Patents and Program
Patents expires:
1.15 CopyTele and Futaba shall have the exclusive right to produce Products.
1.16 CopyTele, Volga and Futaba may entrust the production of Products to
Affiliates, provided that Affiliates shall not entrust it to any other
party.
1.17 Futaba shall have a sales right exclusively worldwide, excluding
Russia.
1.18 Not withstanding 8.1, Volga shall have the right to produce and/or sell
the Products in Russia.
o Volga shall grant to CopyTele a non-exclusive, irrevocable and
worldwide license of its Background Patents and Background Technology
upon payment by Futaba to CopyTele and CopyTele to Volga of the amounts
referenced in Paragraph 5.2.
Volga grants and agrees to grant a non-exclusive, irrevocable and
worldwide license of its Program Patents and Program Technology to
CopyTele.
Neither Party shall license the Program Patents and Program Technology
to a third party, excluding Futaba, Affiliates, and Associates without
the written consent of the other Party.
o The Parties shall negotiate rates for running royalties (to be paid
quarterly) for the licenses under Paragraph 9 in favor of the products
resulting from each Phase by the completion of the respective Phase,
but failing agreement by both Parties, such licenses shall not become
effective for the products resulting from such Phase until such royalty
rate is agreed upon.
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o The Parties agree not to disclose to third parties, with the exception
of Futaba, the other Party's confidential information which was
acquired in pursuit of the Milestones.
Notwithstanding the foregoing, either Party may disclose under its
responsibility the confidential information to its Affiliate, Futaba,
and Associates, for the purpose and subject to the conditions and
limitations set forth herein with written notice.
The obligations of this Article shall not apply to information:
- after it becomes freely available to the general public
without fault of the Party wishing to disclose it; or
- that is lawfully made available to the Party wishing to
disclose it without obligation of confidentiality by a third
party not under an obligation of confidence to the other Party
hereto; or
- that the Party wishing to disclose can show it has developed
independently of the development program of this Agreement,
and without reference to the other Party's Background
Technology or the Program Technology.
o If a Party breaches any of its material obligations under this
Addendum, the non-breaching Party shall have the right to give written
notice of such breach to the breaching Party, and, if the breaching
Party does not cure such breach within 10 days from the date of such
notice, the non-breaching Party shall have the right to terminate this
Agreement forthwith by a further written notice.
o All other terms and conditions outlines in the Agreement shall remain
unchanged.
CopyTele, Inc. Volga-Svet Ltd.
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ /s/ ▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
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Date: May 10, 2001 Date: May 10, 2001
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