PRINCETON UNIVERSITY
The UNIVERSITY OF SOUTHERN CALIFORNIA
UNIVERSAL DISPLAY CORPORATION
AMENDED LICENSE AGREEMENT
This Agreement, made and entered into this ________ day of ________, 1997,
(the Effective Date) by and between The Trustees of PRINCETON UNIVERSITY a not
for profit educational institution duly organized and existing under the laws of
the STATE OF NEW JERSEY, USA (hereinafter referred to as "PRINCETON"), the
UNIVERSITY OF SOUTHERN CALIFORNIA, a California nonprofit corporation with its
principal place of business at Xxxxxxxxxx Xxxx, Xxx Xxxxxxx, Xxxxxxxxxx 00000
and UNIVERSAL DISPLAY CORPORATION, a corporation duly organized under the laws
of Pennsylvania and having its principal office at Three Xxxx Xxxxx, Xxxx, Xxxxx
000, Xxxx Xxxxxx, XX 00000 (hereinafter referred to as "LICENSEE").
WITNESSETH
WHEREAS, PRINCETON and USC are the owner of certain "Patent Rights" (as
later defined herein) relating to technical information and inventions made by
PRINCETON and USC faculty and staff, have the right to grant licenses under
said Patent Rights, subject only to a royalty-free, nonexclusive license
heretofore granted to the United States Government; and have granted LICENSEE
the exclusive license to such Patent Rights pursuant to a certain License
Agreement dated August 1, 1994 (the "August 1994 License Agreement").
WHEREAS, PRINCETON and USC have filed a number of patent applications
relating to full color flat panel emissive display technology employing
crystalline organic and metal/organic semiconductor light emitting diodes,
organic semiconductor lasers and other organic technologies (the "Technology")
which inventions arose out of research conducted in the Princeton Advanced
Technology Center for Photonics and Optoelectronic Materials, and USC under the
direction of Professor(s) Xxxxxxx Xxxxxxx and Xxxx Xxxxxxxx
WHEREAS, PRINCETON, USC and LICENSEE have entered into a continuation of a
Sponsored Research Agreement, effective August 1, 1997 (hereinafter the
"Sponsored Research Agreement" and attached hereto as Appendix A), to continue
to support basic research in the field of the Technology under the supervision
of Professor(s) Xxxxxxx at PRINCETON and Xxxxxxxxx Xxxxxxxx at USC in the amount
of four million dollars ($4,000,000) over five (5) years, granting LICENSEE the
exclusive worldwide license, with the right to sublicense, under any inventions
and confidential information, including any Patent Rights which may be obtained
thereon, arising out of said Sponsored Research Agreement, said license to be
exclusive to LICENSEE subject only to any license heretofore granted to the
United States Government;
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WHEREAS, PRINCETON, USC and LICENSEE contemplate that additional patent
applications based on inventions and information arising out of the Research
Program will be filed in the future; and, LICENSEE shall be the exclusive
licensee of any and all such applications and all existing Patent Rights on the
terms and conditions set forth herein, and that this Amended License Agreement
shall supersede the August 1994 License Agreement.
WHEREAS, LICENSEE has represented to PRINCETON, to induce PRINCETON to
enter into this Agreement, that Licensee is experienced in the development,
production, manufacture, marketing and sale of products similar to the "Licensed
Product(s)" (as later defined herein) and/or the use of the "Licensed Processes"
(as later defined herein) and that it shall commit itself to a thorough,
vigorous and diligent program of exploiting the Patent Rights so that public
utilization shall result therefrom; and
WHEREAS, LICENSEE acknowledges that if funds obtained from the U.S.
Government are commingled with funds obtained from LICENSEE in support of the
Sponsored Research under the Sponsored Research Agreement, then any license
granted would be subject to rights in the U.S. Government under 37 CFR part 401;
WHEREAS, Xxxxxxxxx Xxxxxxxx transferred to USC in August, 1995; USC is a
subcontractor to PRINCETON under the Sponsored Research Agreement; has entered
into an Interinstitutional Agreement with PRINCETON that provides for PRINCETON
to manage the Sponsored Research Agreement and this License Agreement; and
intends that any inventions under the Sponsored Research Agreement be subject to
this License Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "LICENSEE" shall mean Universal Display Corporation and any Subsidiary
or Affiliate of Universal Display Corporation;
1.2 "Subsidiary" shall mean any corporation, company, or other entity more
than fifty percent (50) of whose voting stock is owned or controlled directly or
directly by Universal Display Corporation;
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1.3 "Affiliates" shall mean any entity respecting which a majority of the
voting stock, or an otherwise effective controlling interest, is owned by the
Shareholders of Universal Display Corporation.
1.4 "Patent Rights" shall mean the United States and foreign patent
applications set forth in Appendix B attached hereto and made a part hereof
(hereinafter referred to as the "Patent Rights Patent Application(s)", and the
United States patents and Foreign patents, including utility models and patents
of importation and additions, issuing from said United States and Foreign patent
applications or later-filed foreign applications based upon any of said United
States patents and applications (hereinafter referred to as the "Patent Rights
Patent(s)") and any continuations, continuations-in-part, divisions, reissues or
extensions of any of the foregoing arising out of the Research Program as set
forth in the Research Agreement, and any new inventions arising out of the
Research Program.
1.5 "Licensed Product(s)" shall mean any product which:
(a) is covered in whole or in part by (i) a pending claim contained in a
Patent Rights Patent Application in the country in which the Licensed
Product(s) is made, used or sold, (ii) a valid and unexpired claim
contained in a Patent Rights Patent in the country in which the
Licensed Product(s) is made, used or sold.
(b) is manufactured by using a process which is covered in whole or in part
by (i) a pending claim contained in a Patent Rights Patent Application
in the country in which the Licensed Process(es) is used or (ii) a
valid and unexpired claim contained in a Patent Rights Patent in the
country in which the Licensed Process(es) is used.
(c) is used according to a method which is covered in whole or in part by a
valid and unexpired claim contained in the Patent Rights in the country
in which the method is used.
1.6 "Licensed Process(es)" shall mean a process or method which is covered
in whole or in part by (i) a pending claim contained in a Patent Rights Patent
Application or (ii) a valid and unexpired claim contained in a Patent Rights
Patent in the country in which the process or method is used.
1.7 "Net Sales Price" shall mean LICENSEE'S xxxxxxxx for the Licensed
Product(s) produced hereunder less the sum of the following:
(a) trade, cash and quantity discounts or rebates actually allowed or
taken;
(b) credits or allowances given or made for rejection or return of, and for
uncollectible amounts on, previously sold Licensed Products or for
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retroactive price reductions;
(c) any separately invoiced tax or government charge, (other than an income
tax) levied on the sale, transportation or delivery of a Licensed
Product and borne by the seller thereof; and
(d) any separately invoiced charges for freight or insurance.
No deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by LICENSEE and on
its payroll, or for cost of collections. Licensed Product(s) shall be considered
"sold" when billed out or invoiced.
New Sales Price shall not include sales or transfers between LICENSEE and
its subsidiaries, or sublicensees, except that where such subsidiary or
sublicensee utilizes the Licensed Products or Licensed processes for the
performance of commercial services for third party customers, Net Sales Price
shall be based on subsequent final sales of such Licensed Products to third
parties by such Sublicensees, unless the intermediate sales price to
intermediate Sales Price shall control.
ARTICLE II - GRANT
2.1 Subject only to the prevailing rights of and obligations to the U.S.
Government with respect to Patent Rights derived in the course of federally
sponsored research, including without limitation, any such rights and
obligations set forth in 37 CFR Part 401, should they exist, PRINCETON and USC
hereby grant to LICENSEE a worldwide exclusive right and license under the
Patent Rights, to make, have made, use, lease and/or sell the Licensed
Product(s) under the Patent Rights and Copyrights rights, and to practice the
Licensed Process(es) to the full end of the term for which the Patent Rights and
copyright Rights are granted unless sooner terminated as hereinafter provided.
2.2 LICENSEE shall have the right to sublicense worldwide any of the
rights, privileges and license granted hereunder during the term of this
Agreement.
2.3 LICENSEE hereby agrees that every sublicensing agreement to which it
shall be a party and which shall relate to the rights, privileges and license
granted hereunder shall include, to the extent applicable, all the rights of and
obligations due to PRINCETON and USC, (and, if applicable, to the United States
Government), that are contained in this Agreement.
2.4 LICENSEE agrees to forward to PRINCETON a copy of any and all fully
executed sublicense agreements, and further agrees to forward to PRINCETON
annually a copy of such reports received by LICENSEE from its sublicensees
during the preceding twelve (12) month period under the sublicenses as shall be
pertinent to a royalty accounting under said sublicense agreements.
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ARTICLE III - DUE DILIGENCE
3.1 LICENSEE shall use commercially reasonable efforts to bring the
Licensed Product(s) and/or Licensed Process(es) to market through a thorough,
vigorous and diligent program for exploitation of the Patent Rights.
3.2 In addition, LICENSEE shall adhere to the following milestones:
(a) LICENSEE shall perform the Sponsored Research Agreement in accordance
with its terms.
(b) LICENSEE shall send copies of all press releases and publicly filed
documents to PRINCETON, relating to its progress in commercializing the
Patent Rights.
(c) LICENSEE shall meet with PRINCETON annually to discuss its
commercialization plans for the next ensuing year.
3.3 LICENSEE'S failure to perform in accordance with Paragraphs 3.1 and 3.2
above shall be grounds for PRINCETON to terminate this Agreement pursuant to
Paragraph 7.3 hereof.
3.4 Notwithstanding anything to the contrary contained herein, provided
that LICENSEE performs the Sponsored Research Agreement, and upon termination or
expiration of the Sponsored Research Agreement, LICENSEE invests a minimum of
$800,000 per year in research, development, patenting or commercialization
efforts respecting the Patent Rights, this Article III shall be deemed to be
satisfied.
ARTICLE IV - ROYALTIES
4.1 Because the Tax Reform Act of 1986, Public Law 99-514, may require
PRINCETON to cause a research sponsor to pay a competitive price for its use of
the technology, and further requires that the prices paid by the sponsoring
party be determined at the time the technology is available for use rather than
at an earlier time, the parties agree that the licensing terms and conditions
set forth in this Agreement shall be as good as or better than could be obtained
from an unrelated party, if applied to Licensed Products and Licensed Processes.
Therefore, subject to right to require negotiations on any Licensed
Products/Licensed Processes, if in PRINCETON'S sole opinion the resulting
technology is the subject of an agreement covered by Public Law 99-514 and the
price or other terms of this Agreement are not competitive for the resulting
technology at the time the technology is first reduced to practice, it is agreed
as follows:
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4.2 For the rights, privileges and license granted hereunder, LICENSEE
shall pay to PRINCETON (except for the Common Stock and Warrants which shall be
distributed in accordance with Article 4), in the manner hereinafter provided to
the end of the term of the Patent Rights or until this Agreement shall be
terminated as hereinafter provided:
(a) (i) 3% of the Net Sales Price of the Licensed Product (s) and/or
Licensed Processes used, leased or sold by LICENSEE; (ii) 3% of revenues
received by LICENSEE from sublicensing the patent rights; and (iii) 23% of
revenues received by LICENSEE from final judgments in infringement actions
respecting the Patent Rights (after deducting costs and expenses, including
attorneys fees); and
(b) 200,000 shares of Common Stock of Universal Display Corporation; and
(c) Warrants to purchase 250,000 shares of Common Stock in Universal
Display Corporation at a per share purchase price equal to the closing sale
price of Universal Display Corporation Common Stock on the date of execution of
this Agreement, such Warrants expiring ten (10) years from such date.
(d) Minimum royalties shall be payable as follows:
1997--$0.
1998--$0.
1999--$25,000.
2000--$50,000.
2001--$75,000.
2002 and thereafter--$100,000./yr
In the event that Princeton has not received at least the above referenced
amount in royalty payments in any calendar year, LICENSEE shall pay Princeton
the difference between the royalties paid and the Minimum royalty for such
calendar year on December 31.
4.3 No multiple royalties shall be payable because the Licensed Product(s),
its manufacture, lease or sale are or shall be covered by more than one patent
application or patent licensed under this Agreement.
4.4 Royalty payments shall be paid in United States dollars in Princeton,
New Jersey, or at such other place as PRINCETON may reasonably designate
consistent with the laws and regulations controlling in any foreign country. Any
withholding taxes which LICENSEE or any sublicensee shall be required by law to
withhold on remittance of the royalty payments shall be deducted from royalty
paid to PRINCETON. LICENSEE shall furnish PRINCETON the original copies of all
official receipts for such taxes. If any currency conversion shall be required
in connection with the payment of royalties
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hereunder, such conversion shall be made by using the exchange rate prevailing
at a first-class foreign exchange bank on the last business day of the calendar
quarterly reporting period to which such royalty payments relate.
4.5 With respect to the possible renegotiation of royalty rates, if
required, under the Tax Reform Act of 1986;
(a) Fair Consideration. PRINCETON and LICENSEE have determined that the
consideration payable to PRINCETON pursuant to this Agreement is fair
and competitive with respect to all Licensed Products, including most
particularly the technologies and their applications which represent
the prime focus of the Sponsored Research Agreement.
(b) Limited Renegotiation Events. If, notwithstanding the above, Licensed
Products are developed during the term of this Agreement which were not
reasonable conceivable as arising out of or resulting from the
Sponsored Research as of the date hereof, and with respect to which the
consideration payable to PRINCETON is not reasonably believed by
PRINCETON to be competitive, PRINCETON shall notify LICENSEE in writing
of such determination; provided, however, that any such renegotiation
right of PRINCETON shall cease with respect to any Licensed Product 180
days after the first Patent Rights Patent Application is filed or other
intellectual property protection is first sought (or, in the case of a
Biological Material, after the time such Biological Material is first
indicated as a possible Licensed Product by LICENSEE). In the event
LICENSEE disputes such determination of PRINCETON and the request for
renegotiation, LICENSEE shall have a right to submit the issue to
arbitration pursuant to Article VIII hereunder.
(c) Renegotiation Process. If LICENSEE agrees to renegotiate the
consideration payable without arbitration or if the arbitrator
determines the issues in favor of PRINCETON, LICENSEE shall have an
exclusive right for 60 days to negotiate with PRINCETON on a royalty
arrangement acceptable to PRINCETON, which shall use reasonable efforts
to reach satisfactory agreement with LICENSEE.
(d) Failure to Agree. In the event that PRINCETON and LICENSEE are unable
to reach agreement with such 60 day period despite their best efforts
to do so, or in the event that LICENSEE does not elect to enter into an
agreement with PRINCETON by exercise of its right of first refusal,
PRINCETON shall then have the right to negotiate with third parties
other than LICENSEE with respect to the exclusive licensing of the
Licensed Products, and LICENSEE shall relinquish its exclusive right to
license said Licensed Product.
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4.6 Securities Law Representations. PRINCETON and USC are obtaining the
Common Stock and Warrants as principal and not with a view towards resale or
distribution. PRINCETON and USC are aware that the securities have not been
registered under the Securities Act of 1933, as amended (the "Act"), or the
securities laws of any state or jurisdiction, and are being obtained in reliance
on the exemptions from the registration requirements of such Acts. PRINCETON and
USC agree not to sell or otherwise dispose of the Securities acquired hereunder
unless such Securities are subsequently registered under the Act and such state
securities laws as are applicable, or unless there are available exemptions from
such registration that are supported by an opinion of counsel for PRINCETON or
USC, as applicable, which opinion is satisfactory in form and substance to
Universal Display Corporation.
4.7 The Common Stock and Warrants shall be issued directly to Princeton
University and the University of Southern California, respectively, in the
amounts set forth in the Interinstitutional Agreement.
ARTICLE V - REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true and accurate books of account containing
all particulars that may be necessary for the purpose of showing the amount
payable to PRINCETON by way of royalty as aforesaid. Said books of account shall
be kept at LICENSEE'S principal place of business or the principal place of
business of the appropriate Division of LICENSEE to which this Agreement
relates. Said books and the supporting data shall be open at all reasonable
times, but not more often than once each year, for five (5) years following the
end of the calendar year to which they pertain, to the inspection of the
PRINCETON Internal Audit Division and/or an independent certified public
accountant employed by PRINCETON for the purpose of verifying LICENSEE'S royalty
statement or compliance in other respects with this Agreement.
5.2 LICENSEE, within sixty (60) days after each calendar quarter of the
License Year shall deliver a report in writing setting forth sales of Licensed
Products (including a negative report, if appropriate) and will accompany such
report with such particulars of the business conducted by LICENSEE during the
preceding three-month period under this Agreement as shall be pertinent to a
royalty accounting hereunder. These shall include at least the following:
(a) All Licensed Products manufactured and sold.
(b) Total xxxxxxxx for Licensed Product sold.
(c) Accounting for all the Licensed Process(es) used or sold.
(d) Deductions applicable as provided in Paragraph 4.2.
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(e) Total Royalties due.
(f) Names and addresses of all sublicensees of LICENSEE.
(g) Licensed Products manufactured and sold to the United States
Government. (No royalty obligations shall arise due to use for or on behalf of
the United States Government in view of the royalty-free, non-exclusive license
heretofore granted to the United States government.
(h) Annually, the LICENSEE'S certified financial statements for the
preceding twelve (12) months including, at a minimum, a Balance Sheet and an
Operating Statement.
5.3 With each such report submitted, LICENSEE shall pay to PRINCETON the
royalties due and payable under this Agreement. If no royalties shall be due,
LICENSEE shall so report.
5.4 Any payments due hereunder on sales outside of the United States shall
be payable in U.S. Dollars at the rate of exchange of the currency of the
country in which the sales are made at the average of the following: the
exchange rate as reported in the Wall Street Journal for the first business day
of the calendar quarter for which royalties are payable plus the exchange rate
as reported in the Wall Street Journal for the last business day of the calendar
quarter for which royalties are payable, divided by two (2).
5.5 Payments which are delayed beyond the sixty (60) days after the end of
the quarter in which they become due shall be subject to an interest charge
equal to 8% per annum in excess of the "Prime Rate" as published in The Wall
Street Journal, provided however that if royalty payments are withheld due to a
good faith dispute, then the interest charge shall be five percent (5) per annum
in excess of the Prime Rate. Whenever such Prime Rate, as so published, changes,
the interest rate described above shall correspondingly change, effective upon
the opening of business on the date of publication of such change.
ARTICLE VI - PATENT PROSECUTION
6.1 LICENSEE may designate by notice to PRINCETON or to the Patent
Attorneys, after consultation with PRINCETON, countries where Licensed Patent
Applications shall be filed, which may include the United States or any other
country. LICENSEE agrees to pay for all reasonable and necessary out-of-pocket
expenses incurred in the preparation, filing, prosecution, maintenance, renewal
and continuation of Patent Applications in said designated countries, including
all taxes, official fees and attorneys' fees. The patent law firm selected shall
be mutually acceptable to PRINCETON and LICENSEE. PRINCETON shall be the client
in the attorney-client relationship with such law firm and may provide
instructions to such law firm regarding
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the scope and content of Patent Applications to be filed and prosecuted, subject
to the right of LICENSEE to request PRINCETON to instruct such law firm, or
instruct the law firm directly after consultation with PRINCETON, to cover any
additional matters as LICENSEE may desire to assure that such Application covers
all items of commercial interest and importance. PRINCETON will not unreasonably
refuse requests of LICENSEE. PRINCETON and LICENSEE each shall receive copies of
all correspondence with respect to such preparation, filing, prosecution,
renewal and continuation of Patent Rights Patent Applications, and shall consult
with each other regarding all such matters and the costs associated therewith.
6.2 LICENSEE may elect in writing to be released from its License in any of
the Patent Rights Patents and Patent Rights Patent Applications in a particular
country at any time after initial filing costs have been paid, in which event it
shall thereafter, upon notice of such election being given to PRINCETON shall
have no obligation to reimburse Princeton for any subsequent expenses relating
to such patent, or application in such country, nor any other right thereto.
6.3 All inventions conceived or discovered under the Sponsored Research
Agreement, by PRINCETON, USC, or jointly, shall automatically become subject to
this License Agreement. PRINCETON shall use reasonable efforts to ensure that
Patent Rights Applications are promptly filed and prosecuted.
6.4 LICENSEE has the right to file of record in the Patent Office for each
Patent Rights Application that it is the exclusive licensee of the Patent
Rights.
ARTICLE VII - TERMINATION
7.1 If LICENSEE shall become bankrupt or insolvent, or shall file a
petition in bankruptcy, or if the business of LICENSEE shall be placed in the
hands of a receiver, assignee or trustee for the benefit of creditors, whether
by the voluntary act of LICENSEE or otherwise, this Agreement shall be
terminable by PRINCETON. Provided, however, in the event of an involuntary
action, if LICENSEE arranges for the dismissal of such action within 90 days of
the date thereof, such right to terminate shall cease.
7.2 Should LICENSEE fail in its payment to PRINCETON of royalties due in
accordance with the terms of this Agreement, PRINCETON shall have the right to
serve notice of default upon LICENSEE by certified mail at the address
designated in Article XIV hereof. If LICENSEE shall not have paid all such
royalties due and payable, within forty five (45) days of the delivery of such
Notice, the rights, privileges and license granted hereunder shall be terminable
by PRINCETON delivering a Notice of Termination, unless LICENSEE disputes that
such royalties are due and payable, in which event the dispute shall be settled
in accordance with Article VIII "Arbitration", and this Agreement will not then
be terminated.
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7.3 Upon any material breach or default of this Agreement by LICENSEE,
other than those occurrences set out in Paragraphs 7.1 and 7.2 hereinabove,
which shall always take precedence in that order over any material breach or
default referred to in this Paragraph 7.3, Princeton shall have the right to
give written notice of such default to LICENSEE. If LICENSEE shall fail to cure
such default, or fail to have taken reasonable steps to cure such default,
within forty five (45) days of the effective date of such notice, PRINCETON
shall have the right to terminate this Agreement by a second written Notice of
Termination to Licensee, specifying the effective date of termination. Provided,
however, if LICENSEE disputes the existence of such material breach or default,
or the failure to cure or take reasonable steps to cure, than the dispute will
be settled in accordance with Article VIII "Arbitration", and the Agreement
will not then be terminated.
7.4 LICENSEE shall have the right to terminate this Agreement at any time
on six (6) months' notice by certified mail to PRINCETON.
7.5 Upon termination of this Agreement for any reason, nothing herein shall
be construed to release either party from any obligation that matured prior to
the effective date of such termination. LICENSEE and/or any sublicensee thereof
may however, after the effective date of such termination, sell all Licensed
Products, and complete Licensed Products in the process of manufacture at the
time of such termination and sell the same, provided that LICENSEE shall pay to
PRINCETON the royalties thereon as required by Article IV of this Agreement and
shall submit the reports required by Article V hereof on the sales of Licensed
Products.
7.6 Upon any such termination of this Agreement PRINCETON, if LICENSEE
shall have granted a sublicense hereunder, any such sublicensee shall become a
direct licensee of PRINCETON, but only if such sublicensee is then in full
compliance with its sublicense and all payments owed to PRINCETON with respect
to that sublicense have been paid and the sublicensee agrees to assume all
obligations of LICENSEE hereunder, provided that such sublicensee shall remain
obligated to the terms and conditions of this Agreement protective of PRINCETON.
ARTICLE VIII - ARBITRATION
8.1 Except as to issues relating to the validity, construction or effect of
any patent licensed hereunder, any and all claims, disputes or controversies
arising under, out of, or in connection with this Agreement, which have not been
resolved by good faith negotiations between the parties, shall be resolved by
mediation. Such mediation shall occur as soon as reasonably practicable and no
later than 30 days from the effective date one party requests mediation of a
dispute. If such dispute is not resolved by mediation then it will be resolved
by final and binding arbitration in Princeton, New Jersey under the rules of the
American Arbitration Association then obtaining. The arbitrators shall have no
power to add to, subtract from or modify any of the terms or conditions of this
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Agreement. The arbitrators shall have the option of specific future performance
or monetary compensation in lieu of termination. Any award rendered in such
arbitration may be enforced by either party in either the courts of the State of
New Jersey or in the United States to whose jurisdiction of such purposes
PRINCETON and LICENSEE each hereby irrevocably consents and submits.
8.2 Claims, disputes or controversies concerning the validity, construction
or effect of any patent licensed hereunder shall be resolved in any court having
jurisdiction thereof.
8.3 In the event that, in any arbitration proceeding, any issue shall arise
concerning the validity, construction or effect of any patent licensed
hereunder, the arbitrators shall assume the validity of all claims as set forth
in such patent; in any event the arbitrators shall not delay the arbitration
proceeding for the purpose of obtaining or permitting either party to obtain
judicial resolution of such issue, unless an order staying such arbitration
proceeding shall be entered by a court of competent jurisdiction. Neither party
shall raise any issue concerning the validity, construction or effect of any
patent licensed hereunder in any proceeding to enforce any arbitration award
hereunder or in any proceeding otherwise arising out of any such arbitration
award.
ARTICLE IX - INFRINGEMENT
9.1 LICENSEE and PRINCETON shall promptly inform the other in writing of
any alleged infringement of which it shall have notice by a third party or any
patents within the Patent Rights and provide such other with any available
evidence of infringement.
9.2 During the term of this Agreement, LICENSEE shall have the right, but
shall not be obligated, to prosecute at its own expense any such infringements
of the Patent Rights and, in furtherance of such rights, PRINCETON hereby agrees
that LICENSEE may join PRINCETON as a party plaintiff in any such suit, without
expense to PRINCETON. The total cost of any such infringement action commenced
or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall
keep any recovery or damages for past infringement derived therefrom, except for
that portion to be paid to PRINCETON pursuant to Article IV hereof. Princeton
shall make the inventors available and cooperate in the litigation. No
settlement, consent judgment or other voluntary final disposition of the suit
may be entered into without the consent of PRINCETON, which consent shall not
unreasonably be withheld. LICENSEE shall indemnify PRINCETON against any order
for costs that may be made against PRINCETON in such proceedings.
9.3 If within eighteen (18) months after having been notified of any
alleged infringement, LICENSEE shall have been unsuccessful in persuading the
alleged infringer
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to desist and shall not have brought and shall not be diligently prosecuting an
infringement action, or if LICENSEE shall notify PRINCETON at any time prior
thereto of its intention not to bring suit against any alleged infringer, then,
and in those events only, PRINCETON shall have the right, but shall not be
obligated, to prosecute at its own expense any infringement of the Patent
Rights, and PRINCETON may, for such purposes, use the name of LICENSEE as party
plaintiff.
9.4 In the event that LICENSEE shall undertake the enforcement and/or
defense of the Patent Rights by litigation, LICENSEE may withhold up to fifty
percent (50%) of the royalties otherwise thereafter due PRINCETON hereunder and
apply the same toward reimbursement of its expenses, including reasonable
attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE
for any such suit shall be applied first in satisfaction with any unreimbursed
expenses and legal fees of LICENSEE relating to the suit, and next toward
reimbursement of PRINCETON for any royalties past due or withheld and applied
pursuant to this Article IX.
9.5 In any infringement suit that either party may institute to enforce the
Patent Rights pursuant to this Agreement, the other party shall, at the request
and expense of the party initiating such suit, cooperate in all respects and, to
the extent possible, have its employees testify when requested and make
available relevant records, papers, information, samples, specimens, and the
like.
9.6 LICENSEE, during the exclusive period of this Agreement, shall have the
sole right in accordance with the terms and conditions herein to sublicense any
alleged infringer under the Patent Rights.
ARTICLE X - PRODUCT LIABILITY
10.1 PRINCETON and USC by this Agreement makes no representation as to the
patentability and/or discoveries involved in a Licensed Patent. PRINCETON and
USC by this Agreement makes no representation as to patents now held or which
will be held by others in the field of the Licensed Products for a particular
purpose. PRINCETON AND USC MAKE NO EXPRESS OR IMPLIED WARRANTIES OR
MERCHANTABILITY OF FITNESS FOR A PARTICULAR PURPOSE.
10.2 LICENSEE agrees to defend, indemnify and hold PRINCETON and USC
harmless from and against all liability, demands, damages, expense or losses for
death, personal injury, illness or property damage arising (a) out of use by
LICENSEE or its transferees of inventions licensed or information furnished
under this Agreement, or (b) out of any use, sale or other disposition by
LICENSEE or its transferees or products made by use of such inventions or
information. As used in this clause, PRINCETON and USC includes its Trustees,
Officers, agents, Employees and Students and "LICENSEE" includes its Affiliates,
Subsidiaries, Contractors and Sub-Contractors.
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10.3 In discharge of the above LICENSEE will maintain general liability
insurance in the amount of at least One Million Dollars ($1,000,000) per
occurrence with a deductible of not more than $10,000 per occurrence with such
insurers and on such terms as PRINCETON approves in writing against damage to or
destruction of property and injury to or death of individuals and against such
other risks as PRINCETON may reasonable request arising out of or in connection
with any of the Licensed Products. "PRINCETON" and its respective officers,
trustees, and insurance will also provide that PRINCETON will be given notice of
any modification thereof and at least ten (10) days prior written notice of
cancellation or termination and the reason therefore. LICENSEE will furnish
PRINCETON upon request and in any event on execution of this Agreement and on
each anniversary of the effective date of this Agreement, written confirmation
issued by the issuer or an independent insurance agent confirming that insurance
is maintained in accordance with the above requirements.
ARTICLE XI - ASSIGNMENT
11.1 In addition to assignment permitted under Section 2.2 hereof, LICENSEE
may assign or otherwise transfer this Agreement and the license granted hereby
and the rights acquired by it hereunder so long as such assignment or transfer
shall be accompanied by a sale or other transfer of LICENSEE's entire business
or of that part of LICENSEE's business to which the license granted hereby
relates. LICENSEE shall give PRINCETON thirty (30) days prior notice of such
assignment and transfer and if PRINCETON raises no reasonable objection to such
assignment or transfer, in writing within thirty (30) days after the giving of
such notice and stating the reasons for such objection, then PRINCETON shall be
deemed to have approved such assignment or transfer; provided, however,
PRINCETON shall not be deemed to have approved such assignment and transfer
unless such assignee or transferee shall have agreed in writing to be bound by
the terms and conditions of this Agreement. Upon such assignment or transfer and
agreement by such assignee or transferee, the term LICENSEE as used herein shall
include such assignee or transferee. If LICENSEE shall sell or otherwise
transfer its entire business or that part of its business to which the license
granted hereby relates and the transferee shall not have agreed in writing to be
bound by the terms and conditions of this Agreement, or new terms and conditions
shall not have been agreed upon within sixty (60) days of such sale or transfer,
PRINCETON shall have the right to terminate this Agreement.
ARTICLE XII - NON-USE OF NAMES
12.1 Neither party shall use the names of the others in connection with any
products, promotion or advertising without the prior consent of the other party,
which consent shall not be unreasonably withheld, or to the extent reasonably
required by law. LICENSEE may state that it is licensed by PRINCETON and USC
under one or more of the patents and/or applications comprising the Patent
Rights.
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ARTICLE XIII - EXPORT CONTROLS
13.1 It is understood that PRINCETON and USC are subject to United States
laws and regulations controlling the export of technical data, computer
software, laboratory prototypes and other commodities (including the Arms Export
Control Act, as amended, and the Export Administration Act of 1979), and its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. PRINCETON and USC neither represent that a license shall not be required
nor that, if required, it shall be issued.
ARTICLE XIV - PAYMENTS, NOTICES, AND OTHER COMMUNICATIONS
14.1 Any payment, notice or other communication, pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such party
by certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party;
In the case of PRINCETON UNIVERSITY:
Office of Technology and Trademark Licensing
Princeton University
5 New South Building, P. O. Xxx 00
Xxxxxxxxx, Xxx Xxxxxx 00000
Attention: Xxxx X. Xxxxxx
Associate Director of Technology Transfer
In the case of THE UNIVERSITY OF SOUTHERN CALIFORNIA:
Office of Patent and Copyright Administration
University of Southern California
0000 Xxxxx Xxxx Xxxxxx, Xxxxx 000
Xxx Xxxxxxx, XX 00000-0000
In the case of LICENSEE:
Universal Display Corporation
0 Xxxx Xxxxx Xxxx, Xxxxx 000
Xxxx Xxxxxx, XX 00000
Attention: Xxxxxx X. Xxxxxxxx
President and Chief Operating Officer
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ARTICLE XV - INTERINSTITUTIONAL AGREEMENT
15.1 PRINCETON and USC have entered into an Interinstitutional Agreement,
attached hereto as Appendix C and incorporated herein, whereby, inter-alia,
PRINCETON shall be the manager of this License Agreement and the Sponsored
Research Agreement, and LICENSEE shall interact with PRINCETON, on behalf of
itself as well as USC, on all matters respecting those agreements.
ARTICLE XVI - MISCELLANEOUS PROVISIONS
16.1 This Agreement shall be construed, governed, interpreted and applied in
accordance with the laws of the State of New Jersey, except that questions
affecting the construction and effect of any patent shall be determined by the
law of the country in which the patent was granted.
16.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change of modification except by
the execution of a written instrument subscribed to by the parties hereto.
16.3 The provisions of this Agreement are severable, and in the event that
any provision of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
16.4 LICENSEE agrees to xxxx the Licensed Products sold in the United States
with all applicable United States patent numbers. All Licensed Products shipped
to or sold in other countries shall be marked in such a manner as to confirm
with the patent laws and practice of the country of manufacture or sale.
16.5 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
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IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and
seals and duly executed this License Agreement the day and year set forth below.
Attest: The Trustees of Princeton University
By:
------------------------------- --------------------------------
Title: Title:
------------------------------- -----------------------------
Date:
------------------------------
Attest: The UNIVERSITY OF
SOUTHERN CALIFORNIA
By:
------------------------------- --------------------------------
Title: Title:
------------------------------- -----------------------------
Attest: UNIVERSAL DISPLAY CORPORATION
By:
------------------------------- --------------------------------
Title: Title:
------------------------------- -----------------------------
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