SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 10-Q
QUARTERLY REPORT UNDER SECTION 13 OR 15 (d) OF
THE SECURITIES EXCHANGE ACT OF 1934
For Quarter Ended September 30, 1997 Commission File No. 1-9399
RESEARCH FRONTIERS INCORPORATED
(Exact name of registrant as specified in charter)
Delaware 11-2103466
(State of incorporation or organization) (IRS Employer
Identification No.)
240 Crossways Park Drive, Woodbury, N.Y. 11797
(Address of principal executive offices) (Zip Code)
(516) 364-1902
(Registrant's telephone number, including area code)
Indicate by check mark whether the registrant (1) has filed all
reports required to be filed by Section 13 or 15(d) of the Securities
Exchange Act of 1934 during the preceding 12 months (or for such
shorter period that the registrant was required to file such reports),
and (2) has been subject to such filing requirements for the past 90
days.
Yes X No __
Indicate the number of shares outstanding of each of the
issuer's classes of common stock, as of the latest practicable date:
As of November 7,1997, there were outstanding 10,289,510 shares
of Common Stock, par value $0.0001 per share.
<PAGE>
RESEARCH FRONTIERS INCORPORATED
Condensed Balance Sheets
September 30,1997
Assets (Unaudited) Dec.31,1996
Current assets:
Cash and cash equivalents $ 1,768,790 457,959
Marketable investment securities-trading -- 7,651,364
Marketable investment securities-held to maturity 4,199,800 --
Accrued interest and dividends receivable 36,839 65,429
Prepaid expenses and other current assets 14,310 18,887
Total current assets 6,019,739 8,193,639
Fixed assets, net 189,002 167,846
Deposits and other assets 63,656 63,656
Total assets $ 6,272,397 8,425,141
Liabilities and Shareholders' Equity
Current liabilities:
Accounts payable 68,896 86,590
Other accrued expenses 88,791 121,704
Total liabilities 157,687 208,294
Shareholders' equity:
Capital stock, par value $.0001 per share; authorized
100,000,000 shares, issued and outstanding 10,285,760
shares and 10,066,897 shares 1,029 1,007
Additional paid-in capital 30,602,579 29,355,663
Accumulated deficit (22,509,212)(20,510,323)
8,094,396 8,846,347
Notes receivable from officers (1,979,686) (629,500)
Total shareholders' equity 6,114,710 8,216,847
Total liabilities and shareholders' equity $6,272,397 8,425,141
See accompanying notes to condensed financial statements.<PAGE>
RESEARCH FRONTIERS INCORPORATED
Condensed Statements of Operations
(Unaudited)
Nine months ended Three months ended
Sept 30,1997 Sept 30,1996 Sept 30,1997 Sept 30,1996
Fee income $ 60,000 50,000 $ 10,000 1,500
Operating expenses 1,137,596 946,120 433,463 236,862
Research and development 1,310,769 1,127,486 397,242 347,511
2,448,365 2,073,606 830,705 584,373
Operating loss (2,388,365)(2,023,606) (820,705)(582,873)
Net investment income (loss) 243,835 (748,457) 69,289 74,951
Interest income on notes 60,724 211,360 19,760 --
receivable from officers
Unrealized gain (loss)
on investments 84,917 835,601 -- (143,615)
Net loss $ (1,998,889)(1,725,102) $(731,656) (651,537)
Net loss per share $ (.20) (.17) $ (.07) (.07)
Weighted average number of
common shares outstanding 10,175,791 9,875,892 10,216,330 9,201,194
See accompanying notes to condensed financial statements.
<PAGE>
RESEARCH FRONTIERS INCORPORATED
Condensed Statements of Cash Flows
(Unaudited)
Nine months ended
Sept 30,1997 Sept 30, 1996
Cash flows from operating activities:
Net loss $ (1,998,889) (1,725,102)
Adjustments to reconcile net loss to net cash
provided by (used in) operating activities:
Depreciation and amortization 54,514 23,008
Unrealized gain on investments (84,917) (835,601)
Interest income on notes receivable from officer -- (211,360)
Compensation expense related to issuance of warrants 37,880 --
Changes in assets and liabilities:
Investments-trading securities 3,076,469 535,495
Accrued interest and dividends receivable 28,590 21,374
Prepaid expenses and other current assets 4,577 1,640
Accounts payable and accrued expenses (3,636) (78,860)
Net cash provided by (used in) operating activities 1,114,588 (2,269,406)
Cash flows from investing activities:
Purchases of held-to-maturity treasury securities (1,974,584) --
Proceeds from held-to-maturity treasury securities 2,434,596 --
Purchases of fixed assets (75,670) (91,631)
Net cash provided by (used in) investing activities 384,342 (91,631)
Cash flows from financing activities:
Proceeds from issuances of common stock 1,204,55 1,410,456
Loans to officers (1,390,000) (345,000)
Repayment of loans to officers 39,814 --
Purchase of treasury stock (42,464) --
Net cash provided by (used in) financing activities (188,099) 1,065,456
Net increase (decrease) in cash and cash equivalents 1,310,831 (1,295,581)
Cash and cash equivalents at beginning of year 457,959 3,827,573
Cash and cash equivalents at end of period $ 1,768,790 2,531,992
Non-Cash Transactions:
Technology acquisition paid in stock $ 46,971 --
Redemption of Treasury Stock as payment
for officer note receivable $ -- 302,500
See accompanying notes to condensed financial statements.<PAGE>
RESEARCH FRONTIERS INCORPORATED
Notes to Condensed Financial Statements
September 30, 1997
(Unaudited)
Basis of Presentation
The financial information included herein is unaudited; however, such
information reflects all adjustments (consisting solely of normal recurring
adjustments) which are, in the opinion of management, necessary for a fair
statement of the financial position, results of operations, and cash flows for
the interim periods to which the report relates. The results of operations
for the nine-month period ended September 30, 1997 are not necessarily
indicative of the results to be expected for the full year. The notes included
herein should be read in conjunction with the notes to financial statements
of the Company at December 31, 1996 and for the three years then ended,
included in the Company's Annual Report on Form 10-K.
Business
Research Frontiers Incorporated (the Company) is primarily engaged in the
development and marketing of technology and devices to control the flow
of light. Such devices, often referred to as "light valves" or suspended
particle devices (SPDs), use microscopic particles either in the form of a
liquid suspension or a film which is usually enclosed between two glass or
plastic plates, at least one of which is transparent.
Cash and Cash Equivalents
The Company considers securities purchased within three months of their
maturity date to be cash equivalents. Cash equivalents consist of short-
term investments in money market accounts and U.S. Treasury securities
as of December 31, 1996 and money market accounts as of September 30,
1997.
Marketable Investment Securities
The Company accounts for its investments in marketable securities under
the provisions of Statement of Financial Accounting Standards No. 115,
"Accounting for Certain Investment in Debt and Equity Securities"
(Statement 115). As of July 1, 1997 the Company has transferred its
marketable securities from trading securities to held-to-maturity securities,
as management intends and has the ability to hold such securities until their
maturity. Held-to-maturity securities are recorded at cost. Dividend and
interest income are recognized when earned. Cost is maintained on a
specific identification basis for purposes of determining realized gains and
losses on sales of investments.
Subsequent Event
On October 29, 1997, a group of institutional investors invested
$5,000,000 in equity capital through the purchase of a prepaid common
stock warrant. The warrant, which is redeemable by the Company under
certain circumstances, is exercisable over its five-year term at an exercise
price which fluctuates with market conditions.
Management's Discussion and Analysis of
Financial Condition and Results of Operations
Results of Operations for the Nine Month Periods Ended September 30,
1997 and 1996
The Company earned fee income for the nine months ended September 30,
1997 of $60,000, as compared to fee income of $50,000 for the first nine
months of 1996.
Operating expenses increased to $1,137,596 for the first nine months of
1997 from $946,120 for the first nine months of 1996. This was primarily
the result of increased public relations, consulting, payroll, insurance,
travel, and depreciation expenses.
Research and development expenditures increased to $1,310,769 for the
first nine months of 1997 from $1,127,486 for the first nine months of
1996. This increase was primarily the result of higher research-related
consulting expenses, costs for materials, depreciation expenses relating to
laboratory equipment, and salary expenses relating to the hiring of two new
scientists by the Company, offset somewhat by decreased costs related to
patents.
The Company's net gain from its investing activities for the first nine
months of 1997 was $328,752, as compared to a gain from its investing
activities of $87,144 for the first nine months of 1996. This improvement
reflects the impact of the Company's investment primarily in U.S. treasury
securities during the nine months ended September 30, 1997, where in the
first nine months of 1996 investment income included the impact of
realized losses incurred by the Company on the sale of certain marketable
equity securities. The Company intends to continue to invest in U.S.
Treasury securities and in other interest-bearing money market funds and
bank accounts.
As a consequence of the factors discussed above, the Company's net loss
was $1,998,889 ($0.20 per share) for the first nine months of 1997 as
compared to $1,725,102 ($0.17 per share) for the first nine months of
1996.
Results of Operations for the Three Month Periods Ended September 30,
1997 and 1996
The Company's fee income for the three months ended September 30,
1997 increased to $10,000, as compared to fee income of $1,500 for the
third quarter of 1996.
Operating expenses increased to $433,463 for the third quarter of 1997
from $236,862 for the third quarter of 1996. This was primarily the result
of a increased public relations, payroll, travel, and depreciation expenses,
offset by lower consulting expenses.
Research and development expenditures increased to $397,242 for the third
quarter of 1997 from $347,511 for the third quarter of 1996. This increase
was primarily the result of higher costs for materials, depreciation
expenses relating to laboratory equipment, and salary expenses relating to
the hiring of two new scientists by the Company, offset somewhat by
decreased costs related to patents.
The Company's net gain from its investing activities for the third quarter
of 1997 was $69,289, as compared to a net loss from its investing activities
of $68,664 for the third quarter of 1996. This improvement reflects the
impact of the Company's investment primarily in U.S. treasury securities
during the third quarter of 1997, where in the third quarter of 1996
investment income included the impact of unrealized losses recorded by
the Company for investments held by the Company as of September 30,
1996. The Company intends to continue to invest in U.S. Treasury
securities and in other interest-bearing money market funds and bank
accounts.
As a consequence of the factors discussed above, the Company's net loss
was $731,656 ($0.07 per share) for the third quarter of 1997 as compared
to a net loss of $651,537 ($0.07 per share) for the third quarter of 1996.
Financial Condition, Liquidity and Capital Resources
During the first nine months of 1997, the Company's cash and marketable
investment securities balance decreased by $2,140,733 principally as a
result of cash used to fund the Company's net loss of $1,998,889, and the
increase in notes receivable from officers of $1,350,186 offset by the sale
of common stock through the sale of newly issued common stock
aggregating $1,204,551 to institutional investors ($500,000), and from the
exercise of options and warrants ($704,551). The proceeds from these
sales have been invested by the Company in U.S. Treasury securities and
interest-bearing money market funds and bank accounts. During the first
nine months of 1997, the Company received $109,340 in cash from the
Company's President pursuant to the exercise of stock options, and also
received $94,362 in cash from the Company's President, and $6,176 in
cash from the Company's Executive Vice President in partial payments of
loans, including interest, made to these officers. Loans to officers are fully
secured by collateral.
At September 30, 1997, the Company had working capital of $5,862,052
and its shareholders' equity was $6,114,710.
On October 29, 1997, a group of institutional investors invested
$5,000,000 in equity capital through the purchase of a prepaid common
stock warrant. The warrant, which is redeemable by the Company under
certain circumstances, is exercisable over its five-year term at an exercise
price which fluctuates with market conditions.
The Company expects to use its cash and short-term investments to fund
its research and development of SPD light valves and for other working
capital purposes. The Company's working capital and capital requirements
depend upon numerous factors, including the results of research and
development activities, competitive and technological developments, the
timing and cost of patent filings, and the development of new licensees and
changes in the Company's relationships with its existing licensees. The
degree of dependence of the Company's working capital requirements on
each of the foregoing factors cannot be quantified; increased research and
development activities and related costs would increase such requirements;
the addition of new licensees may provide additional working capital or
working capital requirements, and changes in relationships with existing
licensees would have a favorable or negative impact depending upon the
nature of such changes. Based upon existing levels of expenditures,
assumed ten percent annual increases therein, existing cash reserves and
budgeted revenues, the Company believes that it would not require
additional funding for at least the next four years. There can be no
assurance that expenditures will not exceed the anticipated amounts or that
additional financing, if required, will be available when needed or, if
available, that its terms will be favorable or acceptable to the Company.
Eventual success of the Company and generation of positive cash flow will
be dependent upon the commercialization of products using the Company's
technology by the Company's licensees and payments of continuing
royalties on account thereof.
Recent Accounting Pronouncements
The Financial Accounting Standards Board has issued Statement 128,
"Earnings Per Share" (Statement 128). Statement 128 establishes
standards for computing and presenting earnings per share (EPS). The
Statement simplifies the standards for computing EPS and makes them
comparable to international EPS standards. The provisions of Statement
128 are effective for financial statements issued for periods ending after
December 15, 1997, including interim periods. The Statement does not
permit early application and requires restatement of all prior period EPS
data presented. In the opinion of management, adoption of Statement 128
will not have a material effect on the Company's financial position, results
of operation, or previously reported EPS.
The information set forth in this Report and in all publicly disseminated
information about the Company, including the narrative contained in
"Management's Discussion and Analysis of Financial Condition and
Results of Operations" above, includes "forward-looking statements"
within the meaning of Section 21E of the Securities Exchange Act of 1934,
as amended, and is subject to the safe harbor created by that section.
Readers are cautioned not to place undue reliance on these forward-looking
statements as they speak only as of the date hereof and are not guaranteed.
PART II. OTHER INFORMATION
Item 5. Other Information.
On April 9, 1997, the Company announced that it had signed a license
agreement with Hankuk Glass Industries Inc. (Korea's largest flat glass
company) permitting the commercial sale of a wide variety of products
using the Company's proprietary suspended particle device (SPD)
technology for the control of light. In 1990, Hankuk entered into a license
with Research Frontiers covering SPD smart windows, which essentially
limited Hankuk to manufacturing SPD smart windows in Korea and selling
them for architectural applications only. Since that time, a team from
Hankuk's Technical Research Institute had been developing an SPD film
production process and prototype products. The new license with Hankuk
permits them to produce and sell throughout the world a wide range of
products using SPD technology, increases the percentage royalty on net
sales of licensed products from prior levels, and requires that Hankuk
achieve certain commercialization and sales milestones. Hankuk has been
granted a limited exclusive right in Korea with respect to SPD products
consisting of architectural windows, transportation vehicle windows for
cars, boats, trains, aircraft and spacecraft, sunroofs, and skylights. The
license is non-exclusive outside of Korea and with respect to all other
products permitted to be sold under the license agreement, which could
include information displays for all types of products such as computers,
televisions, beepers, cellular and other telephones, scientific instruments,
toys, and contrast enhancement/glare reduction filters. Hankuk does not
have the right under their license to make SPD eyewear, helmet or goggle
products. The license also gives Hankuk the non-exclusive right to sell
automatically-dimming automotive SPD rear-view mirrors and sun visors,
provided that they are made and sold in Korea and are used as original
equipment on automotive vehicles manufactured in Korea. The agreement
also permits Hankuk to produce and sell SPD light control film to a
selected list of Research Frontiers' other licensees and prospective
licensees.
On August 11, 1997, the Company announced that it had signed an
exclusive license agreement with the Orcolite division of Monsanto
Company, a leading manufacturer of plastic eyewear lenses, that allows
Orcolite to incorporate the Company's SPD technology into a wide variety
of eyewear products, including prescription and non-prescription lenses,
ski goggles, other sports goggles and sunglasses. Under the license
agreement, Orcolite will pay Research Frontiers an earned royalty of 7%
of the net selling price of products sold under the agreement, along with
minimum royalties which rise over a period of about seven years to $2
million annually if the license is maintained in effect. In addition to
receiving rights to manufacture and sell "smart" eyewear worldwide,
Orcolite has the right to sublicense certain related companies and, with
Research Frontiers' consent, any third party.
There can be no assurance that any licensee of the Company will succeed
at introducing commercial products using the Company's technology.
Item 6. Exhibits and Reports on Form 8-K
(a) Exhibits.
10.13 License Agreement effective as of March 31, 1997 between the
Company and Hankuk Glass Industries, Inc. Filed herewith with
portions of this document omitted pursuant to the Registrant's
request for confidential treatment and filed separately with the
Securities and Exchange Commission.
10.14 License Agreement effective as of August 8, 1997 between the
Company and Orcolite, a Unit of Monsanto Company. Filed
herewith with portions of this document omitted pursuant to the
Registrant's request for confidential treatment and filed separately
with the Securities and Exchange Commission.
(b) Reports on Form 8-K. None.
SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of
1934, the registrant has duly caused this report to be signed on its behalf
by the undersigned thereunder duly authorized.
RESEARCH FRONTIERS INCORPORATED
(Registrant)
/s/ Robert L. Saxe
Robert L. Saxe, President and Treasurer
(Principal Executive, Financial, and Accounting Officer)
Date: November 13, 1997<PAGE>
[EXHIBIT 10.13- 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.]
THIS AGREEMENT effective as of March 31, 1997 is made and
entered into by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation, having a place of business at
240 Crossways Park Drive, Woodbury, New York, 11797-2033 ("RFI");
and HANKUK GLASS INDUSTRIES INC., a corporation organized and
existing under the laws of Korea, having offices at 45-1, Yeouido-Dong,
Youngdeungpo-Ku, Seoul, Korea ("HGI"). All definitions not otherwise
defined in the body of this Agreement shall have the meaning ascribed to
them in Schedule B hereto.
W I T N E S S E T H:
WHEREAS, RFI and HGI have previously entered into a Prior
License Agreement;
WHEREAS, RFI and HGI are desirous of revising the basic terms
of the Prior License Agreement to modify and expand the scope of such
license as hereinafter set forth, and to supersede the Prior License
Agreement by replacing it with the current Agreement;
WHEREAS, RFI has been engaged in research and development
in the application of physicochemical concepts to Light Valve Film and
Licensed Products 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, HGI is interested in manufacturing and selling Light
Valve Film and Licensed Products, and desires to acquire the rights and
licenses granted herein to permit HGI to do so;
NOW, THEREFORE, in consideration of the mutual undertakings
and covenants herein contained the parties agree as follows:
1. Documentation Supplied by RFI. The parties hereto
acknowledge that RFI has heretofore furnished to HGI under the Prior
License Agreement all applicable Technical Information and training,
which relates to experimental products, including, without limitation
thereto (1) a document entitled Handbook of Technical Information
Relating to Variable Density Optical Devices Incorporating a Suspension
and (2) photocopies of all U.S. Patents and patent applications relating to
Light Valve Film and Licensed Products owned or controlled by RFI as of
the Effective Date of this Agreement, and that RFI is not obligated
hereunder to furnish additional Technical Information. RFI shall not be
obligated hereunder to furnish copies of RFI's foreign patents and patent
applications, but will furnish a list thereof in Schedule A hereto.
2. Visits. Each party's technically skilled personnel (with travel
and living expenses paid by such party) may, when invited by the other
party, make one or more visits to inspect the other's research and
development and other facilities relating to Light Valve Film and Licensed
Products during the term of this Agreement. HGI and RFI 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 by RFI to HGI pursuant to this Agreement. 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.
3. Confidential Information. (a) HGI agrees for itself and its
employees and agents that for twenty (20) years from the date of its receipt
of information disclosed to HGI by RFI pursuant to this Agreement or
pursuant to the Prior License 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 HGI in writing on a non-confidential basis prior to the Effective Date
of the Prior License Agreement or which is shown by HGI to have been
received by it from a third party who had the legal right to so disclose it
without similar restrictions and without breach of any agreement. Except
as provided in Section 10 hereof, it is understood and agreed that HGI has
no obligation hereunder to provide RFI with any confidential or proprietary
information, and that RFI shall have no obligation hereunder to HGI to
maintain in confidence or refrain from commercial or other use of any
information which RFI is or becomes aware of under this Agreement or
under the Prior License Agreement. The terms and provisions of this
Agreement or any other agreement between the parties shall not be
considered confidential. HGI agrees that for the period of time during
which HGI is obligated to keep Technical Information confidential
hereunder, HGI will not make, use, sell, lease or otherwise dispose of
products using or directly or indirectly derived from Light Valve Film or
Licensed Products 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 RFI and HGI permitting it to do so is in full
force and effect and the royalties, if any, provided in such agreement are
being paid to RFI 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 are independently developed by a third party
other than RFI or HGI or their licensees, sublicensees, or any of their
affiliates, and which is not in any way directly or indirectly derived from
any Technical Information of RFI or HGI or their licensees, sublicensees,
or any of their affiliates. Nothing contained in this section, however, shall
be construed as granting HGI any rights or licenses with respect to any
Technical Information or patents of RFI or its other licensees or their
sublicensees.
(b) HGI will have the right to disclose Technical Information of
RFI to a manufacturing subcontractor; provided, however, that HGI shall
only disclose such Technical Information as is strictly necessary to enable
said subcontractor to perform its manufacturing task, and provided that
prior to disclosing any Technical Information to said subcontractor, said
subcontractor has signed a secrecy agreement with HGI at least as
protective of RFI'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 3 hereof to the same
extent as HGI. HGI shall furnish a copy of said secrecy agreement to RFI
prior to disclosing Technical Information to said subcontractor.
4. Development and Sale of Light Valve Film
(a) Light Valve Film License. During the term of this Agreement,
RFI hereby grants HGI a non-exclusive royalty-free right (including the
right to grant non-exclusive sublicenses to any wholly-owned and
controlled subsidiary of HGI, whose obligations HGI hereby guarantees,
and which acknowledges to RFI 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) to use (a) all of the Technical
Information furnished by RFI pursuant to this Agreement or pursuant to
the Prior License 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 Light Valve Film for Licensed Purposes only, and to sell,
lease, or otherwise dispose of Light Valve Film manufactured by HGI
pursuant to this Agreement solely to Authorized Users. By virtue of the
disclosure of Technical Information and training provided by RFI under
the Prior License Agreement, all Light Valve Film sold, leased or
otherwise disposed of by or for HGI hereunder shall be deemed to have
been manufactured at least in part using the Technical Information
provided by RFI. HGI agrees that, except for the specific licenses granted
to it under Section 5(a) hereof, HGI has not acquired any rights or licenses
under this Agreement to use Light Valve Film or any components thereof
made by HGI pursuant to this Agreement except for the purposes of
research and development pursuant to Section 4(b) hereof. All sublicenses
shall (i) be on bona fide arm's length terms, (ii) be granted for only
monetary consideration, (iii) be non-exclusive, (iv) shall terminate with the
termination of the rights and licenses granted to HGI under Section 4(a)
hereof, and be otherwise limited in accordance with the limitations and
restrictions which are imposed on the rights and licenses granted to HGI
hereunder, (v) contain confidentiality provisions no less protective than
those contained in Section 3 hereof, and (vi) shall contain such other terms,
conditions, and licenses as are necessary to enable HGI to fulfill its
obligations hereunder. HGI shall send RFI a copy of every sublicense
agreement or other agreement entered into by HGI in connection with a
sublicense hereunder within thirty (30) days of the execution thereof.
(b) Development of Light Valve Film. HGI shall use its best
efforts to produce sample production rolls or pieces of Light Valve Film
for the evaluation and use of RFI and licensees and prospective licensees
of RFI which RFI elects to list in Schedule C, as such Schedule C may be
amended from time to time by RFI, and for use by HGI but only for
internal research and development and for use in Licensed Products
pursuant to Section 5(a) hereof. HGI agrees to use all commercially
reasonable efforts throughout the term of this Agreement, including giving
due consideration to the implementation of reasonable processes,
procedures or modifications, to improve the quality of Light Valve Film.
However, RFI and HGI make no guaranty or warranty to one another
under this Agreement (a) that HGI will be able to develop, manufacture,
sell or otherwise commercialize Light Valve Film or any Licensed
Products, or (b) as to the validity of any patent.
(c) RFI Purchases. Upon request of RFI, HGI shall sell and
deliver to RFI Light Valve Film at a price equal to the lowest amount
charged and best available other terms for such Light Valve Film by HGI
to any person or entity for such Light Valve Film (excluding free samples).
HGI acknowledges that RFI and its licensees (or entities who have been
granted the option of entering into license agreements with RFI) may
independently manufacture (or have third parties manufacture for them)
and sell Light Valve Film under the terms of agreements between them and
RFI, or may independently manufacture and sell Light Valve Film which
RFI produces, or has produced on its behalf. Nothing contained in this
Agreement shall impose any obligation on RFI and the other entities now
or hereafter listed on Schedule C to purchase any Light Valve Film from
HGI.
(d) Compliance. HGI agrees that, without limitation, any
manufacture, sale, lease, use or other disposition of Light Valve Film that
is not in accordance with (1) the provisions of this Agreement, or (2) with
the provisions of any other agreement then in force to which HGI is a party
and which relates to Light Valves or Light Valve Film, shall be deemed a
material breach of this Agreement.
(e) Periodic Reports. HGI shall keep full and complete records
with respect to its manufacture of Light Valve Film, including costs of raw
materials delivered to HGI for the manufacture of Light Valve Film, its
inspection and testing of Light Valve Film and raw materials and sale or
other disposition of Light Valve Film. HGI shall provide RFI with an
annual report indicating the quantity of Light Valve Film manufactured
each calendar year and the amount of Light Valve Film sold, leased,
disposed of, or delivered each calendar year to RFI and to third parties,
each of whom shall be clearly identified. The first report submitted under
this Agreement shall cover the period from the Effective Date of the
Agreement to the end of the first calendar year in which Light Valve Film
is produced hereunder. If 500,000 square feet or more of Light Valve Film
is manufactured, sold or otherwise disposed of hereunder by or for HGI or
its sublicensees in any calendar year, all such reports shall thereafter be
provided on a quarterly basis. HGI shall also furnish to RFI 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 HGI or its sublicensees relating to Light Valve
Film or Licensed Products.
(f) End Users. HGI agrees that during the term of this Agreement
that it will sell, lease, or otherwise dispose of Light Valve Film only to
Authorized Users. HGI agrees to require all Authorized Users to look only
to HGI and not to RFI or its affiliates for any claims, warranty, or liability
relating to such Light Valve Film. HGI and its sublicensees agree to notify
RFI if it becomes aware that any Light Valve Film sold, leased or
otherwise disposed of by or for HGI or its sublicensees is being used for
any purpose other than a permitted purpose. If a party which is not then
listed on Schedule C hereto wishes to obtain samples of Light Valve Film
or to purchase Light Valve Film from HGI, HGI shall notify RFI and shall
refer such party to RFI. If such party enters into a suitable agreement with
RFI, RFI shall inform HGI whether such party may then obtain samples or
purchase Light Valve Film from HGI, and shall include such party on
Schedule C, and HGI agrees that it will only provide Light Valve Film to
the parties listed on such Schedule C for the specific purposes listed on
such Schedule C.
5. Development and Sale of Licensed Products
(a) Licensed Products License. During the term of this
Agreement RFI hereby grants HGI an exclusive right in Korea until
December 31, 2004 (subject to a license to LICENSOR's Prior Licensees,
as such term is defined in the Prior License Agreement, their sublicensees,
and customers of LICENSOR's Prior Licensees and their sublicensees to
export Light Valve Architectural Window Products, as defined in the Prior
License Agreement, and parts thereof from Japan to Korea, and subject
further to any rights or licenses granted by RFI to third parties in
agreements entered into either (a) before the Effective Date of this
Agreement, or (b) after the Effective Date of this Agreement if such
agreements are being negotiated by RFI as of the Effective Date of this
Agreement) with respect to Licensed Products consisting of architectural
windows, transportation vehicle windows for cars, boats, trains, aircraft
and spacecraft, sunroofs, and skylights only, and with respect to all other
Licensed Products, the non-exclusive right (including the right to grant
non-exclusive sublicenses to any wholly-owned and controlled subsidiary
of HGI, whose obligations HGI hereby guarantees, and which
acknowledges to RFI in writing prior to doing so that it wishes to become
a sublicensee hereunder and agrees to be bound by the terms and
conditions of this Agreement) to use (a) all of the Technical Information
furnished by RFI pursuant to this Agreement or pursuant to the Prior
License 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,
lease, use and sell Licensed Products (other than Light Valve Automotive
Vehicle Rear-View Mirror Products and Light Valve Transportation
Vehicle Sun Visor Products) in all of the countries of the world, and with
respect to Licensed Products which are Light Valve Automotive Vehicle
Rear-View Mirror Products or Light Valve Transportation Vehicle Sun
Visor Products, to make, lease, use and sell Licensed Products which are
manufactured and sold by HGI in Korea and used or intended for use
solely as Light Valve Automotive Vehicle Rear-View Mirror Products and
Light Valve Transportation Vehicle Sun Visor Products, provided that such
Light Valve Automotive Vehicle Rear-View Mirror Products and Light
Valve Transportation Vehicle Sun Visor Products are used only as original
equipment on automotive vehicles manufactured in Korea, but not for
export except as an integral part of automotive vehicles manufactured in
Korea, and as a replacement for damaged or defective Light Valve
Automotive Vehicle Rear-View Mirror Products or Light Valve
Transportation Vehicle Sun Visor Products which were previously
installed as original equipment on automotive vehicles manufactured in
Korea. All sublicenses shall (i) be on bona fide arm's length terms, (ii) be
granted for only monetary consideration, (iii) be non-exclusive, (iv) shall
terminate with the termination of the rights and licenses granted to HGI
under Section 5(a) hereof, and be otherwise limited in accordance with the
limitations and restrictions which are imposed on the rights and licenses
granted to HGI hereunder, (v) contain confidentiality provisions no less
protective than those contained in Section 3 hereof, and (vi) shall contain
such other terms, conditions, and licenses as are necessary to enable HGI
to fulfill its obligations hereunder. HGI shall send RFI a copy of every
sublicense agreement or other agreement entered into by HGI in
connection with a sublicense hereunder within thirty (30) days of the
execution thereof.
(b) Payments.
(1) Earned Royalties on Net Sales. During the term of this
Agreement, HGI agrees to pay RFI an earned royalty which shall be four
percent (4%) of the Net Selling Price of Licensed Products which embody,
or the manufacture of which utilizes, any of the rights granted under
Section 5(a) hereof, and which are manufactured by or for HGI and sold,
leased, used or otherwise disposed of by or for HGI or a permitted
sublicensee. Payments under this subsection 5(b)(1) shall be made on a
quarterly basis and made within 45 days after the end of the calendar
quarter in which such Licensed Products were sold, leased, used or
otherwise disposed of by or for HGI or a permitted sublicensee hereunder.
Each royalty payment shall be in U.S. dollars and shall be accompanied by
a statement by HGI showing in reasonable detail the amount of Licensed
Products sold, used, leased or otherwise disposed of by or for HGI 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. HGI 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 end of the first
calendar quarter in which a Licensed Product is sold, used, leased or
otherwise disposed of by or for HGI or its sublicensees.
(2) Up-front Fee. HGI agrees to pay RFI a non-refundable up-
front fee of [Confidential Information Omitted and filed separately with the
Securities and Exchange Commission] on or before [Confidential
Information Omitted and filed separately with the Securities and Exchange
Commission]; provided, however, that if HGI reports to RFI in writing on
or before December 31, 1999 that [Confidential Information Omitted and
filed separately with the Securities and Exchange Commission], then such
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission] payment shall not be required to be made by
HGI.
(c) Sales, Use and Returns. Licensed Products shall be considered
as sold, leased or used and royalties shall accrue on the earlier of when
such Licensed Products are billed out, or when delivered, shipped or
mailed to the customer. If as a result of a price reduction or a return of
Licensed Products previously sold, a credit or refund to a customer is given
on part or all of the sale price of such Licensed Products, a credit shall be
allowed against royalties accruing thereafter under this Agreement equal
to the royalty paid on that part of the sales price so credited or refunded.
6. Recordkeeping. HGI 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 Light Valve Film, 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 RFI or its duly authorized
representatives, upon reasonable notice, adequately to inspect the same at
any time during usual business hours. RFI and HGI agree that an
independent certified public accounting firm (selected by RFI from the
largest ten certified public accounting firms either in the United States of
America or Korea) may audit such records, files and books of accounts to
determine the accuracy of the statements given by HGI pursuant to
Sections 4(e) and 5(b)(1) hereof. Such an audit shall be made upon
reasonable advance notice to HGI and during usual business hours. The
cost of the audit shall be borne by RFI, unless the audit shall disclose a
breach by HGI of any term of this Agreement or an underpayment error in
excess of three percent of the total monies paid to RFI by HGI during the
audited period, in which case HGI shall bear the full cost of such audit.
HGI agrees to pay RFI all additional monies that are disclosed by the audit
to be due and owing to RFI within thirty days of the receipt of the report.
7. Method of Payment. All payments made to RFI shall be paid
by wire transfer of immediately available funds to the account of Research
Frontiers Incorporated at Chase Manhattan Bank, 1064 Old Country Road,
Plainview, New York 11803, Account No.: 210-007702, ABA Wire Code
No.: 021 000 128, or to such other account or place, as RFI may specify in
a notice to HGI. Any withholding tax imposed in Korea on any payment
under this Agreement shall be borne by RFI, subject to the Korean tax laws
and The Convention for the Avoidance of Double Taxation between the
Governments of the United States of America and the Republic of Korea
which was signed on June 4, 1976 and entered into force October 20, 1978;
provided, however, that HGI shall obtain from the competent tax
authorities a certificate of payment of such withholding tax in such form
as shall be useful to RFI for tax credit purpose in the United States of
America and forward the same to RFI without delay.
8. Laws and Regulations. HGI 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 and
Light Valve Film by HGI and its sublicensees, and for obtaining all
approvals necessary from governmental agencies and other entities. HGI
agrees to send RFI a copy of all such approvals (including English
translations thereof) immediately upon receipt.
9. Insurance; Indemnification. To the extent available without
prohibitively high insurance premiums, HGI shall maintain at all times
ample product liability and other liability insurance covering its operations
relating to the subject matter of this Agreement. HGI, and its affiliates,
successors and assigns and sublicensees (each, an "Indemnifying Party"),
each hereby indemnify and agree to hold harmless RFI and its
shareholders, officers, directors, agents and employees (each, an
"Indemnified Party"), against any liability, damage, loss, fine, penalty,
claim, cost or expense (including 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 Light Valve Film, Licensed Products and related
materials, or other use of the information and rights granted hereunder.
Any right of RFI to inspect HGI's operations, and any such inspection,
shall in no way impose any liability on RFI or reduce the responsibilities
of HGI hereunder or relieve it from any of its obligations and warranties
under this Agreement.
10. Improvements and Modifications. (a) During the term of this
Agreement, HGI and RFI agree to cooperate with each other in the
research and development to improve the design, operation, manufacture
and assembly of Light Valve Film, Licensed Products and/or the
suspensions or other components used or usable in Light Valve Film or
Licensed Products. Except as otherwise provided in Section 10(b) hereof,
HGI agrees that any and all rights and licenses which HGI has granted to
RFI or was obligated to grant to RFI pursuant to any provision of the Prior
License Agreement shall be retained by RFI notwithstanding any
termination of the Prior License Agreement or this Agreement. If during
the term of this Agreement and on or before [Confidential Information
Omitted and filed separately with the Securities and Exchange
Commission], any improvements or modifications are invented or
developed by or on behalf of RFI, which in RFI's sole judgment would
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission] such improvements and modifications shall be
automatically included, on a non-exclusive basis, in the rights and licenses
granted pursuant to Sections 4(a) and 5(a) hereof, and any patents and/or
patent applications relating thereto shall automatically be added to
Schedule A hereof; such improvements and modifications may comprise,
without limitation,[Confidential Information Omitted and filed separately
with the Securities and Exchange Commission]. However, any other
future improvements or modifications invented or developed by or on
behalf of HGI, HGI's sublicensees and RFI 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 Light Valve Film, Licensed
Products and/or to the suspensions or other components used or usable in
Light Valve Film or Licensed Products shall not be included in this
Agreement. During the term of this Agreement each of the parties hereto
agrees to inform the other in writing on a non-confidential basis, at least as
frequently as once a year in January of each calendar year, if any
significant improvements or modifications have been made relating to the
subject matter of this Agreement, and as to the general nature of any such
improvements and modifications. Upon written request by the non-
inventing party, RFI and HGI 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 the foregoing, RFI may, but shall
not be required to, voluntarily and without additional cost to HGI disclose
certain information relating to future improvements and modifications and
license to HGI rights in such certain future improvements and
modifications. In connection therewith, RFI may voluntarily add patents
and/or patent applications to Schedule A hereof. No disclosure of any
information by RFI shall in any way establish a course of dealing or
otherwise require RFI to make any future disclosure of information under
this Agreement. Notwithstanding anything contained herein to the contrary,
in the event that either party or its sublicensees hereunder makes any
improvement or modification for which it intends to file a patent
application, after [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission] it may withhold disclosure
of it from the other party for a period not to exceed six months from the
reduction to practice of said improvement or modification. Any
information disclosed by RFI under this Section 10 will be considered
Technical Information which HGI shall be obligated to keep confidential
pursuant to Section 3 of this Agreement.
(b) (1) HGI agrees that on or before [Confidential Information
Omitted and filed separately with the Securities and Exchange
Commission] it will [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission] 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 RFI in writing prior to the
date of disclosure by HGI to RFI pursuant to this Agreement or which is
shown by RFI to have been received by it from a third party who had the
legal right to so disclose it without similar restrictions and without breach
of any agreement.
(2) Provided that said written procedure has been timely
delivered to RFI as set forth in Section 10(b)(1) above, RFI agrees that
during the term of this Agreement or until December 31, 2009, whichever
occurs first, RFI shall not, pursuant to the rights and licenses it received
from HGI under the Prior License Agreement, which have been confirmed
in Section 10(a) hereof, itself manufacture or sublicense third parties to
manufacture Light Valve Film by [Confidential Information Omitted and
filed separately with the Securities and Exchange Commission]
(3) HGI agrees that on or before [Confidential Information
Omitted and filed separately with the Securities and Exchange
Commission] HGI will [Confidential Information Omitted and filed
separately with the Securities and Exchange Commission].
11. Foreign Patent Applications. During the term of this
Agreement, HGI 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. If so designated and if
legally possible to do so, RFI agrees to promptly file, prosecute and
maintain such applications and resulting patents, and HGI shall pay to RFI
the complete cost, including reasonable attorney's fees, to file, prosecute
and maintain any such patent application and resulting patents.
12. Term. (a) 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 on December 31, 2004; provided,
however, that if HGI has faithfully performed all of its obligations under
this Agreement through December 31, 2004, and if HGI has reported to
RFI in a timely and accurate manner the Net Selling Price of Licensed
Products sold, leased, or otherwise disposed of, by or on behalf of HGI
during the term of this Agreement and HGI has paid in a timely manner the
royalties due thereon pursuant to Section 5, HGI shall have the option to
extend this Agreement for an additional term which shall commence on
January 1, 2005 and end on the date which is the expiration date of the last
to expire of the patents now or hereafter listed in Schedule A hereof, by
providing RFI with a notice stating that HGI wishes to exercise this option
to extend the term of this Agreement. Such notice shall be made in writing
and shall be given after June 30, 2004 and prior to September 30, 2004.
If this Agreement is so extended for another term as described above, then
after December 31, 2009, (1) HGI shall have the nonexclusive right to use
Technical Information of RFI provided to HGI under the Prior License
Agreement ("Prior Technical Information") or provided to HGI under this
Agreement on or before December 31, 2009 ("New Technical
Information"), if any, for Light Valve Architectural Window Products (as
defined in the Prior License Agreement), and (2) HGI shall retain a
nonexclusive license to use the Prior Technical Information and the New
Technical Information to develop and sell Light Valve Film and Licensed
Products without obligation to RFI, but HGI's rights and licenses with
respect to any patents, patent applications, utility models and applications
for utility models, and any continuations, continuations-in-part, divisions,
reissues, reexaminations, or extensions thereof owned or controlled by
RFI, and now or hereafter listed on Schedule A hereof shall terminate with
the expiration or termination of this Agreement.
(b) HGI may terminate this Agreement effective as of December
31, 2000 or as of any anniversary thereof by giving RFI prior notice
thereof unless sooner terminated as hereinafter provided. Such notice shall
be made in writing and shall be given between 30 and 90 days prior to the
effective date for which such termination is to be effective. If HGI decides
to terminate this Agreement for any reason, HGI shall provide RFI, along
with the aforementioned notice of termination, with a written report
describing the reasons for such termination. HGI may also terminate this
Agreement at any time upon 30 days notice if RFI shall at any time
materially breach any term of this Agreement, and such breach shall not be
cured within such 30-day period.
(c) RFI may terminate the licenses granted under Section 5(a)
hereof as of December 31, 2002 or as of any anniversary thereof by at least
30 days' prior notice by RFI to HGI if HGI has not reported to RFI
pursuant to Section 5(b)(1) hereof that for the 12-month period ending the
preceding December 31 that the Net Selling Price of Licensed Products
was at least [Confidential Information Omitted and filed separately with
the Securities and Exchange Commission]. RFI may also terminate this
Agreement at any time upon 30 days notice if HGI shall at any time
materially breach any term of this Agreement, or default in the payment of
any monies due in accordance with this Agreement and such default shall
not be cured within such 30-day period, repeatedly provide inaccurate
reports hereunder, or if there has been a substantial cessation by HGI of
general operations or of work related to Light Valve Film or Licensed
Products.
13. 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 HGI's rights and
licenses under this Agreement shall cease, and HGI shall immediately
return to RFI all Technical Information furnished to HGI under this
Agreement or the Prior License Agreement, together with all
reproductions, copies and summaries thereof; provided, however, that HGI
may retain solely for archival purposes one copy of all such documents in
its legal department files, and (2) at RFI's option, HGI shall, within 30
days of the date of such termination or expiration, either (A) sell and
deliver to RFI under the terms specified in Section 4(c) any Light Valve
Film which shall then be in the possession of HGI, and, if requested by
RFI, HGI shall finish and deliver to RFI any Light Valve Film in the
process of manufacture as soon as possible and, in any case, not later than
30 days after receiving RFI's request, or (B) promptly destroy and dispose
of any Light Valve Film (and Light Valve Film in the process of
manufacture) not sold to RFI under this Section 13. No termination of this
Agreement by expiration or otherwise shall release HGI or RFI 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, HGI's obligations to RFI under Sections 2, 3, 4(e), 6, 8, 9,
10, 13, 17, 18, 19 and the reporting requirements of Section 5(b) hereof
shall survive any termination of this Agreement.
14. Trademarks. All trademarks or service marks that either
party may adopt and use for Light Valve Film 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 other than the right to inform
others that the adopting party has produced Light Valve Film or products
incorporating Light Valves under such mark or marks.
15. Rights Cumulative; Waivers. To the extent permitted by law,
the parties' rights and remedies under this Agreement shall be cumulative
and not exclusive remedies. Any party's exercise, failure to exercise or
delay in exercising any right or remedy at any time shall not prevent such
party from exercising any other right or remedy or exercising such right or
remedy at a later time.
16. Authority. Each party warrants to the other that it has the
right to convey the rights and licenses granted by this Agreement. Each
party warrants to the other that it has the authority to enter into this
Agreement and to consummate the transactions contemplated hereby
without additional notice to, or approval being required by, any
governmental authority or third party.
17. Termination of Prior License Agreement: Upon the Effective
Date, this Agreement will supersede and replace the Prior License
Agreement. Upon the Effective Date, the Prior License Agreement shall
automatically terminate without further action on the part of the parties
thereto.
18. Construction. This Agreement shall be construed and
enforced in accordance with and governed by the laws of the United States
of America and the State of New York. The section headings of this
Agreement are included herein for convenience and shall not be considered
in construing this Agreement. All disputes, controversies or differences
which may arise between the parties, out of or in relation to or in
connection with this Agreement, or for the breach hereof, shall be finally
settled by arbitration pursuant to the Rules of Commercial Arbitration and
Conciliation of the International Chamber of Commerce, by which each
party hereto is bound. The place of arbitration shall be in Paris, France.
Under any such arbitration the number of arbitrators shall be three and they
shall all be neutral and all be English-speaking; no arbitrator shall be
American or Korean; and the language to be used in the arbitral
proceedings shall be English, provided that witnesses may testify in their
native language.
19. Miscellaneous. 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. This
Agreement shall be binding on and shall inure to the benefit of the parties
and their successors and assigns. However, HGI agrees that it shall not
assign this Agreement or its rights hereunder without the prior written
consent of RFI. Upon thirty days prior notice to HGI, RFI 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 RFI. No
modification of this Agreement shall be effective unless such modification
or amendment shall be in writing and signed by the parties; provided,
however, that either party may unilaterally waive in writing any provision
imposing an obligation on the other. All notices shall be effective upon
receipt and shall be sent in writing to a signatory of this Agreement at its
address given above or to any other address or person that the party may
designate by notice. All notices hereunder shall be sent by certified or
registered mail, or by Federal Express, DHL, or by any other
internationally-recognized priority courier service. The parties may sign
this Agreement in any number of counterparts, each of which shall be
deemed an original, and all of which, when taken together, shall constitute
one and the same agreement. The foregoing contains all of the
understandings of the parties relating to this Agreement, and cancels and
supersedes all prior understandings and agreements between the parties
with respect thereto.
IN WITNESS WHEREOF, the parties hereto have caused this
Agreement to be executed on the date hereinafter set forth by their proper
officers duly authorized.
RESEARCH FRONTIERS INCORPORATED
By: /s/ Robert L. Saxe
Robert L. Saxe, President
Date: March 31, 1997
HANKUK GLASS INDUSTRIES INC.
By: /s/ Sehoon Lee
Sehoon Lee, Representative Director
Date: March 31, 1997<PAGE>
Schedule A
(As of February 28, 1997)
LIST OF UNITED STATES AND
FOREIGN PATENTS
AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
4,113,362 Robert L. Saxe et al
"Light Valve, Light Valve Suspension
Materials and Suspension Therefor" 9/12/78 5/11/97
4,131,334 Michael Witte et al
"Light Polarizing Materials, Suspensions
Thereof, and Process for Manufacturing
Such Suspensions" 12/26/78 5/11/97
4,164,365 Robert L. Saxe
"Light Valve for Controlling the
Transmission of Radiation Comprising
a Cell and a Stabilized Liquid Suspension" 8/14/79 8/10/98
4,270,841 Robert L. Saxe
"Light Valve Containing Suspension of
Perhalide of Alkaloid Acid Salt" 6/02/81 10/31/98
4,273,422 Robert L. Saxe
"Light Valve Containing Liquid
Suspension Including Polymer
Stabilizing System" 6/16/81 3/5/99
4,407,565 Robert L. Saxe
"Light Valve Suspension Containing
Fluorocarbon Liquid" 10/04/83 1/16/01
4,422,963 Robert I. Thompson et al
"Improved Light Polarizing Materials
and Suspension Thereof" 12/27/83 12/27/00
4,772,103 Robert L. Saxe
"Light Valve Containing an Improved
Suspension,and Liquids Therefor" 9/20/88 8/8/06
4,877,313 Robert L. Saxe et al
"Light Polarizing Materials and
Suspensions Thereof" (QA) 10/31/89 2/10/09
5,002,701 Robert L. Saxe
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 10/27/09
5,093,041 Joseph A. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 Paul Rosenberg
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 Robert L. Saxe
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92 10/31/06
5,279,773 Robert L. Saxe
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
5,325,220 Robert L. Saxe
"Light Valve With Low Emissivity
Coating As Electrode" (JDR-105) 6/28/94 3/9/13
5,463,491 Joseph A. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such Film" (JDR-101) 10/31/95 11/6/12
5,463,492 Joseph A. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" (JDR-102) 10/31/95 11/6/12
5,461,506 Joseph A. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same" (JDR-103) 10/24/95 5/11/13
5,467,217 Joseph A. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same" (JDR-104) 11/14/95 5/11/13
5,516,463 Joseph A. Check III et al
"Method of Making Light Polarizing
Particles" (JDR-106) 05/14/96 7/08/14<PAGE>
PENDING APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities and
Exchange Commission]<PAGE>
Schedule B
DEFINITIONS
"Authorized User" means RFI and/or any other person or entity listed by
RFI on Schedule C hereof. HGI agrees that RFI may amend Schedule C
hereof at any time during the term of this Agreement for any reason by
sending HGI a written notice of such amendment. The persons or entities
now or hereafter listed on Schedule C may not include all of RFI's current
licensees and may include prospective licensees of RFI, and for legal or
practical reasons, RFI may restrict the type or nature of Light Valve Film
that may be sold, leased or transferred to such person or entity. HGI agrees
that immediately upon receipt of any written notice from RFI that any
person or entity is no longer included on Schedule C, it shall cease all
sales, leases, or other dispositions of Light Valve Film to such persons or
entities, unless and until RFI consents in writing to the resumption of such
sales, leases or other dispositions. HGI agrees that it shall not discriminate
in any way against any of the persons or entities listed on Schedule C.
The "Effective Date" of this Agreement is the date set forth on the first line
on page 1 of this Agreement which date shall be 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. Unless waived by RFI in writing, this Agreement shall be null
and void ab initio, unless a fully executed copy of this Agreement is
delivered to each of the parties hereto by March 31, 1997.
"Licensed Product" means a Light Valve used or intended for use and
integrally incorporated in, or attached to any commercial product other
than those specifically excluded below, including by way of explanatory
example architectural windows, transportation vehicle windows for cars,
boats, trains, aircraft and spacecraft, sunroofs, skylights, information
displays for all types of products such as computers, televisions, beepers,
cellular and other telephones, scientific instruments, toys, and contrast
enhancement/glare reduction filters, and, as limited by the rights and
licenses contained in Section 5(a) hereof, Light Valve Automotive Vehicle
Rear-View Mirror Products and Light Valve Transportation Vehicle Sun
Visor Products. The term "Licensed Product" shall not include (1) Light
Valves used or intended for use (a) in any eyewear, helmet or goggle
product or application, (b) except as specifically permitted by the rights
and licenses granted in Section 5(a), in any transportation vehicle rear-view
mirror or sun visor product or application, or (2) any component of a
Light Valve (including liquid suspensions, particles, polymers, chemical
additives, or Light Valve Film) which is not integrally incorporated into an
actual product sold by HGI or its permitted sublicensees hereunder.
Nothing contained herein shall permit HGI to sell, lease, or otherwise
dispose of Light Valve Film except for Licensed Purposes only, and solely
to Authorized Users.
"Licensed Purpose" means a sale, lease or other disposition by HGI of
Light Valve Film made by HGI pursuant to this Agreement to an
Authorized User in the permitted territory and for the applications specified
on Schedule C in which each Authorized User listed on such schedule may
sell, lease, use or otherwise dispose of Light Valve Film acquired from
HGI.
"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 and active matrix addressing films
and components), spacers, seals, electrical and/or electronic components,
and other elements incorporated in or on the cell. The activatable material,
which the cell contains or is adapted to contain, includes in it solid
suspended particles, which when subjected to a suitable electric or
magnetic field, orient to produce a change in the optical characteristics of
the device.
"Light Valve Automotive Vehicle Rear-View Mirror Product" means a
Light Valve intended for use and used solely as an interior or exterior
rear-view mirror in a non-military automotive vehicle including but not
limited to an automobile, motorcycle, bus, van, truck, boat, train or aircraft.
The term "Light Valve Automotive Vehicle Rear-View Mirror Product"
shall not include (1) Light Valves which are used or intended for use as or
in any other type of mirror product and (2) Light Valves used or intended
for use as or in any non-mirror product such as but not limited to windows,
displays, filters for scientific instruments or lamps and eyewear.
"Light Valve Film" means a film or sheet or more than one thereof
comprising a suspension of particles used or intended for use solely in or
as a Light Valve. The Light Valve Film shall comprise either (a) a
suspension of particles dispersed throughout a continuous liquid phase
enclosed within one or more rigid or flexible solid films or sheets, or (b)
a discontinuous phase of a liquid comprising dispersed particles, said
discontinuous phase being dispersed throughout a continuous phase of a
rigid or flexible solid film or sheet. The Light Valve Film may also
comprise (A) one or more other layers such as, without limitation, a film,
coating or sheet or combination thereof, which may provide the Light
Valve Film with (1) scratch resistance, (2) protection from ultraviolet
radiation, (3) reflection of infrared energy, and/or (4) electrical
conductivity for transmitting an applied electric or magnetic field to the
suspension, and (B) electrical connections such as busbars, electrical
wiring and electrical leads.
"Light Valve Transportation Vehicle Sun Visor Product" means a Light
Valve used or intended for use only as a sun visor (which may comprise
more than one segment) attached to the interior of a non-military
transportation vehicle in the manner hereinafter described, which is capable
of being controlled automatically or by the user to protect the user's eyes
from sunlight or glare, and each segment of which has a viewing area no
larger than 0.25 (one-quarter) square meter. A Light Valve Transportation
Vehicle Sun Visor Product must either be (a) attached to the interior of a
window or windshield, the interior of the body, or to an accessory on the
inside, of a transportation vehicle by means of a relatively small rod, post
or hinge mechanism, or (b) attached to the housing of a rear-view mirror
inside such transportation vehicle provided that the sun visor so attached
is not used to obstruct the mirror so as to vary the reflectivity of such
mirror, and is only used to block sunlight or glare next to such mirror. The
term "Light Valve Transportation Vehicle Sun Visor Product" however,
shall without limitation thereto, not include (1) Light Valves which are
used or intended for use in a transportation vehicle as, or as part of, or are
laminated to, or whose surface area is primarily attached to, a window,
sunroof or windshield, (2) Light Valves which are used or intended for use
as, or as part of, any other window product and (3) Light Valves used or
intended for use as or in any non-window product such as but not limited
to displays, eyewear, mirrors or filters for scientific instruments, lamps or
contrast enhancement of displays. The term "transportation vehicle" shall
include, but shall not be limited to, passenger cars, recreational vehicles,
trucks, mobile cranes, trains, aircraft and boats.
The "Net Selling Price" of Licensed Products on which royalties are
payable shall be the genuine selling price of HGI and its sublicensees
hereunder f.o.b. factory at which nonaffiliated customers are billed in the
usual course of business for Licensed Products, as packed for shipment to
the customer, reduced only by the applicable proportions of the following
if, and to the extent that, amounts in respect thereof are reflected in such
selling price: (i) normal trade discounts actually allowed; (ii) sales, use or
excise and added value taxes and custom duties paid; (iii) if the genuine
selling price is other than f.o.b. factory, amounts paid for f.o.b.
transportation of Licensed Products to the customer's premises or place of
installation or delivery; (iv) the cost to HGI or its sublicensees hereunder
of any part or component included in Licensed Products which is
purchased directly from RFI; (v) the cost to HGI or its sublicensees
hereunder of power supplies, DC-AC converters, and window frames sold
as part of a Licensed Product; (vi) insurance costs and the costs of packing
material, boxes, cartons and crates required for shipping; provided,
however, that after all deductions have been taken therefrom excluding
materials purchased by HGI from RFI pursuant to subsection (iv) hereof,
if any, the Net Selling Price of a Licensed Product may not be less than
76% of the gross selling price of said Licensed Product. If a Licensed
Product is leased, sold, used or to otherwise disposed of on terms not
involving a bona fide arm's length sale to an unaffiliated third party, then
the Net Selling Price for such transactions shall be deemed to be the Net
Selling Price as defined above for identical products sold to a nonaffiliated
customer nearest to the date of such lease, sale, use, or other disposition.
"Prior License Agreement" means the license agreement between RFI and
Hankuk Glass Industry Co., Ltd. (the former name of HGI) effective as of
July 4, 1990 which related to Light Valve Architectural Windows (as
defined in such Prior License Agreement).
"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 and the
like owned or controlled and provided by RFI, to the extent they exist, that
relate to Light Valve Film, Licensed Products and/or to the suspensions
used or usable for Licensed Products or Light Valve Film and that consist
of concepts invented or developed by RFI. Know-how of RFI's suppliers
and of RFI's other licensees and their sublicensees under licenses from RFI
shall not be considered Technical Information owned or controlled by RFI. <PAGE>
Schedule C
(As of February 28, 1997)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR
LIGHT VALVE FILM
Permitted
Name of Customer Licensed Application Territory
Research Frontiers Incorporated All applications Worldwide
Hankuk Glass Industries Inc. As set forth in Section 5(a) Worldwide
of this License Agreement
Glaverbel, SA Architectural windows, Worldwide
automotive transportation
vehicle windows, sun visors
and rear-view mirrors
[INFORMATION REGARDING OTHER AUTHORIZED USERS WILL BE PROVIDED BY
RFI TO HGI
FROM TIME TO TIME IN THE FUTURE]<PAGE>
[EXHIBIT 10.14- 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.]
THIS AGREEMENT effective as of August 8, 1997 by and
between RESEARCH FRONTIERS INCORPORATED, a Delaware
corporation, having a place of business at 240 Crossways Park Drive,
Woodbury, New York, 11797-2033 ("LICENSOR"); and ORCOLITE, a
unit of Monsanto Company, a Delaware corporation, having a place of
business at 16016 Montoya Street, Azusa, California 91702 (hereinafter
called "LICENSEE"). All definitions not otherwise defined in the body of
this Agreement shall have the meaning ascribed to them in Schedule B
hereto. The "Effective Date" of this Agreement is the date set forth above
which date shall be 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.
W I T N E S S E T H:
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to Licensed
Products 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 desires to acquire the rights and licenses
granted herein to permit LICENSEE to do so;
NOW, THEREFORE, in consideration of the mutual undertakings
and covenants herein contained the parties agree as follows:
1. Documentation Supplied by LICENSOR. Within thirty
calendar days after the Effective Date of this Agreement, LICENSOR shall
furnish LICENSEE with all Technical Information owned or controlled by
LICENSOR, which is reasonably necessary or desirable, in LICENSOR's
sole discretion, in order for LICENSEE to manufacture Licensed Products.
Such Technical Information, which relates to experimental products, shall
include, without limitation thereto (1) a document entitled Handbook of
Technical Information Relating to Variable Density Optical Devices
Incorporating a Suspension and (2) photocopies of all U.S. Patents and
patent applications relating to Light Valves and Licensed Products owned
or controlled by LICENSOR as of the Effective Date of this Agreement.
LICENSOR shall not be obligated hereunder to furnish copies of
LICENSOR's foreign patents and patent applications, but will furnish a list
thereof in Schedule A hereto.
2. Training by LICENSOR. LICENSEE's technically skilled
personnel designated by LICENSEE (with travel and living expenses paid
by LICENSEE) shall make one or more visits for training and to inspect
LICENSOR's research and development facilities relating to Licensed
Products. The visits of employees of LICENSEE to LICENSOR's facility
shall be carried out within the six-month period commencing with the
Effective Date of this Agreement, and shall not exceed 200 man-hours
during such period. To assist LICENSEE's employees while they are at
LICENSOR's facility, LICENSOR shall provide up to 100 man-hours
assistance during such period at no cost to LICENSEE. Upon request by
LICENSEE during the term of this Agreement, if and when mutually
convenient to LICENSOR and LICENSEE, LICENSOR shall supply
LICENSEE with small quantities of particles, suspension and other
materials for experimental use only by LICENSEE for the work being
performed by LICENSEE to develop Licensed Products, and shall charge
LICENSEE $750 per man/day plus the cost of any materials used in
making such particles, suspension, or other materials, plus the cost of
shipping such suspension to LICENSEE. 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 by LICENSOR to LICENSEE pursuant to
this Agreement. 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.
3. Confidential Information. (a) LICENSEE agrees for itself and
its employees and agents that for twenty (20) years from the 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
on a non-confidential basis prior to the Effective Date of this Agreement
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 similar restrictions
and without breach of any agreement. It is understood and agreed that
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. LICENSEE agrees that for the period of time
during which LICENSEE is obligated to keep Technical Information
confidential hereunder, LICENSEE will not make, use, sell, lease or
otherwise dispose of products using or directly or indirectly derived from
Light Valves or Licensed Products 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 are independently
developed by a third party other than LICENSOR or LICENSEE or their
licensees, sublicensees, or any of their affiliates, and which is not in any
way directly or indirectly derived from any Technical Information of
LICENSOR or LICENSEE or their licensees, sublicensees, or any of their
affiliates. 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 disclose Technical
Information of LICENSOR to a manufacturing subcontractor; provided,
however, that LICENSEE shall only disclose such Technical Information
as is strictly necessary to enable said subcontractor to perform its
manufacturing task, and provided that prior to disclosing any Technical
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 3 hereof to the same extent as LICENSEE.
LICENSEE shall furnish a copy of said secrecy agreement to LICENSOR
prior to disclosing Technical Information to said subcontractor.
4. Development and Sale of Licensed Products
(a) Licensed Products License. During the term of this
Agreement LICENSOR hereby grants LICENSEE an exclusive right
(subject to a reservation by LICENSOR of nonexclusive rights to
manufacture and use, but not directly or indirectly sell, Licensed Products,
only for the purposes of performing research, development and for
demonstrations and publicity) including the right to grant non-exclusive
sublicenses to any wholly-owned and controlled subsidiary of LICENSEE
or Monsanto Company whose obligations LICENSEE hereby guarantees,
and which acknowledges to LICENSOR in writing prior to doing so that
it wishes to become a sublicensee hereunder and agrees to be bound by the
terms and conditions of this Agreement) to use (a) all of the Technical
Information 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, lease, use, sell, advertise,
promote and distribute Licensed Products throughout the world under any
trademark, trade name or service mark of LICENSEE. All sublicenses shall
(i) be on bona fide arm's length terms, (ii) be granted for only monetary
consideration, (iii) be non-exclusive, (iv) shall terminate with the
termination of the rights and licenses granted to LICENSEE under Section
4(a) hereof, and be otherwise limited in accordance with the limitations and
restrictions which are imposed on the rights and licenses granted to
LICENSEE hereunder, (v) contain confidentiality provisions no less
protective than those contained in Section 3 hereof, and (vi) 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.
(b) Payments.
(1) Royalties on Net Sales. During the term of this Agreement,
LICENSEE agrees to pay LICENSOR an earned royalty which shall be
seven percent (7%) of the Net Selling Price of Licensed Products which
embody, or the manufacture of which utilizes, any of the rights granted
under Section 4(a) 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 subsection
4(b)(1) shall be made on a quarterly basis and made within 45 days after
the end of the calendar quarter in which such Licensed Products were sold,
leased, used or otherwise disposed of by or for LICENSEE or a permitted
sublicensee hereunder. Each royalty payment shall be in U.S. dollars and
shall be accompanied by a statement by LICENSEE showing in reasonable
detail the amount of Licensed Products sold, used, leased or otherwise
disposed of by or for LICENSEE and its sublicensees during the preceding
quarter, any deductions taken or credits applied, and the currency exchange
rate used to report sales made in currencies other than U.S. dollars.
LICENSEE shall use the exchange rates for buying U.S. dollars in effect
on the last day of each quarter, as specified in The New York Times. The
first such statement shall cover the period from the Effective Date of this
Agreement to the end of the first calendar quarter in which a Licensed
Product is sold, used, leased or otherwise disposed of by or for LICENSEE
or its sublicensees.
(2) Minimum Royalties - Except as otherwise specifically
provided for in Section 4(b)(3), during the term of this Agreement
LICENSEE agrees to pay LICENSOR 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]
From January 1 to December 31 of each license year thereafter $2,000,000
The initial payment under this Section 4(b)(2) shall be paid to LICENSOR
within 10 days of the Effective Date of this Agreement, and each
subsequent payment to LICENSOR shall be made on or before January 31
of each license year commencing January 1, 1999.
(3) Alternative Minimum Royalties - If at any time, the rights and
licenses granted under Section 4(a) are converted by LICENSOR or
LICENSEE pursuant to Section 12(c) hereof to become non-exclusive
rights and licenses, the minimum annual royalties payable with respect to
each calendar year in which such rights and licenses are non-exclusive
shall be reduced to [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission].
(c) Sales, Use and Returns. Licensed Products shall be considered
as sold, leased or used and royalties shall accrue on the earlier of when
such Licensed Products are billed out, or when delivered, shipped or
mailed to the customer. If as a result of a price reduction or a return of
Licensed Products previously sold, a credit or refund to a customer is given
on part or all of the sale price of such Licensed Products, a credit shall be
allowed against royalties accruing thereafter under this Agreement equal
to the royalty paid on that part of the sales price so credited or refunded.
(d) [Confidential Information Omitted and filed separately with
the Securities and Exchange Commission]
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) may
audit such records, files and books of accounts to determine the accuracy
of the statements given by LICENSEE pursuant to Section 4(b)(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.
6. Method of Payment. 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, 1064 Old
Country Road, Plainview, New York 11803, Account No.: 210-007702,
ABA Wire Code No.: 021 000 021, or to such other account or place, as
LICENSOR may specify in a notice to LICENSEE.
7. Laws and Regulations. LICENSEE agrees that it shall be
solely responsible for complying with all laws and regulations affecting the
manufacture, use and sale or other disposition of Licensed Products by
LICENSEE and its sublicensees, and for obtaining all approvals necessary
from governmental agencies and other entities. LICENSEE agrees to
maintain a file of all such approvals and to send LICENSOR a copy of all
such approvals (including English translations thereof in the case of
approvals required by any foreign country) within 10 business days of any
written request for such copies by LICENSOR.
8. Insurance; Indemnification. LICENSEE shall maintain at all
times ample product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement. 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 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. If
any claim, action or proceeding is made or brought with respect to which
indemnification may be sought by an Indemnified Party from an
Indemnifying Party, the Indemnifying Party shall promptly notify the
Indemnifying Party in writing (but the failure to give such notice shall not
effect the Indemnifying Party's obligations hereunder or otherwise, unless
and only to the extent that the Indemnifying Party demonstrates that the
defense of such action or proceeding was materially prejudiced by such
failure) and the Indemnifying Party shall assume the defense thereof,
except that the Indemnifying Party may not assume any such defense
where any patent or other intellectual property right of LICENSOR is or
may be challenged or contested. Any inspection of LICENSEE's
operations 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.
9. Purchase of Materials and Components from Others. By
virtue of the disclosure of Technical Information and training provided
from time to time by LICENSOR to LICENSEE and to its other licensees,
and each of their sublicensees and affiliates, any component of a Light
Valve, including, without limitation, suspensions, films, polymers and
particles (each, a "Component"), which LICENSEE or its sublicensees
makes, has made for it, or purchases from any third party shall be deemed
to have been manufactured at least in part using the Technical Information
provided by LICENSOR. LICENSEE and its sublicensees each hereby
agrees that (i) all Components shall be used only in strict accordance with
the provisions of this Agreement, and that such Components may not be
used for any other purpose or resold by LICENSEE or its sublicensees
except as specifically permitted by the license granted in Section 4(a)
hereof as an integral part of a Licensed Product, and (ii) LICENSEE and
its sublicensees will only look to the manufacturer or supplier of such
Component and not to LICENSOR or its affiliates for any claims,
warranty, or liability relating to such Component.
10. Improvements and Modifications. If LICENSOR makes any
improvements or modifications which are invented or developed by or on
behalf of LICENSOR after the Effective Date of this Agreement and on or
before [Confidential Information Omitted and filed separately with the
Securities and Exchange Commission], and which relate in any way to or
are useful in the design, operation, manufacture and assembly of Licensed
Products, such improvements and modifications shall be automatically
included, for Licensed Products only, in the rights and licenses granted
pursuant to Section 4(a), and any patents and/or patent applications
relating thereto shall automatically be added to Schedule A hereof. Any
other 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. During the
term of this Agreement each of the parties hereto agrees to inform the other
in writing on a non-confidential basis, at least as frequently as once a year
in January of each calendar year, if any significant improvements or
modifications have been made relating to the subject matter of this
Agreement, and as to the general nature of any such improvements and
modifications. Subject to the first sentence of this Section 10, 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. In
addition to 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. Any information disclosed by LICENSOR hereunder will
be considered Technical Information which LICENSEE shall be obligated
to keep confidential pursuant to Section 3 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. If this Agreement is terminated for any
reason without LICENSEE having successfully commercialized Licensed
Products, LICENSEE hereby grants to LICENSOR as of such termination
date, a nonexclusive, royalty-free, irrevocable, worldwide license with the
right to grant sublicenses to others to utilize all technical and other
information which is then in the possession of LICENSOR heretofore or
hereafter developed or invented by or on behalf of LICENSEE and/or its
sublicensees, subcontractors, or agents hereunder relating to, or usable in
connection with, Light Valves or Licensed Products. 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 rights to LICENSOR such as, by
way of example, confirmations or instruments of conveyance or
assignment.
11. 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. If so designated and if
legally possible to do so, LICENSOR agrees to promptly file, prosecute
and maintain such applications and resulting patents, and LICENSEE shall
pay to LICENSOR the complete cost, including reasonable attorney's fees,
to file, prosecute and maintain any such patent application and resulting
patents.
12. Term. (a) 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 3 hereof. During such period, LICENSEE shall
continue to pay royalties under Section 4(b).
(b) LICENSEE may terminate this Agreement effective as of
December 31, 1998 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 30 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.
(c) LICENSEE may elect, by providing LICENSOR with written
notice of such election, to convert, effective as of January 1, 2003 or as of
any anniversary thereof, the rights and licenses granted under Section 4(a)
hereof to be non-exclusive rights and licenses. Such notice shall be made
in writing and shall be given between 30 and 90 days prior to the effective
date for which such conversion is to be effective. LICENSOR may
convert, effective as of January 1, 2003 or as of any anniversary thereof,
the rights and licenses granted under Section 4(a) hereof to be non-
exclusive rights and licenses, by at least 30 days' prior notice by
LICENSOR to LICENSEE if LICENSEE has not reported to LICENSOR
pursuant to Section 4(b)(1) hereof that for the 12-month period ending
June 30, 2002 that the Net Selling Price of Licensed Products was at least
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission].
(d) LICENSOR may terminate this Agreement at any time upon
30 days notice if LICENSEE shall at any time breach any material term of
this Agreement, including, without limitation, a default in the payment of
any monies due in accordance with this Agreement and such breach shall
not be cured within such 30-day period or repeatedly provide inaccurate
reports hereunder.
13. 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, 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. 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 2, 3,
5, 7, 8, 9, 10, 13, 17 and the reporting requirements of Section 4(b)(1)
hereof shall survive any termination of this Agreement.
14. Trademarks. All trademarks or service marks that either
party may adopt and use for Light Valves 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 other than the right to inform others that the
adopting party has produced products incorporating Light Valves under
such mark or marks.
15. Rights Cumulative; Waivers. To the extent permitted by law,
the parties' rights and remedies under this Agreement shall be cumulative
and not exclusive remedies. Any party's exercise, failure to exercise or
delay in exercising any right or remedy at any time shall not prevent such
party from exercising any other right or remedy or exercising such right or
remedy at a later time.
16. Authority. LICENSOR warrants to LICENSEE that it has the
right to convey the rights and licenses granted by this Agreement. Each
party warrants to the other that it has the authority to enter into this
Agreement and to consummate the transactions contemplated hereby, and
that no consent from any third party, including any governmental agency,
is required.
17. Miscellaneous. 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. 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. Upon thirty days prior notice to 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. This Agreement shall be construed 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. No modification of this
Agreement shall be effective unless such modification or amendment shall
be in writing and signed by the parties; provided, however, that either party
may unilaterally waive in writing any provision imposing an obligation on
the other. All notices shall be effective upon receipt and shall be sent in
writing to a signatory of this Agreement at its address given above or to
any other address or person that the party may designate by notice. The
section headings of this Agreement are included herein for convenience
and shall not be considered in construing this Agreement. The parties may
sign this Agreement in any number of counterparts, each of which shall be
deemed an original, and all of which, when taken together, shall constitute
one and the same agreement. The foregoing contains all of the
understandings of the parties relating to this Agreement, and cancels and
supersedes all prior understandings and agreements between the parties
with respect thereto.
IN WITNESS WHEREOF, the parties hereto have caused this
Agreement to be executed on the date hereinafter set forth by their proper
officers duly authorized.
RESEARCH FRONTIERS INCORPORATED
By: /s/ Robert L. Saxe
Robert L. Saxe, President
Date: August 8, 1997
ORCOLITE
By: /s/ Paul Michaelson
Paul Michelson, President
Date: July 31, 1997<PAGE>
Schedule A
(As of June 30, 1997)
LIST OF UNITED STATES AND
FOREIGN PATENTS
AND PATENT APPLICATIONS
Patents in the United States Issued Date
4,164,365 Robert L. Saxe
"Light Valve for Controlling the
Transmission of Radiation Comprising
a Cell and a Stabilized Liquid Suspension" 8/14/79 8/10/98
4,270,841 Robert L. Saxe
"Light Valve Containing Suspension of
Perhalide of Alkaloid Acid Salt" 6/02/81 10/31/98
4,273,422 Robert L. Saxe
"Light Valve Containing Liquid
Suspension Including Polymer
Stabilizing System" 6/16/81 3/5/99
4,407,565 Robert L. Saxe
"Light Valve Suspension Containing
Fluorocarbon Liquid" 10/04/83 1/16/01
4,422,963 Robert I. Thompson et al
"Improved Light Polarizing Materials
and Suspension Thereof" 12/27/83 12/27/00
4,772,103 Robert L. Saxe
"Light Valve Containing an Improved
Suspension,and Liquids Therefor" 9/20/88 8/8/06
4,877,313 Robert L. Saxe et al
"Light Polarizing Materials and
Suspensions Thereof" (QA) 10/31/89 2/10/09
5,002,701 Robert L. Saxe
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 10/27/09
5,093,041 Joseph A. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 Paul Rosenberg
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 Robert L. Saxe
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92 10/31/06
5,279,773 Robert L. Saxe
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
5,325,220 Robert L. Saxe
"Light Valve With Low Emissivity
Coating As Electrode" (JDR-105) 6/28/94 3/9/13
5,463,491 Joseph A. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such Film" (JDR-101) 10/31/95 11/6/12
5,463,492 Joseph A. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" (JDR-102) 10/31/95 11/6/12
5,461,506 Joseph A. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same" (JDR-103) 10/24/95 5/11/13
5,467,217 Joseph A. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same" (JDR-104) 11/14/95 5/11/13
5,516,463 Joseph A. Check III et al
"Method of Making Light Polarizing
Particles" (JDR-106) 05/14/96 7/08/14<PAGE>
PENDING APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities and
Exchange Commission]
<PAGE>
Schedule B
DEFINITIONS
"Licensed Product" means a Light Valve (as defined below) used or intended for
use as, or as part of, eyewear (including sunglasses, prescription and non-
prescription eyeglasses, and sports goggles such as, but not limited to, ski
goggles). The term "Licensed Product" shall not include any other Light Valves
including, without limitation thereto, Light Valves used or intended for use as
or as part of (a) architectural windows, (b) windows for marine and submarine
vehicles, space craft and space-stations, (c) other kinds of windows for
transportation vehicles such as side windows,windshields, sunroofs, hatchback
windows, or rear windows, (d) other products used in transportation vehicles
such as sun visors and interior and exterior mirrors, or (e) in any other
non-window product such as but not limited to displays, mirrors, toys,or filters
for scientific instruments, lamps or contrast enhancement of displays. The term
"display" means any device for displaying letters, numbers, images or other
indicia, patterns or information.
"Light Valve" means a variable light transmission device comprising: a cell
including cell walls, containing or adapted to contain an activatable material
(which may be in the form of a film or suspension) such that a change in the
optical characteristics of the activatable material affects the characteristics
of light absorbed by, transmitted through and/or reflected from the cell; means
incorporated in or on the cell, or separate therefrom for applying an electric
or magnetic field to the activatable material within the cell; and coatings,
(including, but not limited to, electrodes), spacers, seals,electrical and/or
electronic components, and other elements incorporated in or on the cell. The
activatable material, which the cell contains or is adapted to contain,
includes in it solid suspended particles, which when subjected to a suitable
electric or magnetic field, orient to produce a change in the optical
characteristics of the activatable material.
The "Net Selling Price" of Licensed Products 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 Licensed
Products, as packed for shipment to the customer, reduced only by the applicable
proportions of the following if, and to the extent that, amounts in respect
thereof are reflected in such selling price: (i) normal trade discounts actually
allowed; (ii) sales, use or excise and added value taxes and custom duties
paid; (iii) if the genuine selling price is other than f.o.b. factory,
amounts paid for f.o.b. transportation of Licensed Products to the customer's
premises or place of installation or delivery; (iv) the cost to LICENSEE or its
sublicensees hereunder of any part or component included in Licensed Products
which is purchased directly from LICENSOR; (v) insurance costs and the costs of
packing material, boxes, cartons and crates required for shipping; provided,
however, that the Net Selling Price of a Licensed Product may not be less
than 90% of the gross selling price of said Licensed Product after all
deductions therefrom excluding materials purchased by LICENSEE from LICENSOR
pursuant to subsection (iv) hereof, if any. If a Licensed Product is leased,
sold, used or to otherwise disposed of on terms not involving a bona
fide arm's length sale to an unaffiliated third party, then the Net Selling
Price for such transactions shall be deemed to be the Net Selling Price as
defined above for identical products sold to a nonaffiliated customer nearest to
the date of such lease, sale, use, or other disposition. If a Licensed
Product is sold in combination with other products or as a part or component
of another product and a single selling price is billed for such combination
product, the Net Selling Price for the computation of royalties payable
hereunder on such Licensed Product shall be equal to the product of the
single selling price for such combination product (reduced as may be
permitted by subsections (i-v) above) times the actual cost of manufacturing
such Licensed Product divided by the actual cost of manufacturing such
combination product.
"Technical Information" means all useful information relating to apparatus,
methods, processes, practices, formulas, techniques, procedures, patterns,
ingredients, designs and the like including (by way of example) drawings,
written recitations of data, specifications, parts, lists, assembly procedures,
operating and maintenance manuals, test and other technical reports, know-how of
LICENSOR, and the like owned or controlled by LICENSOR, to the extent they
exist, that relate to Light Valves, Licensed Products and/or to the
suspensions used or usable for Licensed Products or Light Valves
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.
<TABLE> <S> <C>
<ARTICLE> 5
<LEGEND>
THIS SCHEDULE CONTAINS SUMMARY FINANCIAL INFORMATION EXTRACTED
FROM FINANCIAL STATEMENTS CONTAINED IN THE MOST RECENT QUARTERLY
REPORT ON FORM 10-Q OF RESEARCH FRONTIERS INCORPORATED FOR THE QUARTER
ENDING SEPTEMBER 30, 1997 AND IS QUALIFIED IN ITS ENTIRETY BY REFERENCE
TO SUCH FINANCIAL STATEMENTS.
</LEGEND>
<S> <C>
<PERIOD-TYPE> 9-MOS
<FISCAL-YEAR-END> DEC-31-1996
<PERIOD-END> SEP-30-1997
<CASH> 1,768,790
<SECURITIES> 4,199,800
<RECEIVABLES> 36,839
<ALLOWANCES> 0
<INVENTORY> 0
<CURRENT-ASSETS> 6,019,739
<PP&E> 189,002
<DEPRECIATION> 0
<TOTAL-ASSETS> 6,272,397
<CURRENT-LIABILITIES> 157,687
<BONDS> 0
0
0
<COMMON> 10,285,760
<OTHER-SE> 0
<TOTAL-LIABILITY-AND-EQUITY> 6,272,397
<SALES> 60,000
<TOTAL-REVENUES> 364,559
<CGS> 0
<TOTAL-COSTS> 2,448,365
<OTHER-EXPENSES> 0
<LOSS-PROVISION> 0
<INTEREST-EXPENSE> 0
<INCOME-PRETAX> (1,998,889)
<INCOME-TAX> 0
<INCOME-CONTINUING> 0
<DISCONTINUED> 0
<EXTRAORDINARY> 0
<CHANGES> 0
<NET-INCOME> (1,998,889)
<EPS-PRIMARY> (0.20)
<EPS-DILUTED> (0.20)
</TABLE>
