SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 10-K
ANNUAL REPORT PURSUANT TO SECTION 13 or 15(d) of
THE SECURITIES AND EXCHANGE ACT OF 1934
For the fiscal year ended December 31, 1999 Commission File Number 1-9399
RESEARCH FRONTIERS INCORPORATED
(Exact name of registrant as specified in its charter)
DELAWARE 11-2103466
(State or other jurisdiction of (I.R.S. Employer
incorporation or organization) Identification No.)
240 CROSSWAYS PARK DRIVE
WOODBURY, NEW YORK 11797-2033
(Address of principal executive offices) (Zip Code)
Registrant's telephone number, including area code (516) 364-1902
Securities registered pursuant to Section 12(b) of the Act:
Name of Exchange
Title of Class on Which Registered
None
Securities registered pursuant to Section 12(g) of the Act:
Common Stock, $0.0001 Par value
(Title of Class)
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 by check mark if disclosure of delinquent filers pursuant to Item 405
of Regulation S-K is not contained herein, and will not be contained, to the
best of registrant's knowledge, in definitive proxy or information statements
incorporated by reference in Part III of this Form 10-K or any amendment to this
Form 10-K. [X]
As of March 28, 2000 there were 12,097,121 shares of Research Frontiers
Incorporated common stock outstanding (of which 887,249 shares were held,
either directly or indirectly, by affiliates of the Company), and the aggregate
market value of the common shares (based upon the closing trading price of these
shares on NASDAQ on March 28, 2000) held by non-affiliates was approximately
$386,742,999. In making this computation, all shares known to be owned by
directors and executive officers of the Company and all shares known to be owned
by other persons holding in excess of 5% of the Company's common stock have been
deemed held by "affiliates" of the Company. Nothing herein shall prejudice the
right of the Company or any such person to deny that any such director,
executive officer, or stockholder is an "affiliate."
Exhibit Index at pages 16-19
Page 1 of 39
<PAGE>
PART I
ITEM 1. BUSINESS
General
Research Frontiers Incorporated ("Research Frontiers" or the
"Company") was incorporated in New York in 1965 and
reincorporated in Delaware in 1989. Research Frontiers'
business is to develop and license its suspended particle
technology for controlling the amount of light passing through a
device. Such suspended particle devices are often referred to as
"SPDs" or "light valves."
SPDs use microscopic light-absorbing particles that are either in
a liquid suspension or a film. The microscopic particles align
when an electrical voltage is applied. This permits light to pass
through the device, and allows the amount of light to be
controlled. The first light valve of this type was invented by Dr.
Edwin Land, founder of Polaroid Corporation, in the 1930s.
Since 1965, Research Frontiers has been actively working to
develop and license its own technology, which it protects using
patents, trade secrets and know- how. Although patent and trade
secret protection is not a guarantee of commercial success,
Research Frontiers currently has approximately 350 patents and
pending patent applications throughout the world protecting its
technology.
SPD technology may have wide commercial applications in
many types of products where variable light transmission is
desired, such as
o "smart" windows
o variable light transmission eyewear such as goggles and sunglasses
o self-dimmable automotive sunroofs, sunvisors and rear-view mirrors, and
o flat panel information displays for use in computers,televisions, telephones
and other electronic instruments.
Various licensees of Research Frontiers have developed
prototypes of smart window, automotive and eyewear products.
Also, prototypes of flat panel displays and self-dimming
automotive rear-view mirrors have also been developed. These
prototypes demonstrate the feasibility and operation of the
products they relate to, but they may need additional product
design, engineering or testing before commercial products are
introduced. Our licensees may consider the exact stage of
development, product introduction strategies and timetables,
and other plans to be proprietary or secret.
The following table summarizes Research Frontiers' existing
license and option agreements and lists the year these
agreements were entered into:
Licensee or Optionee Products Covered Territory
Dainippon Ink and SPD emulsions for other licensees (1999) Worldwide
Chemicals Incorporated
General Electric Company SPD film for other licensees and Worldwide
prospective licensees (1995)
Glaverbel, S.A. Automotive vehicle rear-view mirrors, Worldwide
transportation vehicle sunvisors, and (except
architectural and automotive windows (1996) Korea
for windows)
Global Mirror GmbH Rear-view mirrors and sunvisors (1999) Worldwide
Hankuk Glass Industries Inc. Broad range of SPD light control products Worldwide
including windows, flat panel displays,
automotive vehicle rear-view mirrors and
sunvisors (installed as original equipment
on Korean-made cars), and sunroofs; SPD film
for licensees and prospective licensees (1997)
Hitachi Chemical Co., Ltd. SPD emulsions and films for other Worldwide
licensees (1999)
Material Sciences Corp. Architectural and automotive windows, Worldwide
SPD film for other licensees, prospective
licensees and architectural and automotive
window companies (1997)
ThermoView Industries, Inc. Architectural windows (2000) Worldwide
(except Korea)
Vision-Ease Lens Azusa,Inc. Eyewear (1997) Worldwide
Saint Gobain Vitrage, S.A. Architectural Windows (option) (1994) Worldwide
(except Korea
and South America)
Licensees will pay Research Frontiers a 5-10% royalty on the
sale of licensed products, and may also be required to pay
Research Frontiers minimum annual royalties. Research
Frontiers' license agreements typically allow the licensee to
terminate the license after some period of time, and give
Research Frontiers only limited rights to terminate before the
license expires. Most licenses are non-exclusive and generally
last as long as our patents remain in effect. The license granted
to Hankuk Glass Industries is exclusive within Korea for certain
applications through December 2004. Vision-Ease's license for
eyewear is exclusive during the term of the license. Global
Mirror's license restricts new licenses from being granted in the
truck mirror original equipment market for a period of time if
certain sales milestones are met with respect to commercial
vehicles in Classes 5 through 8 with gross vehicle weights in
excess of 16,000 pounds. To our knowledge, five of our
licensees, Global Mirror, Hankuk Glass Industries, Vision-Ease,
ThermoView Industries and Material Sciences Corporation,
currently have active programs for developing SPD products.
Dainippon Ink and Chemicals and Hitachi Chemical are also
working to develop raw materials under their licenses for
incorporation into SPD film and end products. One or more
other licensees may become more active, and additional
companies may become licensees, if and when an SPD film
becomes available. To the extent that an inactive licensee's
license agreement is listed above, it is only done so as a matter
of completeness to reflect those companies who the Company
believes are permitted to use SPD technology, and does not
imply that these inactive licensees will produce products in the
future using SPD technology, or that their license agreement
permitting them to do so will remain in effect.
Although the Company believes based upon the status of
current negotiations that additional license agreements with
third parties will be entered into, there can be no assurance that
any such additional license agreements will be consummated, or
that any licensee of the Company will produce or sell
commercial products using the Company's technology.
The Company plans to continue to exploit its SPD light
valve technology by entering into additional license agreements
with end-product manufacturers such as manufacturers of flat
glass, flat panel displays, automotive products, and with other
interested companies who may wish to acquire rights to
manufacture and sell the Company's proprietary liquid
suspensions and films. The Company's plans also call for
further development of its SPD light valve technology and the
provision of additional technological assistance to its licensees
to develop commercially viable products. The Company cannot
predict when or if new license agreements will be entered into
or if commercial products will result from its existing or future
licenses because of the risks inherent in the developmental
process and because commercialization is dependent upon the
efforts of its licensees as well as on the continuing research and
development efforts of the Company. To date, no licensed
products have been sold under any of the Company's license
agreements.
On March 28, 2000, the Company had thirteen full-time
employees, six of whom are technical personnel, and the rest of
whom perform legal, marketing, investor relations, and
administrative functions. Of these employees, two have
obtained a doctorate in chemistry, one has a masters in
chemistry, two have extensive industrial experience in
electronics and electrical engineering, and one has majored in
physics. Three employees also have additional postgraduate
degrees in business administration. Also the Company's
suppliers and licensees have people on their teams with
advanced degrees in a number of areas relevant to the
commercial development of products using the Company's
technology. The success of the Company is dependent on,
among other things, the services of its senior management, the
loss of whose services could have a material adverse effect
upon the prospects of the Company.
The Company expects to compete against various
technologies that are currently being used commercially. In
particular, the Company expects to compete on the basis of the
performance characteristics of its display products with liquid
crystal displays ("LCDs"). An LCD is generally similar in
construction to an SPD display, but instead of a liquid or film
suspension, utilizes an organic material called a liquid crystal
which, although comprised of molecules that flow like a liquid,
has some of the characteristics of solid crystals. Like SPD
displays, LCDs are "passive" devices which do not generate
light, but merely reflect or modulate existing light. The market
for flat panel displays was estimated by others to have been
approximately $18.5 billion for 1999. The Company believes
that some of its licensees may begin to challenge liquid crystal
displays with SPDs for part of the flat panel display market
during the next several years.
The Company believes that its SPD light valves and related
technology have significant advantages over existing display
devices and related technology. In comparison to existing
twisted nematic type LCDs, the Company's SPD displays are
believed to have (i) higher contrast and brightness, (ii) a wider
angle of view, (iii) lower estimated production costs, (iv) a less
complex fabrication procedure, (v) the ability to function over a
wider temperature range, (vi) the ability to make displays
without using sheet polarizers or alignment layers, and (vii)
lower light loss and a corresponding reduction in backlighting
requirements. With respect to other types of displays which
emit their own light, such as light-emitting diodes (LEDs) and
cathode ray tubes (CRTs), the Company's SPD light valves
should have the advantages of lower power consumption and
make possible larger displays that are easier to read in bright
light.
The Company also believes that its SPD light valve
technology will have certain performance advantages over other
technologies for so-called "smart windows," windows which
electrically vary the amount of light passing through them, and
automatically self-dimmable automotive rear-view mirrors.
Variable light transmission technologies can be classified
into two basic types: "smart" technologies that can be controlled
electrically by the user either automatically or manually, and
passive technologies that can only react to ambient
environmental conditions. One type of passive variable light
transmission technology is photochromic technology; such
devices change their level of transparency in reaction to external
radiation. As compared to photochromic technology, the
Company's technology permits the user to adjust the amount of
light passing through the viewing area of the device rather than
merely reacting to external radiation. In addition, the reaction
time necessary to change from light to dark with SPDs can be
almost instantaneous, as compared to the much slower reaction
time for photochromic devices. Unlike SPD technology,
photochromic technology does not function well at the high end
of the temperature range in which smart windows are normally
expected to operate.
The second category of variable light transmission window
technology comprises user-controllable "smart" technologies:
These "smart" technologies include electrochromic technology,
liquid crystal technology, and the Company's SPD technology.
Electrochromic Technology: When compared to
electrochromic windows and rear-view mirrors, which use a
direct current voltage to alter the molecular structure of
electrochromic materials (which can be in the form of either a
liquid, gel or solid film) causing the material to darken, SPDs
have numerous potential performance, manufacturing and cost
advantages. In comparing the Company's SPD light valves to
electrochromic technologies, SPDs are expected to have some
or all of the following advantages: (i) faster response time, (ii)
lower estimated costs, (iii) more reliable performance over a
wider temperature range, (iv) capability of achieving darker off-
states, (v) lower current drain, (vi) higher estimated battery life
in applications where batteries are used, and (vii) no "iris
effect" (where light transmission changes first occur at the outer
edges of a window or mirror and then work their way toward
the center) when changing from clear to dark and back again.
Many companies with substantially greater resources than
Research Frontiers such as 3M, Asahi Glass, Pilkington, PPG
Industries, Libbey-Owens Ford and other large corporations are
pursuing projects in the electrochromic area. Pilkington has
reportedly introduced an electrochromic window in Germany
having an estimated installed cost of about $125 per square
foot.
Liquid Crystal Technology: To date, the main types of
liquid crystal smart windows have been produced by Taliq
Corp. (a subsidiary of Raychem Corp. which has since
discontinued its liquid crystal operations and licensed its
technology to others), Nippon Sheet Glass, Saint Gobain
Vitrage SA, Polytronix, Inc. and 3M (which has also reportedly
discontinued its liquid crystal film making operations). These
windows are very expensive (having an estimated installed cost
of about $85-100 per square foot), and only change from a
cloudy opaque milky-white to a hazy clear state, with no useful
intermediate states. As compared to liquid crystal windows,
SPD smart windows should be less expensive to produce, could
be viewed at wide angles without a light scattering haze effect
when activated, would operate over a wider temperature range,
and would permit an infinite number of intermediate states
between a transparent state with no visible haze to a dark blue
state.
LCDs and other types of displays, as well as
electrochromic self-dimmable rear-view mirrors, are already on
the market, whereas the performance and long-term reliability
of SPD light valves have not yet been fully ascertained. The
companies manufacturing LCD and other display devices, LCD
windows, and electrochromic self-dimmable rear-view mirrors,
have substantially greater financial resources and manufacturing
experience than the Company. There is no assurance that
comparable systems having the same advantages of the
Company's SPD light valves could not be developed by
competitors at a lower cost or that other products could not be
developed which would render the Company's products
difficult to market or technologically or otherwise obsolete.
In each of the last three fiscal years the Company has
devoted substantially all of its time to the development of one
class of products and therefore revenue analysis per class is not
provided herein.
The Company does not believe that future sales will be
seasonal in any material respect. Due to the nature of the
Company's business operations and the fact that the Company
is not presently a manufacturer, there is no backlog of orders for
the Company's products.
The Company believes that compliance with federal, state
and local provisions which have been enacted or adopted
regulating the discharge of materials into the environment, or
otherwise relating to the protection of the environment, will not
have a material effect upon the capital expenditures, earnings
and competitive position of the Company. The Company has no
material capital expenditures for environmental control facilities
planned for the remainder of its current fiscal year or its next
succeeding fiscal year.
Research and Development
As a result of the Company's research and development
efforts, the Company believes that its SPD light valves will be
usable in a number of commercial products. Such products may
include one or more of the following fields: "smart" windows,
variable light transmission eyewear such as sunglasses and
goggles, self-dimmable automotive sunroofs, sunvisors and
mirrors, and instruments and other information displays that use
digits, letters, graphic images, or other symbols to supply
information, including scientific instruments, aviation
instruments, automobile dashboard displays and, if certain
improvements can be made in various features of the Company's
SPD light valves, portable computer displays and flat panel
television displays. The Company believes that most of its
research and development efforts have applicability to products
that may incorporate the Company's technology. Although the
Company believes that the state of development of its technology
is sufficiently advanced that commercial products should be
producible hereafter by its licensees, such potential
commercialization is beyond the control of the Company. In
addition, the Company intends to continue its research and
development efforts for the foreseeable future to improve its SPD
light valve technology and thereby assist in the potential
commercialization of the Company's SPD light valve technology
by the Company's licensees.
The Company has devoted most of the resources it has
heretofore expended to research and development activities with
the goal of producing commercially viable light valves and
already has developed working prototypes of its SPD light valves
for several different applications including smart windows,
eyewear, mirrors and flat panel displays.
Research Frontiers' main goals in its research and development
are:
o developing wider ranges of light transmission and quicker switching speeds,
o developing different colored particles,
o reducing the voltage required to operate SPDs, and
o obtaining data and developing improved materials regarding environmental
stability and longevity.
Research Frontiers incurred about $2,313,000 (which includes the
purchase of patents), $1,647,000, and $1,831,000, during the
years ended December 31, 1999, 1998, and 1997, respectively, for
research and development. Research Frontiers plans to engage in
substantial continuing research and development activities.
Patents and Proprietary Information
The Company has 17 United States patents in force. Eight
United States patent applications are pending. The Company's
United States patents expire at various dates from 2000 through
2015. The Company has approximately 56 issued patents and a
substantial number of patent applications pending in foreign
countries. In addition, in June 1999 the Company acquired 74
patents and patent applications from its licensee, Glaverbel, SA,
which are in the process of being assigned to Research Frontiers.
The Company's foreign patents expire at various dates from 2000
through 2014. The Company believes that its SPD light valve
technology is adequately protected by its patent position and by its
proprietary technological know-how. However, the validity of the
Company's patents has never been contested in any litigation. To
a lesser extent, the Company relies on trade secrets and
nondisclosure agreements to protect its technology. The
Company generally requires any employee, consultant, or licensee
having access to its confidential information to execute an
agreement whereby such person agrees to keep such information
confidential.
Rights Plan
In February 1993, the Company's Board of Directors adopted
a Stockholders' Rights Plan and declared a dividend distribution
of one Right for each outstanding share of Company common
stock to stockholders of record at the close of business on April
12, 1993. If a person or group has acquired beneficial ownership
of, or commences a tender or exchange offer for, 20% or more of
the Company's common stock, unless redeemed by the
Company's Board of Directors, each Right entitles the holder
(other than the acquiring person) to purchase from the Company
$90 worth of common stock for $45. If the Company is merged
into, or 50% or more of its assets or earning power is sold to, the
acquiring company, the Rights will also enable the holder (other
than the acquiring person) to purchase $90 worth of common
stock of the acquiring company for $45. The Rights will expire at
the close of business on February 16, 2003, unless earlier
redeemed by the Company at a price of $.0000424 per Right. The
Rights are not exercisable during the time when they are
redeemable by the Company. The above description highlights
some of the features of the Company's Rights Plan and is not a
complete description of the Rights Plan. A more detailed
description and a copy of the Rights Plan is available from the
Company upon request.
ITEM 2. PROPERTIES
The Company currently occupies approximately 8,100 square
feet of space at a minimum annual rental of approximately
$134,000 (which rises over the term of the lease to approximately
$143,500) for its executive office and research facility at 240
Crossways Park Drive, Woodbury, New York 11797 under a lease
expiring January 31, 2004. The Company believes that its space,
including its laboratory facilities, is adequate for its present needs.
ITEM 3. LEGAL PROCEEDINGS
In a settlement agreement dated June 30, 1999, the Company
settled a declaratory judgment action brought on March 25, 1999
in the Supreme Court of the State of New York, County of
Nassau, by Jean Thompson in her individual capacity and as
Executrix of the estate of Robert I. Thompson, a former officer
and director of the Company. The action did not seek monetary
damages and essentially sought a declaration that certain
common stock of the Company securing loans made to Mr.
Thompson was not available as collateral to secure such loans.
Under the settlement agreement, among other things, the parties
agreed that Jean Thompson and the estate of Robert I. Thompson
would pay the $732,000 in loans made by the Company from
1993 to 1997 by paying the Company $345,000 in cash, and
delivering to the Company for cancellation 38,467 shares of
common stock and options to purchase 181,447 shares of
common stock. This payment and delivery of the shares and stock
options for cancellation were made in August 1999, resulting in
the payment in full of all outstanding loans.
ITEM 4. SUBMISSION OF MATTERS TO A VOTE OF SECURITY HOLDERS
None
PART II
ITEM 5.MARKET FOR THE REGISTRANT'S COMMON EQUITY AND RELATED
STOCKHOLDER MATTERS
(a) Market Information
(1) The Company's common stock is traded on the
NASDAQ National Market. As of March 28, 2000, there were
12,097,191 shares of common stock outstanding.
(2) The following table sets forth the range of the high and
low selling prices (as provided by the National Association of
Securities Dealers) of the Company's common stock for each
quarterly period within the past two fiscal years:
Quarter Ended Low High
March 31, 1998 6.5000 9.7500
June 30, 1998 5.6250 8.3750
September 30, 1998 5.4375 7.6250
December 31, 1998 5.7500 11.1250
March 31, 1999 6.7500 11.0000
June 30, 1999 6.8750 10.0000
September 30, 1999 9.0625 13.5625
December 31, 1999 8.5000 15.4375
These quotations may reflect inter-dealer prices, without
retail mark-up, mark-down, or commission, and may
not necessarily represent actual transactions.
(b) Approximate Number of Security Holders
As of March 28, 2000, there were 557 holders of record of
the Company's common stock. The Company estimates that
there are over 8,500 beneficial holders of the Company's common
stock.
(c) Dividends
The Company did not pay dividends on its common stock in
1999 and does not expect to pay any cash dividends in the
foreseeable future. There are no restrictions on the payment of
dividends.
ITEM 6. SELECTED FINANCIAL DATA
The following table sets forth selected data regarding the
Company's operating results and financial position. The data
should be read in conjunction with Management's Discussion and
Analysis of Financial Condition and Results of Operations and the
financial statements and notes thereto, all of which are contained
in this Annual Report on Form 10-K.
Year ended December 31,
1999 1998 1997 1996 1995
Statement of Operations Data:
Fee income $ 128,096 $ 108,735 $ 60,000 $ 50,000 $ 1,500
Operating expenses 1,934,917 1,631,179 1,884,038 1,226,410 1,226,691
Research and
development(1) 2,312,504 1,647,448 1,831,397 1,711,634 1,410,443
4,247,421 3,278,627 3,715,435 2,938,044 2,637,134
Operating loss (4,119,325) (3,169,892) (3,655,435) (2,888,044) (2,635,634)
Net investment
income (loss)(2) 386,303 460,572 425,990 413,206 (283,088)
Other income -- 91,379 -- -- --
Net loss (3,733,022) (2,617,941) (3,229,445) (2,474,838) (2,918,722)
Basic and diluted net
loss per common share (.34) (.24) (.32) (.25) (.32)
Dividends per share -- -- -- -- --
As of December 31,
1999 1998 1997 1996 1995
Balance Sheet Data:
Total current assets $9,695,137 $6,728,453 $ 9,728,285 $8,193,639 $9,871,002
Total assets 10,037,063 7,021,291 10,033,663 8,425,141 10,026,113
Long-term debt,includ- -- -- -- -- --
ing accrued interest
Total share-
holders'equity 9,507,736 6,740,489 9,621,979 8,216,847 9,783,060
(1) Research and development expenses for 1999 include $289,177
paid by the Company for 74 patents and patent applications
acquired from Glaverbel, SA.
(2) Net investment income (loss) for 1999, 1998, 1997, 1996 and
1995 includes $95,001, $50,968, $68,810, $211,360 and
$7,073, respectively, of interest income received from officers of
the Company upon payment of notes receivable, and $0, $0,
($6,382), $1,174,643, and ($268,100), respectively of unrealized
gain (loss) on investments. Prior to July 1997, the Company
classified its investments as trading securities which resulted in
the unrealized gains and losses recorded in the statement of
operations.
ITEM 7. MANAGEMENT'S DISCUSSION AND ANALYSIS OF
FINANCIAL CONDITION AND RESULTS OF OPERATIONS
Results of Operations
Year ended December 31, 1999 Compared to the Year ended December 31, 1998
The Company's fee income from licensing activities for 1999
was $128,096 as compared to fee income of $108,735 for 1998.
Certain license fees, which are paid to the Company in advance
of the accounting period in which they are earned resulting in
the recognition of deferred revenue for the current accounting
period, will be recognized as fee income in future periods.
Operating expenses increased by $303,738 for 1999 to
$1,934,917 from $1,631,179 for 1998. This increase was
primarily the result of increased compensation, professional
fees, insurance, rent, travel and stock listing expenses offset
by decreased public relations, depreciation, office and
consulting expenses.
Research and development expenditures (excluding the
purchase of patents described in the next paragraph) increased
by $375,879 to $2,023,327 for 1999 from $1,647,448 for 1998.
This increase was primarily the result of higher research-related
compensation and consulting expenses, offset by lower costs
for materials.
The increase in compensation expenses for both operating and
research and development activities as discussed above was
the result of the Company recording compensation expense in
connection with options granted, as more fully described in
note 9b to the accompanying financial statements. Total
non-cash compensation expense recognized during the fourth
quarter of 1999 in connection with these options was $671,052.
In June of 1999, the Company purchased 74 patents and patent
applications from Glaverbel S.A. covering various inventions
relating to SPD technology for which a lump-sum payment of
$289,177 was made. In accordance with the Company's
accounting policy, such amount was expensed.
The Company's net gain from its investing activities for 1999
was $291,302, as compared to a net gain from its investing
activities of $409,604 for 1998. This difference was primarily
due to a higher level of average investment balances in 1998
compared to the same period in 1999 as a result of the
Company receiving $5.0 million towards the end of 1997 in
connection with the issuance of the redeemable prepaid
warrant. In addition, during 1999 the Company recorded
$95,001 of interest income on notes receivable from one of its
officers which was paid through the delivery of shares of
common stock to the Company.
During 1998, the Company received $135,000 of key man life
insurance proceeds payable on the death of its former Executive
Vice President, Robert I. Thompson. This resulted in the
Company recording non-recurring other income of $91,379
during 1998 representing the difference between the amount
received by the Company and the cash surrender value of such
life insurance policy that was previously recorded on the
Company's balance sheet.
As a consequence of the factors discussed above, the
Company's net loss was $3,733,022 ($0.34 per share) for 1999
as compared to $2,617,941 ($0.24 per share) for 1998.
Year ended December 31, 1998 Compared to the Year ended December 31, 1997
The Company's fee income from licensing activities for
1998 was $108,735 as compared to $60,000 for 1997.
During1998, the Company also received $135,000 of key man
life insurance proceeds payable on the death of its former
Executive Vice President, Robert I. Thompson. This resulted in
the Company recording non-recurring other income of $91,379
during 1998 representing the difference between the amount
received by the Company and the cash surrender value of such
life insurance policy that was previously recorded on the
Company's balance sheet.
Operating expenses decreased by $252,859 to $1,631,179
for 1998 from $1,884,038 for 1997. This decrease was the
result of decreased expenses associated with the issuance of
warrants for services performed, consulting, travel expenses and
salaries, offset by increased insurance and depreciation
expenses. In addition, during 1997 the Company recorded non-
cash expenses associated with the exercise of certain stock
options, and one-time increased listing fees in connection with
the Company's initial listing on the Nasdaq National Market
System during 1997 which expenses did not recur in 1998.
Research and development expenditures decreased by
$183,949 to $1,647,448 for 1998 from $1,831,397 for 1997.
This decrease was primarily the result of decreased research-
related consulting and payroll expenses offset by higher costs
for materials, insurance and patent expenses.
The Company's net gain from its investing activities for
1998 increased to $409,604 from a net gain from its investing
activities of $357,180 for 1997. This difference was primarily a
result of increased interest income earned in 1998 due to higher
level average investment balances in 1998 compared to the
prior year as a result of the Company receiving $5.0 million
towards the end of 1997 in connection with the issuance of the
redeemable prepaid warrant.
As a consequence of the factors discussed above, the
Company's net loss decreased by $611,504 to $2,617,941
($0.24 per share) for the year ended December 31, 1998 as
compared to $3,229,445 ($0.32 per share) for the year ended
December 31, 1997.
Financial Condition, Liquidity and Capital Resources
During 1999, the Company's cash and cash equivalent
balance increased by $2,739,286 principally as a result of the
$5,805,424 of proceeds received, net of expenses, from the
issuance of common stock upon the exercise of options and
warrants, and the repayment in cash of notes receivable from
officers of $345,000, the proceeds of which have been invested
by the Company primarily in short-term U.S. Treasury money
market funds, offset by cash used to fund the Company's operating
activities of $2,642,346, and the purchase of 40,200 shares of
treasury stock for $345,837 (which shares were subsequently
retired). At December 31, 1999, the Company had working
capital of $9,165,810 and its shareholders' equity was $9,507,736.
On October 1, 1998, the Company announced that Ailouros
Ltd., a London-based institutional money management fund,
had committed to purchase up to $15 million worth of common
stock of Research Frontiers through December 31, 2001. This
commitment is in the form of a Class A Warrant issued to
Ailouros Ltd. which gives Research Frontiers the option in any
three-month period to deliver a put notice to Ailouros requiring
them to purchase an amount of common stock specified by
Research Frontiers at a price equal to the greater of (A) 92% of
the seven-day average trading price per share of common stock,
or (B) a minimum or "floor" price per share set by Research
Frontiers from time to time. The pricing was initially subject to
an overall cap of $15 per share, which cap has now been
eliminated by mutual agreement so that the Company may put
stock to Ailouros at selling prices in excess of $15 per share.
However, Research Frontiers is not required to sell any shares
under the agreement. Before the beginning of each of a series of
three-month periods specified by the Company, the Company
determines the amount of common stock that the Company
wishes to issue during such three-month period. The Company
also sets the minimum selling or "floor" price, which can be
reset by the Company in its sole discretion prior to the
beginning of any subsequent three-month period. Therefore, at
the beginning of each three-month period, the Company will
determine how much common stock, if any, is to be sold (the
amount of which can range from $0 to $1.5 million during such
three-month period), and the minimum selling price per share.
Because of increases in the Company's stock price since
Ailouros' original commitment, and the elimination of the $15
per share cap mentioned above, the Company would now be
able to raise more money without having to issue more shares
than were originally registered with the Securities and Exchange
Commission. Therefore, in March 2000, Ailouros agreed to
expand its commitment beyond the original $15 million, thereby
giving the Company the right to raise additional funds from
Ailouros so long as the Company does not have to issue more
shares than were originally registered with the Securities and
Exchange Commission.
During 1999, the Company granted 237,800 contingent
performance options to employees, which vest only if a certain
performance milestone in the price of the Company's common
stock is achieved during 2000. As the Company is required
to account for these options as a variable plan under APB
Opinion No. 25, compensation expense is recorded each period
from the date of grant through the vesting date based on the
quoted market price of the stock at the end of each period. The
non-cash compensation expense recognized during the fourth
quarter of 1999 in connection with these options was $671,052.
Based on the current market price of the Company's common
stock, the Company will likely incur a non-cash compensation
charge of approximately $3,000,000 during the quarter ended
March 31, 2000. The charges recorded as a result of the
issuance of these performance options are calculated based upon
changes in the Company's stock price as of the end of each
quarter, are non-cash accounting charges, and do not require the
Company to make any payment in cash or otherwise to the
option holder.
In December 1999, the Company's Board of Directors
approved a performance bonus plan which provides for a bonus
to be paid on July 1, 2000 and January 1, 2001 equal to 1% of
the increase, if any, in the Company's market value during the
first and second halves of 2000. Bonuses are capped at a
recipient's salary in the case of employees of the Company, and
are currently capped at $55,000 in the case of non-employee
directors of the Company.
In a settlement agreement dated June 30, 1999, the
Company settled a declaratory judgment action brought on
March 25, 1999 in the Supreme Court of the State of New York,
County of Nassau, by Jean Thompson in her individual capacity
and as Executrix of the estate of Robert I. Thompson, a former
officer and director of the Company. The action did not seek
monetary damages and essentially sought a declaration that
certain common stock of the Company securing loans made to
Mr. Thompson was not available as collateral to secure such
loans. Under the settlement agreement, among other things, the
parties agreed that Jean Thompson and the estate of Robert I.
Thompson would pay the $732,000 in loans made by the
Company from 1993 to 1997 by paying the Company $345,000
in cash, and delivering to the Company for cancellation 38,467
shares of common stock and options to purchase 181,447 shares
of common stock. This payment and delivery of the shares and
stock options for cancellation were made in August 1999,
resulting in the payment in full of all outstanding loans, and the
Company recording interest income on such loans of $95,001. It
is the Company's policy to record interest income on notes
receivable from officers as received.
The Company expects to use its cash and the proceeds
from maturities of its 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, 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 three to four years (without giving effect to any new
financing raised). 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.
Year 2000 Compliance
The Company believes that its internal computer systems
and applications are Year 2000 compliant, and has not
experienced any adverse impact as a result of Year 2000 issues
relating to its internal computer systems and applications, nor
as a result of any Year 2000 issues affecting any of its key
suppliers, vendors or other entities with which the Company
does business. The Company does not anticipate any significant
costs or future adverse impact on its business, results of
operations, or financial condition as a result of the Year 2000
issue.
Inflation
The Company does not believe that inflation has a
significant impact on its business.
New Accounting Pronouncement
The Financial Accounting Standards Board has issued
Statement No. 133 related to "Accounting for Derivative
Instruments and Hedging Activities" (Statement 133).
Statement 133 established accounting and reporting standards
for derivative instruments embedded in other contracts, and for
hedging activities. This statement (as amended by Statement
137) is effective for all fiscal quarters of all fiscal years
beginning after June 15, 2000. Management of the Company
does not believe that the implementation of Statement 133 (as
amended by Statement 137) will have a significant impact on its
financial position or results of operations. For each of the years
in the three-year period ended December 31, 1999 the Company
had no derivative instruments or hedging activities as defined by
Statement 133.
On December 3, 1999, the Securities and Exchange
Commission (SEC) issued Staff Accounting Bulletin No. 101 -
"Revenue Recognition in Financial Statements" (SAB No. 101).
SAB No. 101 provides the SEC staff's views on the recognition
of revenue including nonrefundable technology access fees
received by companies in connection with research
collaborations with third parties. SAB No. 101 states that in
certain circumstances the SEC staff believes that up-front fees,
even if nonrefundable, should be deferred and recognized
systematically over the term of the research arrangement. SAB
No. 101 requires registrants to adopt the accounting guidance
contained therein by no later than the first fiscal quarter of the
fiscal year beginning after December 15, 1999 (quarter ending
March 31, 2000 for the Company). Management of the
Company does not believe that applying the accounting
guidance of SAB No. 101 will have a material effect on its
financial position or results of operations.
Forward Looking Statements
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.
ITEM 7A. QUANTITATIVE AND QUALITATIVE DISCLOSURE ABOUT MARKET RISK
The Company invests available cash and cash equivalents
in short-term U.S. treasury securities with maturities that are
generally two years or less. Although the rate of interest paid on
such investments may fluctuate over time, each of the
Company's investments, other than in money market funds
whose interest yield varies, is made at a fixed interest rate over
the duration of the investment. Accordingly, the Company does
not believe it is materially exposed to changes in interest rates
as it holds these treasury securities until maturity.
The Company does not have any sales, purchases, assets or
liabilities determined in currencies other than the U.S. dollar,
and as such, is not subject to foreign currency exchange risk.
ITEM 8. FINANCIAL STATEMENTS AND SUPPLEMENTARY DATA
The financial statements listed in Item 14(a)(1) and (2) are
included in this Report beginning on page F-1.
ITEM 9. CHANGES IN AND DISAGREEMENTS WITH ACCOUNTANTS
ON ACCOUNTING AND FINANCIAL DISCLOSURE
None.
PART III
ITEM 10. DIRECTORS AND EXECUTIVE OFFICERS OF THE REGISTRANT
The information required by this Item 10 is incorporated by
reference to the Company's definitive Proxy Statement to be
filed with the Commission on or before April 30, 2000, in
connection with the Company's Annual Meeting of
Stockholders scheduled to be held on June 8, 2000.
ITEM 11. EXECUTIVE COMPENSATION
The information required by this Item 11 is incorporated by
reference to the Company's definitive Proxy Statement to be
filed with the Commission on or before April 30, 2000, in
connection with the Company's Annual Meeting of
Stockholders scheduled to be held on June 8, 2000.
Notwithstanding anything to the contrary set forth herein or in
any of the Company's past or future filings with the Securities
and Exchange Commission that might incorporate by reference
the Company's definitive Proxy Statement, in whole or in part,
the report of the compensation committee and the stock price
performance graph contained in such definitive Proxy Statement
shall not be incorporated by reference into this Annual Report
on Form 10-K or in any other such filings.
ITEM 12. SECURITY OWNERSHIP OF CERTAIN BENEFICIAL OWNERS AND
MANAGEMENT
The information required by this Item 12 is incorporated by
reference to the Company's definitive Proxy Statement to be
filed with the Commission on or before April 30, 2000, in
connection with the Company's Annual Meeting of
Stockholders scheduled to be held on June 8, 2000.
ITEM 13. CERTAIN RELATIONSHIPS AND RELATED TRANSACTIONS
The information required by this Item 13 is incorporated by
reference to the Company's definitive Proxy Statement to be
filed with the Commission on or before April 30, 2000, in
connection with the Company's Annual Meeting of
Stockholders scheduled to be held on June 8, 2000.
PART IV
ITEM 14. EXHIBITS, FINANCIAL STATEMENT SCHEDULES AND REPORTS ON FORM
8-K
(a)(1) and (2) Financial Statements and Financial Statement Schedules
The following financial statements of Research Frontiers
Incorporated, the related notes thereto, together with the report
thereon of KPMG LLP are filed under Item 8 of this Report.
Independent Auditors' Report . . . . . . . . . . . . . . . . . . . . F-1
Financial Statements:
Balance Sheets,
December 31, 1999 and 1998. . . . . . . . . . . . . . . . . F-2
Statements of Operations,
Years ended December 31, 1999, 1998 and 1997 . . . . . . . F-3
Statements of Shareholders' Equity,
Years ended December 31, 1999, 1998 and 1997 . . . . . . . F-4
Statements of Cash Flows,
Years ended December 31, 1999, 1998 and 1997 . . . . . . . F-5
Notes to Financial Statements. . . . . . . . . . . . . . . . . . . . F-6
All schedules are omitted because they are not applicable,
or not required, or because the required information is included
in the financial statements or notes thereto.
(a)(3) Exhibits Page
3.1 Restated Certificate of Incorporation of the Company.
Previously filed as Exhibit 3.1 to the Company's
Quarterly Report on Form 10-Q for the fiscal quarter
ended June 30, 1994, and incorporated herein by
reference.
3.2 Amended and Restated Bylaws of the Company.
Previously filed as an Exhibit to the Company's Annual
Report on Form 10-K for the fiscal year ended
December 31, 1993 and incorporated herein by
reference.
4.1 Form of Common Stock Certificate. Previously filed as
an Exhibit to the Company's Registration Statement on
Form S-18 (Reg. No. 33-5573NY), declared effective
by the Commission on July 8, 1986, and incorporated
herein by reference.
4.2 Rights Agreement dated as of February 16, 1993
between Research Frontiers Incorporated and
Continental Stock Transfer & Trust Company, as
Rights Agent, which includes as Exhibit A thereto the
Form of Rights Certificate. Previously filed as an
Exhibit to the Company's Registration Statement on
Form 8-A dated February 16, 1993, and incorporated
herein by reference.
4.3 Subscription Agreement between Research Frontiers
and Ailouros Ltd. dated as of October 1, 1998, and
related Class A Warrant and Class B Warrant between
Research Frontiers and Ailouros Ltd. dated as of
October 1, 1998. Previously filed as an Exhibit to the
Company's Registration Statement on Form S-3 (No.
333-65219) dated October 1, 1998, and incorporated
herein by reference.
10.1* Amended and Restated Employment Contract effective
January 1, 1989 between the Company and Robert L.
Saxe. Previously filed as an Exhibit to the Company's
Annual Report on Form 10-K for the fiscal year ended
December 31, 1993 and incorporated herein by
reference.
10.2* Amended and Restated 1992 Stock Option Plan.
Previously filed as Exhibit 4 to the Company's
Registration Statement on Form S-8 (Reg. No. 33-
86910) filed with the Commission on November 30,
1994, and incorporated herein by reference.
10.3* 1998 Stock Option Plan, as amended. Previously filed
as an Exhibit to the Company's Definitive Proxy
Statement dated April 30, 1998 filed with the
Commission on April 29, 1998, 1994, and incorporated
herein by reference.
10.4* Form of Stock Option Agreement between the
Company and recipients of stock options issued
pursuant to the Company's Stock Option Plans.
Previously filed as part of Exhibits 4.1, 4.2, and 4.3 to
the Company's Registration Statement on Form S-8
(Reg. No. 33-53030) filed with the Commission on
October 6, 1992, and incorporated herein by reference.
10.5 Lease Agreement dated November 7, 1986, between
the Company and Industrial & Research Associates Co.
Previously filed as an exhibit to the Company's Annual
Report on Form 10-K for the fiscal year ended
December 31, 1986 and incorporated herein by
reference.
10.5.1 First Amendment to Lease dated November 26, 1991
between the Company and Industrial and Research
Associates Co. Previously filed as an Exhibit to
Amendment No. 1 to the Company's Registration
Statement on Form S-1 (Reg. No. 33-43768) declared
effective by the Commission on December 17, 1991,
and incorporated herein by reference.
10.5.2 Second Amendment to Lease dated March 11, 1994
between the Company and Industrial and Research
Associates Co. Previously filed as an exhibit to the
Company's Annual Report on Form 10-K for the fiscal
year ended December 31, 1993 and incorporated
herein by reference.
10.5.3 Third Amendment to Lease dated July 14, 1998
between the Company and Industrial and Research
Associates Co. (filed herewith).
10.6 Option Agreement effective as of June 1, 1994 between
the Company and Saint-Gobain Vitrage International
SA (now known as Saint-Gobain Vitrage SA).
Previously filed as an Exhibit to the Company's
Current Report on Form 8-K dated June 9, 1994 and
incorporated herein by reference.
10.7 License Agreement effective as of August 2, 1995
between the Company and General Electric Company.
Previously filed as an Exhibit to the Company's
Current Report on Form 8-K dated August 2, 1995
with portions omitted pursuant to the Registrant's
request for confidential treatment and filed separately
with the Securities and Exchange Commission, and
incorporated herein by reference.
10.8 License Agreement effective as of April 29, 1996
between the Company and Glaverbel, S.A. Previously
filed as an Exhibit to the Company's Quarterly Report
on Form 10-Q for the fiscal quarter ended March 31,
1996 with portions omitted pursuant to the Registrant's
request for confidential treatment and filed separately
with the Securities and Exchange Commission, and
incorporated herein by reference.
10.9 License Agreement effective as of January 18, 1997
between the Company and Material Sciences
Corporation. Previously filed as an Exhibit to the
Company's Current Report on Form 8-K dated March
3, 1997 with portions omitted pursuant to the
Registrant's request for confidential treatment and filed
separately with the Securities and Exchange
Commission, and incorporated herein by reference.
10.10 License Agreement effective as of March 31, 1997
between the Company and Hankuk Glass Industries,
Inc. Previously filed as an Exhibit to the Company's
Quarterly Report on Form 10-Q for the fiscal quarter
ended September 30, 1997 with portions omitted
pursuant to the Registrant's request for confidential
treatment and filed separately with the Securities and
Exchange Commission, and incorporated herein by
reference.
10.11 License Agreement effective as of August 8, 1997
between the Company and Orcolite, a Unit of
Monsanto Company. Previously filed as an Exhibit to
the Company's Quarterly Report on Form 10-Q for the
fiscal quarter ended September 30, 1997 with portions
omitted pursuant to the Registrant's request for
confidential treatment and filed separately with the
Securities and Exchange Commission, and
incorporated herein by reference.
10.12 License Agreement effective as of June 25, 1999
between the Company and Dainippon Ink and
Chemicals, Incorporated. Previously filed as an
Exhibit to the Company's Quarterly Report on Form
10-Q for the fiscal quarter ended June 30, 1999 with
portions omitted pursuant to the Registrant's request for
confidential treatment and filed separately with the
Securities and Exchange Commission, and
incorporated herein by reference.
10.13 License Agreement effective as of August 9, 1999
between the Company and Hitachi Chemical Co., Ltd.
Previously filed as an Exhibit to the Company's
Quarterly Report on Form 10-Q for the fiscal quarter
ended September 30, 1999 with portions omitted
pursuant to the Registrant's request for confidential
treatment and filed separately with the Securities and
Exchange Commission, and incorporated herein by
reference.
10.14 License Agreement effective as of December 3, 1999
between the Company and Global Mirror GmbH & Co.
KG. 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.
10.15 License Agreement effective as of December 13, 1999
between the Company and Global Mirror GmbH & Co.
KG. 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.
10.16 License Agreement effective as of March 21, 2000
between the Company and ThermoView 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.
21 Subsidiaries of the Registrant - None
23 Consent of KPMG LLP - Filed herewith.
* Executive Compensation Plan or Arrangement.
(b) Reports on Form 8-K:
No reports on Form 8-K have been filed by the Registrant
during the last quarter of the period covered by this report.
SIGNATURES
Pursuant to the requirements of Section 13 or 15(d) of the Securities
Exchange Act of 1934, the Registrant has duly caused this report to be
signed on its behalf by the undersigned, thereunto duly authorized.
RESEARCH FRONTIERS INCORPORATED
By: /s/Robert L. Saxe
Robert L. Saxe, President and Treasurer
(Principal Executive, Financial, and Accounting Officer)
Dated: March 28, 2000
Pursuant to the requirements of the Securities Exchange Act of 1934,
this report has been signed below by the following persons on behalf of the
registrant and in the capacities and on the dates indicated:
Signature Position Date
/s/Robert M. Budin Director March 28, 2000
Robert M. Budin
/s/Bernard D. Gold Director March 28, 2000
Bernard D. Gold
/s/Joseph M. Harary Director March 28, 2000
Joseph M. Harary
/s/Robert L. Saxe Director, President March 28, 2000
Robert L. Saxe and Treasurer
Independent Auditors' Report
The Shareholders and Board of Directors
Research Frontiers Incorporated:
We have audited the accompanying balance sheets of Research Frontiers
Incorporated as of December 31, 1999 and 1998, and the related statements
of operations, shareholders' equity and cash flows for each of the years in
the three-year period ended December 31, 1999. These financial
statements are the responsibility of the Company's management. Our
responsibility is to express an opinion on these financial statements based
on our audits.
We conducted our audits in accordance with generally accepted auditing
standards. Those standards require that we plan and perform the audit to
obtain reasonable assurance about whether the financial statements are free
of material misstatement. An audit includes examining, on a test basis,
evidence supporting the amounts and disclosures in the financial
statements. An audit also includes assessing the accounting principles used
and significant estimates made by management, as well as evaluating the
overall financial statement presentation. We believe that our audits provide
a reasonable basis for our opinion.
In our opinion, the financial statements referred to above present fairly, in
all material respects, the financial position of Research Frontiers
Incorporated at December 31, 1999 and 1998 and the results of its
operations and cash flows for each of the years in the three-year period
ended December 31, 1999 in conformity with generally accepted
accounting principles.
/s/ KPMG LLP
Melville, New York
March 27, 2000
RESEARCH FRONTIERS INCORPORATED
Balance Sheets
December 31, 1999 and 1998
Assets 1999 1998
Current assets:
Cash and cash equivalents $ 8,142,569 5,403,283
Marketable investment securities held-to-maturity 1,246,083 1,189,386
Receivable from warrant exercise pending settlement 222,549 --
Salary advance to officer 66,445 105,567
Prepaid expenses and other current assets 17,491 30,217
Total current assets 9,695,137 6,728,453
Fixed assets, net 319,321 269,084
Deposits and other assets 22,605 23,754
Total assets $ 10,037,063 7,021,291
Liabilities and Shareholders' Equity
Current liabilities:
Accounts payable $ 158,702 115,418
Deferred revenue 46,154 56,250
Accrued expenses 324,471 109,134
Total liabilities 529,327 280,802
Shareholders' equity:
Common stock, par value $0.0001 per share; authorized
100,000,000 shares,issued and outstanding 11,523,900
and 10,929,041 shares for 1999 and 1998 1,152 1,093
Additional paid-in capital 39,750,276 33,982,066
Accumulated deficit (30,090,731) (26,357,709)
9,660,697 7,625,450
Notes receivable from officers (152,961) (884,961)
Total shareholders' equity 9,507,736 6,740,489
Commitments and contingency
Total liabilities and shareholders' equity $ 10,037,063 7,021,291
See accompanying notes to financial statements.
RESEARCH FRONTIERS INCORPORATED
Statements of Operations
Years ended December 31, 1999, 1998 and 1997
1999 1998 1997
Fee income $ 128,096 108,735 60,000
Operating expenses 1,934,917 1,631,179 1,884,038
Purchase of patents 289,177 -- --
Research and development 2,023,327 1,647,448 1,831,397
4,247,421 3,278,627 3,715,435
Operating loss (4,119,325) (3,169,892) (3,655,435)
Net investment income 291,302 409,604 357,180
Other income -- 91,379 --
Interest income on notes
receivable from officers 95,001 50,968 68,810
Net loss $ (3,733,022) (2,617,941) (3,229,445)
Basic and diluted net loss
per common share $ (0.34) (0.24) (0.32)
Weighted average number of
common shares outstanding 11,100,196 10,878,141 10,201,961
See accompanying notes to financial statements.
RESEARCH FRONTIERS INCORPORATED
Statements of Shareholders' Equity
Years ended December 31, 1999, 1998 and 1997
<TABLE>
<CAPTION>
Common Stock Additional Accumulated Treasury Notes
Shares Amount Paid in Capital Deficit Stock, at Cost Receivable
Total
<S> <C> <C> <C> <C> <C> <C> <C>
Balance, December 31, 1996 10,066,897 $ 1,007 29,355,663 (20,510,323) -- (629,500) 8,216,847
Issuance of common stock 352,298 35 1,411,296 -- -- -- 1,411,331
Purchase of treasury stock -- -- -- -- (126,637) -- (126,637)
Repayment of note by officer -- -- -- -- (560,629) 592,353 31,724
Retirement of treasury stock (77,000) (8) (687,258) -- 687,266 -- --
Net loss -- -- -- (3,229,445) -- -- (3,229,445)
Loans to officers -- -- -- -- -- (1,390,000)(1,390,000)
Net proceeds from issuance of
redeemable prepaid warrants -- -- 4,626,985 -- -- -- 4,626,985
Issuance of warrants
for services performed -- -- 81,174 -- -- -- 81,174
Balance, December 31, 1997 10,342,195 $ 1,034 34,787,860 (23,739,768) -- (1,427,147) 9,621,979
Issuance of common stock 759,162 76 450,400 -- -- -- 450,476
Purchase of treasury stock -- -- -- -- (747,716) -- (747,716)
Repayment of note by officer -- -- -- -- (545,553) 542,186 (3,367)
Retirement of treasury stock (172,316) (17) (1,293,252) -- 1,293,269 -- --
Net loss -- -- -- (2,617,941) -- -- (2,617,941)
Proceeds from the
issuance of warrants -- -- 10,000 -- -- -- 10,000
Issuance of warrants
for services performed -- -- 27,058 -- -- -- 27,058
Balance, December 31, 1998 10,929,041 1,093 33,982,066 (26,357,709) -- (884,961) 6,740,489
Issuance of common stock 673,112 67 5,887,838 -- -- -- 5,887,905
Purchase of treasury stock -- -- -- -- (345,837) -- (345,837)
Repayment of note by officer -- -- -- -- (482,001) 732,000 249,999
Retirement of treasury stock (78,667) (8) (827,830) -- 827,838 -- --
Net loss -- -- -- (3,733,022) -- -- (3,733,022)
Issuance of performance options -- -- 671,052 -- -- -- 671,052
Issuance of stock and warrants
for services performed 414 -- 37,150 -- -- -- 37,150
Balance, December 31, 1999 11,523,900 $ 1,152 39,750,276 (30,090,731) -- (152,961) 9,507,736
</TABLE>
See accompanying notes to financial statements.
RESEARCH FRONTIERS INCORPORATED
Statements of Cash Flows
Years ended December 31, 1999, 1998 and 1997
1999 1998 1997
Cash flows from operating activities:
Net loss $ (3,733,022) (2,617,941) (3,229,445)
Adjustments to reconcile net loss to net cash
provided by (used in) operating activities:
Depreciation and amortization 93,472 96,387 84,486
Interest income on officer notes receivable (95,001) (43,367) (8,086)
Unrealized loss on investments -- -- 6,382
Cashless exercise of options and warrants 82,481 -- 133,555
Expense relating to issuance of
performance options 671,052 -- --
Expense relating to issuance of stock and
warrants for services performed 37,150 27,058 81,174
Changes in assets and liabilities:
Salary advance to officer 39,122 (105,567) --
Prepaid expenses and other current assets 12,726 41,197 12,902
Deposits and other assets 1,149 53,622 (13,720)
Deferred revenue (10,096) 56,250 --
Accounts payable and accrued expenses 258,621 (187,132) 250,360
Investments-trading securities -- -- 2,985,170
Net cash provided by (used in)
operating activities (2,642,346) (2,679,493) 302,778
Cash flows from investing activities:
Purchases of held-to-maturity
treasury securities (2,461,878) (5,775,715) (9,473,722)
Proceeds from maturities of held-to-maturity
treasury securities 2,405,181 12,085,513 6,634,350
Purchases of fixed assets (143,709) (137,469) (144,642)
Net cash provided by (used in)
investing activities (200,406) 6,172,329 (2,984,014)
Cash flows from financing activities:
Loans to officers -- -- (1,390,000)
Repayment of principal on officer's loans 345,000 40,000 39,810
Proceeds from issuances of common
stock and warrants 5,582,875 460,476 1,230,806
Proceeds from issuance of redeemable
prepaid warrant, net -- -- 4,626,985
Purchase of treasury stock (345,837) (747,716) (126,637)
Net cash provided by (used in)
financing activities 5,582,038 (247,240) 4,380,964
Net increase in cash and cash equivalents 2,739,286 3,245,596 1,699,728
Cash and cash equivalents at beginning of year5,403,283 2,157,687 457,959
Cash and cash equivalents at end of year $8,142,569 5,403,283 2,157,687
See accompanying notes to financial statements.
RESEARCH FRONTIERS INCORPORATED
Notes to Financial Statements
December 31, 1999, 1998 and 1997
(1) Business
Research Frontiers Incorporated (the "Company" or "Research
Frontiers") operates in a single business segment which is 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 that are either incorporated within a liquid suspension or
a film, which is usually enclosed between two glass or plastic
plates, having transparent, electrically conductive coatings on the
facing surfaces thereof. At least one of the two plates is
transparent.
The Company has historically utilized its cash and the proceeds
from maturities of its 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, existing cash reserves and budgeted revenues, the
Company believes that it would not require additional funding for
at least the next three to 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.
(2) Summary of Significant Accounting Policies
(a) Cash and Cash Equivalents
The Company considers securities purchased with original
maturities of three months or less to be cash equivalents. Cash
equivalents consist of short-term investments in money market
accounts at December 31, 1999 and 1998.
(b) 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 transferred its marketable securities from classification
as trading securities to held-to-maturity securities, as management
intends and has the ability to hold such securities until their
maturity. In accordance with Statement 115, held-to-maturity
securities are recorded at cost and trading securities are recorded
at fair value with unrealized holding gains and losses recorded in
earnings. 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.
(c) Fixed Assets
Fixed assets are carried at cost. Depreciation and amortization are
computed using the straight-line method over the estimated useful
lives of the assets.
(d) Fee Income
Fee income represents amounts earned by the Company under
various license and other agreements (note 10) relating to
technology developed by the Company.
(e) Basic and Diluted Loss Per Common Share
Basic earnings (loss) per share excludes any dilution. It is based
upon the weighted average number of common shares outstanding
during the period. Dilutive earnings (loss) per share reflects the
potential dilution that would occur if securities or other contracts
to issue common stock were exercised or converted into common
stock. The Company's dilutive earnings (loss) per share equals
basic earnings (loss) per share for each of the years in the three-
year period ended December 31, 1999 because all common stock
equivalents (i.e., options and warrants) were antidilutive in those
periods. The number of options and warrants that was not
included because their effect is antidilutive was 1,995,363,
1,801,498 and 1,395,639, for 1999, 1998 and 1997, respectively.
(f) Research and Development Costs
Research and development costs are charged to expense as incurred.
(g) Patent Costs
The Company expenses costs relating to the development or
acquisition of patents due to the uncertainty of the recoverability
of these items.
(h) Use of Estimates
Management of the Company has made a number of estimates and
assumptions relating to the reporting of assets and liabilities and
the disclosure of contingent assets and liabilities to prepare these
financial statements in conformity with generally accepted
accounting principles. Actual results could differ from those estimates.
(i) Income Taxes
Income taxes are accounted for under the asset and liability
method. Deferred tax assets and liabilities are recognized for the
future tax consequences attributable to differences between the
financial statement carrying amounts of existing assets and
liabilities and their respective tax bases and operating loss and tax
credit carryforwards. Deferred tax assets and liabilities are
measured using enacted tax rates expected to be recovered or
settled. The effect on deferred tax assets and liabilities of a change
in tax rates is recognized in income in the period that includes the
enactment date.
(j) Fair Value of Financial Instruments
The fair value of a financial instrument is the amount at which the
instrument could be exchanged in a current transaction between
willing parties. The carrying amounts of all financial instruments
classified as a current asset or current liability are deemed to
approximate fair value because of the short maturity of those
instruments.
The fair value of the notes receivable from officers approximates
the carrying value as their stated interest rate, the broker call rate,
is similar to other rates currently offered by local brokerage
institutions for loans of similar terms to individuals with
comparable credit risk.
(k) Stock Option Plan
The Company applies the intrinsic value-based method of
accounting prescribed by Accounting Principles Board ("APB")
Opinion No. 25 "Accounting for Stock Issued to Employees," and
related interpretations, in accounting for its fixed plan stock
options. As such, compensation expense would be recorded on the
date of grant only if the current market price of the underlying
stock exceeded the exercise price.
(l) Reclassifications
Certain reclassifications have been made to the 1998 and 1997
financial statements to conform to the 1999 presentation.
(m) Comprehensive Income
Effective January 1, 1998, the Company adopted the Statement of
Financial Accounting Standards ("SFAS") No. 130, "Reporting
Comprehensive Income." SFAS No. 130 requires that companies
disclose comprehensive income, which includes net income,
foreign currency translation adjustments, minimum pension
liability adjustments, and unrealized gains and losses on
marketable securities classified as available-for-sale. Because the
Company did not have any foreign currency translation
adjustments, minimum pension liability adjustments, or unrealized
gains or losses on marketable securities classified as available-for-
sale, for the years ended December 31, 1999, 1998 and 1997,
comprehensive loss equaled the net loss of $3,733,022,
$2,617,941, and $3,229,445, respectively.
(n) Deferred Revenue
The Company has entered into a number of license agreements
covering potential products. The Company receives minimum
annual royalties under certain license agreements and records fee
income for the amounts earned by the Company. Certain of the
fees are paid to the Company in advance of the period in which
they are earned resulting in deferred revenue.
(3) Supplemental Cash Flow Information
The following is supplemental information relating to the
Company's statement of cash flows:
1999 1998 1997
Non-cash financing activities:
Technology acquisition paid in stock $ -- -- 46,970
Principal payment on officer's note receivable
by surrendering of common stock $ 387,000 502,186 552,543
Receivable from warrant exercise $ 222,549 -- --
(4) Marketable Investment Securities
The fair value of marketable investment securities is based upon
quoted market prices. The amortized cost, gross unrealized
holding gains and fair value for the Company's securities at
December 31, 1999 and 1998 were as follows:
Gross Unrealized
Amortized Cost Holding Gain Fair Value
At December 31, 1999:
U.S. treasury securities (held-to-maturity) 1,246,083 3,056 1,249,139
At December 31, 1998:
U.S. treasury securities (held-to-maturity) 1,189,386 2,828 1,192,214
Maturities of all U.S. treasury securities were less than one year at
December 31, 1999 and 1998.
(5) Notes Receivable from Officers
In 1996, the Company loaned several officers an aggregate of
$350,000. In March and April 1997, the Company loaned several
officers an aggregate of $1,390,000. During 1997, officers made
aggregate principal payments of $592,353 against such loans of
which $39,810 was paid in cash and $552,543 was paid through
the surrender of the Company's common stock. During 1998,
officers made aggregate principal payments of $542,186 against
such loans of which $40,000 was paid in cash and $502,186 was
paid through the surrender of the Company's common stock.
During 1999, officers made aggregate principal payments of
$732,000 against such loans of which $345,000 was paid in cash
and $387,000 was paid through the surrender of the Company's
common stock. In connection with the aforementioned loan
repayments, the Company recorded $95,001, $50,968, and $68,810
in interest income in 1999, 1998 and 1997, respectively, of which
$95,001, $43,367, and $8,086 was paid through the surrender of
the Company's common stock in 1999, 1998 and 1997,
respectively. It is the Company's policy to record interest income
on these notes as received.
In a settlement agreement dated June 30, 1999, the Company
settled a declaratory judgment action brought on March 25, 1999
in the Supreme Court of the State of New York, County of Nassau,
by Jean Thompson in her individual capacity and as Executrix of
the estate of Robert I. Thompson, a former officer and director of
the Company. The action did not seek monetary damages and
essentially sought a declaration that certain common stock of the
Company securing loans made to Mr. Thompson was not available
as collateral to secure such loans. Under the settlement agreement,
among other things, the parties agreed that Jean Thompson and the
estate of Robert I. Thompson would pay the $732,000 in loans
made by the Company from 1993 to 1997 by paying the Company
$345,000 in cash, and delivering to the Company for cancellation
38,467 shares of common stock and options to purchase 181,447
shares of common stock. This payment and delivery of the shares
and stock options for cancellation were made in August 1999,
resulting in the payment in full of all outstanding loans, and the
Company recording interest income on such loans of $95,001.
Each of the aforementioned loans are due in January 2001. The
loans relate to the purchase of common stock of the Company; are
collateralized by the pledge of shares of common stock of the
Company; may be prepaid in part or in full without notice or
penalty; are represented by a promissory note which bears interest
at a rate per annum equal to the broker call rate (7.25% at
December 31, 1999 and 6.50% at December 31, 1998) in effect on
the first day of each calendar quarter; and permit repayment of the
loan by delivery of securities of the Company having a fair market
value equal to the balance of the loan outstanding.
(6) Fixed Assets
Fixed assets and their estimated useful lives, are as follows:
1999 1998 Estimated useful life
Equipment and furniture $ 895,223 766,610 5 years
Leasehold improvements 243,172 228,076 Life of lease or
1,138,395 994,686 estimated life if
shorter
Less accumulated depreciation
and amortization 819,074 725,602
$ 319,321 269,084
(7) Accrued Expenses
Accrued expenses consist of the following at December 31, 1999 and 1998:
1999 1998
Financing expenses $177,917 --
Payroll, bonuses and related benefits 117,481 75,690
Professional services 22,784 24,000
Other 6,289 9,444
$324,471 109,134
(8) Income Taxes
There was no income tax expense in 1999, 1998 and 1997 due to
losses incurred by the Company.
The tax effects of temporary differences that give rise to
significant portions of the deferred tax assets at December 31,
1999 and 1998 are presented below.
1999 1998
Deferred tax assets:
Net operating loss carryforwards $9,887,000 8,525,000
Research and other credits 590,000 525,000
Total gross deferred tax assets 10,477,000 9,050,000
Less valuation allowance 10,477,000 9,050,000
-- --
The Company has recorded a valuation allowance against the
deferred tax assets as they will not be realized unless the Company
achieves profitable operations in the future.
At December 31, 1999, the Company had a net operating loss
carryforward for federal income tax purposes of approximately
$24,718,000, varying amounts of which will expire in each year
from 2000 through 2019. Research and other credit carryforwards
of $590,000 are available to the Company to reduce income taxes
payable in future years principally through 2019.
(9) Shareholders' Equity
(a) Sale of Common Stock and Warrants
During 1997, the Company received $5,857,791 of net cash
proceeds from the issuance of 326,803 shares of common stock, as
follows: a private placement of 91,668 shares of common stock
resulting in proceeds of $475,004; the issuance of 26,750 shares of
common stock from the exercise of warrants resulting in proceeds
of $187,250; net proceeds of $4,626,985 from the issuance of a
redeemable prepaid warrant (note 9(e)) with the issuance of
122,685 shares of common stock from the partial exercise of this
warrant, and the issuance of 85,700 shares of common stock from
the exercise of options resulting in net proceeds of $568,552. In
addition, 16,695 shares were issued through the cancellation of
7,397 options, resulting in compensation expense of $133,555; and
8,800 shares issued to acquire certain technology pursuant to a
license agreement.
During 1998, the Company received $460,476 of net cash
proceeds from the issuance of 70,489 shares of common stock
from the exercise of options and warrants, as follows: the issuance
of 36,600 shares of common stock from the exercise of options
resulting in net proceeds of $217,476; and the issuance of 33,889
shares of common stock from the exercise of warrants resulting in
net proceeds of $233,000. The Company also issued 688,673
shares of common stock pursuant to the exercise of the remaining
outstanding redeemable prepaid warrant. In addition, the
Company received $10,000 from the issuance of the Class A
Warrant and Class B Warrant. (note 9(f)).
During 1999, the Company received $5,805,424 of net cash
proceeds from (i) the issuance of 53,025 shares of common stock
issued upon the exercise of options resulting in net proceeds of
$321,532 and (ii) 611,189 shares of common stock issued upon the
exercise of warrants, principally related to the Class A Warrant,
resulting in net proceeds of $5,483,892. In addition, 2,850 shares
were issued to an investor relations firm through the cancellation
of 33,250 warrants, resulting in public relations expense of
$21,820; 6,048 shares were issued to an officer through the
cancellation of 17,000 options resulting in compensation expense
of $60,661; and 414 shares were issued to a director in payment of
$3,000 in directors fees.
The Company recorded a receivable of $222,549 representing a
warrant exercise that occurred prior to the end of 1999, that
was scheduled to settle in January 2000. The Company received
the cash for the settlement of this warrant in January 2000.
(b) Options and Warrants
(i) Options
In 1992, the shareholders approved a stock option plan (1992
Stock Option Plan) which provides for the granting of both
incentive stock options at the fair market value at the date of grant
and nonqualified stock options at or below the fair market value at
the date of grant to employees or non-employees who, in the
determination of the Board of Directors, have made or may make
significant contributions to the Company in the future. The
Company initially reserved 468,750 shares of its common stock
for issuance under this plan. In 1994 and 1996, the Company's
shareholders approved an additional 300,000 shares and 450,000
shares, respectively, for issuance under this plan. As of December
31, 1999, 192,399 options were available for issuance under this Plan.
In 1998, the shareholders approved a stock option plan (1998
Stock Option Plan) which provides for the granting of both
incentive stock options at the fair market value at the date of grant
and nonqualified stock options at or below the fair market value at
the date of grant to employees or non-employees who, in the
determination of the Board of Directors, have made or may make
significant contributions to the Company in the future. The
Company may also award stock appreciation rights or restricted
stock under this plan. The Company initially reserved 540,000
shares of its common stock for issuance under this plan. In 1999,
the Company's shareholders approved an additional 545,000
shares for issuance under this plan. As of December 31, 1999,
awards for 146,273 shares of common stock were available for
issuance under this Plan.
At the discretion of the Board of Directors, options expire in ten
years or less from the date of grant and are generally fully
exercisable upon grant. Full payment of the exercise price may be
made in cash or in shares of common stock valued at the fair
market value thereof on the date of exercise, or by agreeing with
the Company to cancel a portion of the exercised options. When
an employee exercises a stock option through the surrender of
options held, rather than of cash for the option exercise price,
compensation expense is recorded in accordance with APB
Opinion No. 25. Accordingly, compensation expense is recorded
for the difference between the quoted market value of the
Company's common stock at the date of exchange and the
exercise price of the option. During 1999, options were
exercised that resulted in the issuance of 59,073 shares
of common stock.
Activity in stock options is summarized below:
Number of Shares Weighted Average
Subject to Option Exercise Price
Balance at December 31, 1996 985,903 $ 8.20
Granted 195,800 $ 6.00
Cancelled (8,397) $ 3.77
Exercised (102,395) $ 5.95
Balance at December 31, 1997 1,070,911 $ 8.05
Granted 526,300 $ 7.23
Cancelled (65,452) $ 8.53
Exercised ( 36,600) $ 5.94
Balance at December 31, 1998 1,495,159 $ 7.79
Granted 485,600 $ 8.38
Cancelled (203,023) $ 8.15
Exercised ( 59,073) $ 6.11
Balance at December 31, 1999 1,718,663 $ 7.98
The following table summarizes information about stock options
at December 31, 1999:
Weighted
Average Weighted Weighted
Remaining Average Average
Range of Shares Contractual Exercise Shares Exercise
Exercise Price Outstanding Life (Years) Price Exercisable Price
$3.00 to$6.00 161,177 6.70 5.81 161,177 5.81
$6.01 to$7.50 758,538 7.81 7.27 758,538 7.27
$7.51 to $9.00 571,301 8.70 8.35 309,701 8.32
$9.01 to $12.00 153,150 5.48 9.51 153,150 9.51
$12.01 to $15.00 74,497 5.42 13.98 74,497 13.98
1,718,663 7.69 7.98 1,457,063 7.91
Options to purchase 23,800 shares become exercisable during 2000.
During 1999, the Company granted 237,800 contingent
performance options to employees, which vest only, if a certain
performance milestone in the price of the Company's common
stock is achieved during 2000. As the Company is required to
account for these options as a variable plan under APB Opinion
No. 25. Accordingly, from the point in time that it appears
probable that such milestone will be achieved, the Company is
required to recognize non-cash compensation expense each period
from the date of grant through the vesting date based on the
quoted market price of the stock at the end of each period. Non-
cash compensation expense recognized during the fourth quarter
of 1999 in connection with these options was $671,052. The
charges recorded as a result of the issuance of these performance
options are calculated based upon changes in the Company's stock
price as of the end of each quarter, and are non-cash accounting
charges.
The per share weighted average fair value of warrants issued to
directors and stock options granted during 1999, 1998 and 1997
was approximately $3.65, $3.27, and $2.92, respectively, on the
date of grant using the Black-Scholes option-pricing model with
the following weighted average assumptions:
Expected Risk-Free Expected Stock Expected Life
Grant Date Dividend Yield Interest Rate Volatility in Years
June 1999 0 % 5.940% 50.853% 3.60
December 1998 0 % 4.540% 57.980% 3.50
August 1998 0 % 5.135% 55.330% 3.50
June 1998 0 % 5.505% 56.582% 3.50
June 1997 0 % 6.260% 57.430% 3.75
The Company applies APB Opinion No. 25 in accounting for its
stock option plans and, accordingly, no compensation cost has
been recognized for its stock options and warrants in the financial
statements as the exercise price of such instruments were equal to
the fair value of the Company's common stock at the date of
grant. Had the Company determined compensation cost based on
the fair value at the grant date for its stock options under SFAS
No. 123 "Accounting for Stock Based Compensation", the
Company's net loss and net loss per share would have been
increased to the pro forma amounts indicated below:
1999 1998 1997
Net loss As reported $ (3,733,022) $(2,617,941) $(3,229,445)
Pro forma $ (4,641,784) $(4,409,868) $(3,731,702)
Basic and diluted net loss
per common share As reported $ (0.34) $ (0.24) $(0.32)
Pro forma $ (0.42) $ (0.41) $(0.37)
Pro forma net loss reflects only options and warrants granted since
January 1, 1995. Therefore, the full impact of calculating
compensation cost for stock options and warrants under SFAS No.
123 is not reflected in the pro forma net loss amounts presented
above because compensation costs for options and warrants
granted prior to January 1, 1995 were not considered.
(ii) Warrants
Activity in warrants is summarized below, excluding the effect of
the redeemable prepaid warrant (note 9(e)) and the Class A
Warrant (note 9(f)):
Number of Shares Exercise
Underlying Warrants Granted Price
Balance at December 31, 1996 210,825 $ 5.88-13.50
Exercised (26,750) 7.00
Terminated (13,125) 6.43
Issued 153,778 (a) 6.00-9.60
Balance at December 31, 1997 324,728 5.88-13.50
Exercised (33,889) 7.00-7.20
Terminated (50,000) 8.72-11.63
Issued 65,500 (b) 8.25
Balance at December 31, 1998 306,339 5.88-13.50
Exercised (49,239) 7.00-11.63
Terminated (40,400) 7.50- 7.67
Issued 60,000 (c) 8.98-21.00
Balance at December 31, 1999 276,700 $ 5.88-21.00
(a) Represents warrants to purchase 26,000 shares at $6.00
per share issued to two directors of the Company;
redeemable warrants to purchase 13,889 shares at $7.20
per share and 13,889 shares at $9.60 per share issued to
institutional investors in a private placement of the
Company's common stock; and warrants to purchase
100,000 shares at $7.00 per share in payment for investor
relations services provided to the Company, which vested
25,000 shares per quarter commencing April 1, 1997.
(b) Represents Class B Warrant to purchase 65,500 shares at
$8.25 per share issued to an institutional investor in a
private placement. See note 9(f).
(c) Represents warrants to purchase 10,000 shares at $8.98
per share issued to two consultants for research and
development work performed for the Company, 50% of
which is currently vested and 50% of which vests if
certain additional milestones are achieved as a result of
the work performed by the consultants; and warrants to
purchase 10,000 shares at $9.00 per share, 10,000 shares
at $10.00 per share, 10,000 shares at $11.00 per share,
10,000 shares at $16.00 per share, and 10,000 shares at
$21.00 per share, issued in payment for investor relations
services provided to the Company which resulted in
public relations expense of $34,156, which warrants vest
10,000 shares per quarter commencing April 1, 1999.
Warrants generally expire from two to ten years from the date of
issuance. At December 31, 1999, the number of warrants
exercisable was 219,700 at a weighted average exercise price of
$10.04 per share.
(c) Treasury Stock
During 1999, the Company purchased in the open market and
subsequently retired 40,200 shares of treasury stock with an
aggregate cost of $345,837. Also during 1999, the Company
received 38,467 shares of common stock valued at $482,001 as
partial payment of notes receivable from an officer pursuant to a
settlement agreement as discussed above. Such shares were also
subsequently retired. During 1998, the Company purchased in the
open market and subsequently retired 118,600 shares of treasury
stock with an aggregate cost of $747,716. During 1997, the
Company purchased in the open market and subsequently retired
17,000 shares of treasury stock with an aggregate cost of $126,637.
(d) Restricted Stock
In connection with a license agreement entered into during 1996
pursuant to which certain technology was licensed to the
Company, the Company agreed to issue to the licensor 8,800
shares of its common stock as a licensing fee. These shares,
which were issued in 1997, were discounted based upon
restrictions on transferability and $46,970 was charged to expense in 1996.
(e) Redeemable Prepaid Warrant
In October 1997, a group of institutional investors invested
$5,000,000 in equity capital through the private placement of a
redeemable prepaid common stock warrant. The warrant, which
is redeemable by the Company or the investors under certain
defined circumstances, is exercisable over its five-year term only
in the form of issuance of common stock at an exercise price
which fluctuates with market conditions. The net proceeds of the
private placement after deducting professional fees of $373,015
were $4,626,985. This redeemable prepaid warrant was fully
exercised by the holders by July 22, 1998 and is no longer
outstanding. In connection with the redeemable prepaid warrant,
688,673 and 122,685 shares of common stock were issued in 1998
and 1997, respectively.
(f) Class A and Class B Warrants
On October 1, 1998, the Company announced that Ailouros Ltd.,
a London-based institutional money management fund, has
committed to purchase up to $15 million worth of common stock
of Research Frontiers through December 31, 2001. This
commitment is in the form of a Class A Warrant issued to
Ailouros Ltd. which gives Research Frontiers the option in any
three-month period to deliver a put notice to Ailouros requiring
them to purchase an amount of common stock specified by
Research Frontiers at a price equal to the greater of (A) 92% of
the seven-day average trading price per share of common stock,
or (B) a minimum or "floor" price per share set by Research
Frontiers from time to time. The pricing was initially subject to
an overall cap of $15 per share, which cap has now been
eliminated by mutual agreement so that the Company may put
stock to Ailouros at selling prices in excess of $15 per share.
However, Research Frontiers is not required to sell any shares
under the agreement. Before the beginning of each of a series of
three-month periods specified by the Company, the Company
determines the amount of common stock that the Company wishes
to issue during such three-month period. The Company also sets
the minimum selling or "floor" price, which can be reset by the
Company in its sole discretion prior to the beginning of any
subsequent three-month period. Therefore, at the beginning of
each three-month period, the Company will determine how much
common stock, if any, is to be sold (the amount of which can
range from $0 to $1.5 million during such three-month period),
and the minimum selling price per share. In March 2000, Ailouros
agreed to expand its commitment beyond the original $15 million,
thereby giving the Company the right to raise additional funds
from Ailouros so long as the Company does not have to issue
more shares than were originally registered with the Securities
and Exchange Commission.
In connection with the financing, the Company also issued
Ailouros Ltd. a Class B Warrant which expires on September 30,
2008. The Class B Warrant is exercisable at $8.25 per share
which represents 120% of average of the closing bid and ask
price of the Company's common stock on the date of the Class B
Warrant's issuance. The Class B Warrant is exercisable into
65,500 shares. Ailouros paid the Company $10,000 upon
issuance of the Class A Warrant and the Class B Warrant.
(10) License and Other Agreements
The Company has entered into a number of license agreements
and one option agreement covering potential products using the
Company's SPD technology. Although the Company may receive
minimum annual royalties under certain of these licenses, to date
no products have been sold resulting in earned royalties under
these license agreements.
The following table summarizes Research Frontiers' existing
license and option agreements and lists the year these
agreements were entered into:
Licensee or Optionee Products Covered Territory
Dainippon Ink and SPD emulsions for other licensees (1999) Worldwide
Chemicals Incorporated
General Electric Company SPD film for other licensees and Worldwide
prospective licensees (1995)
Glaverbel, S.A. Automotive vehicle rear-view mirrors, Worldwide
transportation vehicle sunvisors, and (except
architectural and automotive windows (1996) Korea
for windows)
Global Mirror GmbH Rear-view mirrors and sunvisors (1999) Worldwide
Hankuk Glass Industries Inc. Broad range of SPD light control products Worldwide
including windows, flat panel displays,
automotive vehicle rear-view mirrors and
sunvisors (installed as original equipment
on Korean-made cars), and sunroofs; SPD film
for licensees and prospective licensees (1997)
Hitachi Chemical Co., Ltd. SPD emulsions and films for other Worldwide
licensees (1999)
Material Sciences Corp. Architectural and automotive windows, Worldwide
SPD film for other licensees, prospective
licensees and architectural and automotive
window companies (1997)
ThermoView Industries, Inc. Architectural windows (2000) Worldwide
(except Korea)
Vision-Ease Lens Azusa,Inc. Eyewear (1997) Worldwide
Saint Gobain Vitrage, S.A. Architectural Windows (option) (1994) Worldwide
(except Korea
and South America)
Licensees will pay Research Frontiers a 5-10% royalty on the sale of
licensed products, and may also be required to pay Research
Frontiers minimum annual royalties. Research Frontiers' license
agreements typically allow the licensee to terminate the license after
some period of time, and give Research Frontiers only limited rights
to terminate before the license expires. Most licenses are non-
exclusive and generally last as long as the Company's patents remain
in effect. The license granted to Hankuk Glass Industries is exclusive
within Korea for certain applications through December 2004.
Vision-Ease's license for eyewear is exclusive during the term of the
license. Global Mirror's license restricts new licenses from being
granted in the truck mirror original equipment market for a period of
time if certain sales milestones are met with respect to commercial
vehicles in Classes 5 through 8 with gross vehicle weights in excess
of 16,000 pounds. To the Company's knowledge, five of its
licensees, Global Mirror, Hankuk Glass Industries, Vision-Ease,
ThermoView Industries and Material Sciences Corporation, currently
have active programs for developing SPD products. Dainippon Ink
and Chemicals and Hitachi Chemical are also working to develop
raw materials under their licenses for incorporation into SPD film
and end products. One or more other licensees may become more
active, and additional companies may become licensees, if and when
an SPD film becomes available.
(11) Commitments
The Company has an employment agreement with one of its officers
which provides for an annual base salary of $370,000 through December 31, 2000.
In December 1999, the Company's Board of Directors approved a
performance bonus plan which provides for a bonus to be paid on
July 1, 2000 and January 1, 2001 equal to 1% of the increase, if any,
in the Company's market value during the first and second halves of
2000. Bonuses are capped at a recipient's salary in the case of
employees of the Company, and are currently capped at $55,000 in
the case of non-employee directors of the Company.
The Company occupies premises under an operating lease agreement
which expires on January 31, 2004 and requires minimum annual rent
which rises over the term of the lease to approximately $143,500.
Rent expense, including other expenses, amounted to approximately
$143,000, $131,000, and $127,000 for 1999, 1998 and 1997,respectively.
[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.]
LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
GLOBAL MIRROR GmbH & Co. KG
This License Agreement ("Agreement") effective as of
December 3, 1999 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
GLOBAL MIRROR GmbH & Co. KG, a corporation organized
under the laws of Germany ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to Light
Valves and Licensed Products (both as hereinafter defined) and of
methods and apparatus relating to products incorporating such
concepts; and is possessed of and can convey information and
know-how for such products and rights to manufacture, use and sell
such products; and
WHEREAS, LICENSEE is interested in manufacturing and
selling Licensed Products; and
WHEREAS, LICENSEE desires to acquire from LICENSOR,
and LICENSOR desires to grant to LICENSEE, certain rights and
licenses with respect to such technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises and the
mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the respective
meanings set forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is the
last date of formal execution of this Agreement by duly authorized
representatives of the parties to this Agreement as indicated on the
signature page of this Agreement.
"Licensed Product" means a Light Valve intended for use and used
solely as a Truck Mirror or a Non-Truck Mirror. The term "Licensed
Product" shall not include (1) Light Valves which are used or
intended for use as or in any other type of mirror product including
but not limited to mirrors used in spacecraft, satellites, or space
stations, (2) Light Valves used or intended for use as or in any
non-mirror product such as but not limited to windows, displays,
toys, filters for scientific instruments or lamps and eyewear, and (3)
Light Valves used or intended for use in any product other than as
specifically defined herein. The term "display" means any device for
displaying letters, numbers, images or other indicia or patterns.
Nothing contained herein shall permit LICENSEE to sell, lease, or
otherwise dispose of a Light Valve which is not combined or
intended to be combined as described above into a Licensed Product.
"Licensed Territory " means all countries of the world.
"Light Valve" means a variable light transmission device comprising:
a cell including cell walls, containing or adapted to contain an
activatable material, described hereinafter, such that a change in the
optical characteristics of the activatable material affects the
characteristics of light absorbed by, transmitted through and/or
reflected from the cell; means incorporated in or on the cell, or
separate therefrom for applying an electric or magnetic field to the
activatable material within the cell; and coatings, (including, but not
limited to, electrodes), spacers, seals, electrical and/or electronic
components, and other elements incorporated in or on the cell. The
activatable material, which the cell contains or is adapted to contain,
includes in it solid suspended particles, which when subjected to a
suitable electric or magnetic field, orient to produce a change in the
optical characteristics of the device, and may be in the form a liquid
suspension, gel, film or other material.
The "Net Selling Price" of Licensed Products on which royalties are
payable shall be the greater of the following: (A) 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, minus the genuine selling price (which, for purposes of
this calculation shall be deemed to be not more than $100 per mirror)
of a mirror similar to the Licensed Product but not incorporating a
Light Valve; (B) 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, multiplied by a
fraction, the numerator of which is the cost of all components
included in the mirror associated with the incorporation of a Light
Valve, and the denominator of which is the total manufacturing cost
for such product; and (C) $100.00 per mirror. The aforementioned
$100 figure specified in clauses (A) and (C) above shall be adjusted
upward as of each January 1st hereafter beginning on January 1, 2001
by any increase in the Producer Price Index for Motor Vehicle Parts
and Accessories (the "Index") for the 12 month period ending in
December of the prior year, prepared by the Bureau of Labor
Statistics of the United States Department of Labor (or if the Index
is not then being published, the most nearly comparable successor
index). In calculating a genuine selling price of a product for the
above calculation, such price may be reduced only by the applicable
proportions of the following if, and to the extent that, amounts in
respect thereof are reflected in such selling price: (i) normal trade
discounts actually allowed; (ii) sales, use or excise and added value
taxes and custom duties paid; (iii) if the genuine selling price is other
than f.o.b. factory, amounts paid for f.o.b. transportation of the
product to the customer's premises or place of installation or
delivery; (iv) 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 for purposes of this calculation, the
genuine selling price of a product may not be less than 90% of the
gross selling price of said product after all deductions therefrom
excluding materials purchased by LICENSEE from LICENSOR
pursuant to subsection (iv) hereof, if any. If a product is leased, sold,
used or otherwise disposed of on terms not involving a bona fide
arm's length sale to an unaffiliated third party, 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.
"Non-Truck Mirror" means an interior or exterior mirror (other than
a vanity or cosmetic mirror) attached to and used in military,
non-military and commercial automotive vehicles other than a Truck
Mirror and enumerated below in this definition, namely a mirror used
in passenger cars, motorcycles, buses, trucks, vans, sport utility
vehicles and other light trucks, boats, trains and aircraft.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including (by
way of example) drawings, written recitations of data, specifications,
parts, lists, assembly procedures, operating and maintenance
manuals, test and other technical reports, know-how of LICENSOR,
and the like owned or controlled by LICENSOR, to the extent they
exist, that relate to Light Valves, Licensed Products and/or to the
suspensions or other components used or usable for Licensed
Products or Light Valves including, but not limited to, particles,
particle precursors, coatings, polymers, liquid suspensions and
suspending liquids, or any combination thereof, and that consist of
concepts invented or developed by LICENSOR. Know-how of
LICENSOR's suppliers and of LICENSOR's other licensees and
their sublicensees under licenses from LICENSOR shall not be
considered Technical Information owned or controlled by
LICENSOR.
"Truck Mirror" means an interior or exterior mirror (other than a
vanity or cosmetic mirror) attached to and installed as original
equipment in non-military and commercial automotive vehicles
classified in Class 5 through 8, namely trucks, buses, construction
vehicles, firetrucks, and other specialty land vehicles, all with gross
vehicle weights over 16,000 pounds. A mirror (or mirrors) for any
other type of vehicle not enumerated above, or sold in the
aftermarket and not as original equipment on such vehicles, shall not
be considered a "Truck Mirror".
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement, LICENSOR
hereby grants LICENSEE a non-exclusive (subject to the restrictions
contained in Section 2.4 hereof, if applicable) right and license 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, and to lease, sell, or
otherwise dispose of Licensed Products in the Licensed Territory.
2.2 No Other Rights. LICENSEE agrees that, except for the
specific licenses granted to it under Section 2.1 hereof, LICENSEE
has not acquired any rights or licenses under this Agreement to use
Light Valves or any components thereof made by or for LICENSEE
or its sublicensees pursuant to this Agreement except for use in
Licensed Products.
2.3 Sublicenses. LICENSEE shall have the right to grant non-
exclusive sublicenses to its affiliated companies listed as such in the
letter between LICENSOR and LICENSEE dated December 3, 1999
and any wholly-owned and controlled subsidiary of such companies
or of LICENSEE, whose obligations to LICENSOR hereunder
LICENSEE hereby guarantees, and which acknowledges to
LICENSOR in writing that it wishes to become a sublicensee
hereunder prior to doing so and agrees to be bound by the terms and
conditions of this Agreement. All sublicenses shall (i) be non-
exclusive, (ii) shall terminate with the termination of the rights and
licenses granted to LICENSEE under Section 2.1 hereof, and be
otherwise limited in accordance with the limitations and restrictions
which are imposed on the rights and licenses granted to LICENSEE
hereunder, (iii) contain confidentiality provisions no less protective
than those contained in Section 12.1 hereof, and (iv) shall contain
such other terms, conditions, and licenses as are necessary to enable
LICENSEE to fulfill its obligations hereunder. LICENSEE shall send
LICENSOR a copy of every sublicense agreement or other agreement
entered into by LICENSEE in connection with a sublicense
hereunder within thirty (30) days of the execution thereof.
LICENSOR may terminate any such sublicense if there is any change
in the ownership or control of a sublicensee.
2.4 Restrictions on Granting of Further Truck Mirror Licenses.
With respect to Licensed Products which are Truck Mirrors only,
during the term of this Agreement and subject to Section 2.5 hereof,
LICENSOR shall grant no new license permitting the sale, while this
restriction is in effect, of Licensed Products which are Truck Mirrors
to any third party other than to LICENSEE or any company referred
to in Section 2.3 unless this restriction has terminated pursuant to
Section 2.5 hereof. LICENSEE acknowledges that this Section 2.4
is subject to the rights and licenses granted to other licensees of
LICENSOR prior to the Effective Date of this Agreement.
LICENSEE is aware that LICENSOR has already granted license
agreements to Glaverbel, S.A. and to Hankuk Glass Industries, Inc.
which, among other things, permit them and their sublicensees to
make, use and sell Truck Mirrors as well as other types of rear-view
mirrors and other products, and that these licenses may permit
assignment or sublicensing of certain rights to affiliated or successor
companies. Nothing contained in this Agreement shall restrict
LICENSOR's or its licensees' ability to manufacture and use, but not
directly or indirectly sell (except for prior licensees of LICENSOR),
Truck Mirrors, for the purposes of performing research,
development, marketing, demonstrations and publicity.
2.5 Termination of Restrictions on Granting of Further Truck
Mirror Licenses. If LICENSEE or its permitted sublicensees
hereunder have not sold at least [Confidential Information Omitted
and filed separately with the Securities and Exchange Commission]
units of a Licensed Product which is a Truck Mirror on or before
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission], then LICENSOR may elect
to terminate the restrictions placed on it under Section 2.4 hereof by
sending LICENSEE a written notice of such election, and then as of
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission] the restrictions placed upon
LICENSOR under Section 2.4 hereof shall terminate; provided,
however, that LICENSEE shall have the option to send LICENSOR
a written notice within 30 days of LICENSEE's receipt of
LICENSOR's notice stating that LICENSEE has elected to keep such
restrictions in effect until [Confidential Information Omitted and
filed separately with the Securities and Exchange Commission], after
which, if LICENSEE or its permitted sublicensees hereunder have
not sold at least [Confidential Information Omitted and filed
separately with the Securities and Exchange Commission] units of a
Licensed Product which is a Truck Mirror on or before [Confidential
Information Omitted and filed separately with the Securities and
Exchange Commission], then as of [Confidential Information
Omitted and filed separately with the Securities and Exchange
Commission] the restrictions placed upon LICENSOR under Section
2.4 hereof shall terminate. Notwithstanding anything contained in
Section 3.2 hereof to the contrary, if the restriction placed on
LICENSOR under Section 2.4 has terminated pursuant to this
Section 2.5, the minimum annual royalty payable by LICENSEE
under Section 3.2 for the license year for which such termination has
become effective, and for each license year thereafter, shall be
reduced to [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission] per year.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-KEEPING.
3.1 Royalties and Reports on Net Sales. During the term of this
Agreement, LICENSEE agrees to pay LICENSOR an earned royalty
which shall be the Applicable Percentage of the Net Selling Price of
Licensed Products which embody, or the manufacture of which
utilizes, any of the rights granted under Section 2.1 hereof, and which
are manufactured by or for LICENSEE and sold, leased, used or
otherwise disposed of by or for LICENSEE or a permitted
sublicensee. For purposes of this Section 3.1, the Applicable
Percentage in the case of Licensed Products which are Truck Mirrors
shall be eight percent (8%), and the Applicable Percentage in the
case of Licensed Products which are Non-Truck Mirrors shall be five
percent (5%). Payments under this Section 3.1 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. LICENSEE shall also furnish to
LICENSOR at the same time it becomes available to any third party,
a copy of each brochure, price list, advertisement or other marketing
and promotional materials prepared, published or distributed by
LICENSEE or its sublicensees relating to Licensed Products.
3.2 Minimum Royalties - Except as otherwise specifically
provided for in Section 3.3, 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]
3.3 Alternative Minimum Royalties if Training Option has been
Exercised - If LICENSEE has exercised the Training Option set forth
in Section 8.1, 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]
3.4 Time and Method of Payment. The initial payment under
Section 3.2 or Section 3.3, as applicable, shall be paid to LICENSOR
within 10 days of the Effective Date of this Agreement, and each
subsequent payment under either Section 3.2 or Section 3.3, as
applicable, to LICENSOR shall be made on or before January 31 of
each license year commencing January 1, 2001. All other payments
shall be due on the date specified in this Agreement, or if no date is
specified, within 30 days of invoice. All payments made to
LICENSOR shall be paid by wire transfer of immediately available
funds to the account of Research Frontiers Incorporated at Chase
Manhattan Bank, 1064 Old Country Road, Plainview, New York
11803, Account No.: 904-709361, ABA Wire Code No.: 021 000
021, or to such other account or place, as LICENSOR may specify in
a notice to LICENSEE.
3.5 Sales, Use and Returns. Licensed Products shall be
considered as sold, leased or used and royalties shall accrue on the
earlier of when such Licensed Products are billed out, or when
delivered, shipped or mailed to the customer. If as a result of a price
reduction or a return of Licensed Products previously sold, a credit
or refund to a customer is given on part or all of the sale price of
such Licensed Products, a credit shall be allowed against royalties
accruing thereafter under this Agreement equal to the royalty paid on
that part of the sales price so credited or refunded.
3.6 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of submission
of each statement supported thereby, true and accurate records, files
and books of accounts that relate to Licensed Products, all data
reasonably required for the full computation and verification of the
Net Selling Price of Licensed Products, deductions therefrom and
royalties to be paid, as well as the other information to be given in
the statements herein provided for, and shall permit LICENSOR or
its duly authorized representatives, upon reasonable notice,
adequately to inspect the same at any time during usual business
hours. LICENSOR and LICENSEE agree that an independent
certified public accounting firm (selected by LICENSOR from the
largest ten certified public accounting firms in the United States of
America or Germany) may audit such records, files and books of
accounts to determine the accuracy of the statements given by
LICENSEE pursuant to Section 3.1 hereof. Such an audit shall be
made upon reasonable advance notice to LICENSEE and during
usual business hours no more frequently than annually. The cost of
the audit shall be borne by LICENSOR, unless the audit shall
disclose a breach by LICENSEE of any term of this Agreement, or an
underpayment error in excess of two percent of the total monies paid
to LICENSOR by LICENSEE during the audited period, in which
case LICENSEE shall bear the full cost of such audit. LICENSEE
agrees to pay LICENSOR all additional monies that are disclosed by
the audit to be due and owing to LICENSOR within thirty days of the
receipt of the report.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation, any
manufacture, sale, lease, use or other disposition of Licensed
Products that is not in strict accordance with the provisions of this
Agreement shall be deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products is sold,
leased, or otherwise disposed of by LICENSEE or its sublicensees,
to look only to LICENSEE and not to LICENSOR or its affiliates for
any claims, warranties, or liability relating to such Licensed Products.
LICENSEE agrees to take all steps to reasonably assure itself that
Licensed Products sold, leased or otherwise disposed of by or for
LICENSEE is being used for permitted purposes only.
4.3 Laws and Regulations. LICENSEE agrees that it shall be
solely responsible for complying with all laws and regulations
affecting the manufacture, use and sale or other disposition of
Licensed Products by LICENSEE and its sublicensees, and for
obtaining all approvals necessary from governmental agencies and
other entities. LICENSEE agrees to maintain a file of all such
approvals and to send LICENSOR a copy of all such approvals
(including English translations thereof in the case of approvals
required by any foreign country) within 10 business days of any
written request for such copies by LICENSOR. LICENSEE
represents and warrants to LICENSOR that no approval from any
governmental agency or ministry, or from any third party, is required
to effectuate the terms of this Agreement or the transactions
contemplated hereby.
4.4 Purchase of Components from Others. 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, materials, suspensions, films,
polymers, coatings, particle precursors, and particles (each, a
"Component"), which LICENSEE or its sublicensees makes, has
made for it, or purchases from any third party for use in Licensed
Products shall be deemed to have been manufactured at least in part
using the Technical Information provided by LICENSOR.
LICENSEE and its sublicensees each hereby agrees that (i) all
Components shall be used only in strict accordance with the
provisions of this Agreement, and that such Components may not be
used for any other purpose or resold by LICENSEE or its
sublicensees except as specifically permitted by the license granted
in Section 2.1 hereof, and (ii) LICENSEE and its sublicensees will
only look to the manufacturer or supplier of such Component or
other item used by LICENSEE or its sublicensees and not to
LICENSOR or its affiliates for any claims, warranties, or liability
relating to such Component or other item. LICENSEE acknowledges
that LICENSOR has not made any representations or warranties
regarding the availability of any Component, or the price thereof, and
that in all respects LICENSEE shall deal directly with the suppliers
of such Components and will obtain from them information
regarding availability, pricing, and/or other terms relating to such
Components.
4.5 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Licensed Product or of
any material, Component, or information provided hereunder, and
LICENSEE expressly acknowledges and agrees that any such
material, Component or information provided by LICENSOR
hereunder is provided "AS IS" and that LICENSOR makes no
warranty with respect thereto and DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, RELATED THERETO, ITS USE OR ANY INABILITY
TO USE IT, OR THE RESULTS OF ITS USE. Except for any breach
of the terms of this Agreement, in no event shall any party to this
Agreement be liable for any damages, whether in contract or tort
(including negligence), including but not limited to direct,
consequential, special, exemplary, incidental and indirect damages,
arising out of or in connection with this Agreement or the use, the
results of use, or the inability to use any Licensed Product, material,
Component or information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it will only
incorporate Components received from authorized suppliers into
Licensed Products and for no other purpose, and that LICENSEE
will not directly or indirectly attempt to reverse-engineer any material
provided to it hereunder by LICENSEE or any supplier of any
Component.
4.7 Personnel. LICENSEE agrees to assign personnel from its
technical staff who shall be responsible for the development of
Licensed Products during the term of this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Licensed Products or other products
incorporating Light Valves are and shall remain the exclusive
property of the adopting party, and the other party shall not obtain
any rights and license to such marks under this Agreement, but may
inform others that the adopting party has produced Licensed Products
or products incorporating Light Valves under such mark or marks.
LICENSOR may require LICENSEE or its permitted sublicensees to
indicate on packaging that such product is licensed from Research
Frontiers Incorporated or to otherwise include language and/or
designations approved by LICENSOR indicating an affiliation with
Research Frontiers Incorporated.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times ample
product liability and other liability insurance covering its operations
relating to the subject matter of this Agreement.
6.2 Indemnification. LICENSEE, and its affiliates, successors
and assigns and sublicensees (each, an "Indemnifying Party"), each
hereby indemnify and agree to hold harmless LICENSOR and its
shareholders, officers, directors, agents and employees (each, an
"Indemnified Party"), against any liability, damage, loss, fine,
penalty, claim, cost or expense (including reasonable costs of
investigation and settlement and attorneys', accountants' and other
experts' fees and expenses) arising out of any action or inaction by
any Indemnifying Party relating to this Agreement including an
Indemnifying Party's manufacture, sale, use, lease or other
disposition of Licensed Products, and related materials, or other use
of the information and rights granted hereunder. Any knowledge of
LICENSEE's or its sublicensee's activities by LICENSOR or its
representatives shall in no way impose any liability on LICENSOR
or reduce the responsibilities of LICENSEE hereunder or relieve it
from any of its obligations and warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the right
to file patent applications in the United States and in foreign
countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or on
behalf of LICENSEE, LICENSEE's sublicensees and LICENSOR
after the Effective Date of this Agreement, if any, which relate in any
way to or are useful in the design, operation, manufacture and
assembly of Licensed Products, and/or to the suspensions or other
components used or usable in Licensed Products shall not be
included in this Agreement. Upon written request by the non-
inventing party, LICENSOR and LICENSEE shall negotiate with
each other regarding the grant of nonexclusive rights and licenses to
use such improvements and modifications, but neither party shall be
obligated to grant such rights and licenses to one another.
(b) During the term of this Agreement each of the parties hereto
agrees to inform the other in writing (without any obligation to reveal
details which would be confidential information), at least as
frequently as once a year in January of each calendar year, if any
significant improvements or modifications have been made relating
to the subject matter of this Agreement, and as to the general nature
of any such improvements and modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but shall
not be required to, voluntarily and without additional cost to
LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE rights in
such certain future improvements and modifications, and any
information so disclosed will be considered Technical Information
which LICENSEE shall be obligated to keep confidential pursuant to
Section 12.1 of this Agreement. In connection therewith,
LICENSOR, may voluntarily add patents and/or patent applications
to Schedule A hereof. No disclosure of any information by
LICENSOR shall in any way establish a course of dealing or
otherwise require LICENSOR to make any future disclosure of
information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that any
patent application now or hereafter listed on or incorporated into
Schedule A shall be filed or maintained in any foreign country. 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 specifically so
designated by LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. LICENSEE's Training Option. LICENSEE shall have the
option of receiving training from LICENSOR (the "Training
Option"), provided that LICENSEE exercises such Training Option
by sending LICENSOR a notice stating that LICENSEE is exercising
its Training Option which notice is received by LICENSOR on or
before December 31, 2000 (time being of the essence and the
Training Option expiring null and void if not exercised and notice
received by LICENSOR on or before December 31, 2000) . Only if
such Training Option is exercised in a timely manner shall the
provisions of Sections 3.3, 8.2, 8.3, and 8.4 be in effect.
8.2. Documentation Provided if Training Option is Exercised.
Within thirty business days after the Training Option is exercised by
LICENSEE, LICENSOR shall furnish LICENSEE with all Technical
Information owned or controlled by LICENSOR, which is reasonably
necessary or desirable 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 an Activatable
Material which contains confidential and proprietary information of
LICENSOR and (2) photocopies of all U.S. Patents and patent
applications relating to Licensed Products owned or controlled by
LICENSOR as of the date that the Training Option is exercised.
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. Patents and patent
applications purchased by LICENSOR from any third party shall not
be considered owned or controlled by LICENSOR until and unless
LICENSOR has been notified in writing that it has received written
assignments relating to such patents and patent applications.
8.3 Training. 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 LICENSEE's exercise of its Training Option under
Section 8.1 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's technical staff shall provide
up to 200 man-hours assistance during such period at no cost to
LICENSEE. Additionally, there shall be no cost to LICENSEE for
materials used for training during the initial training at LICENSOR's
facility.
8.4 Materials and Additional Training. Upon request by
LICENSEE after LICENSEE's exercise of its Training Option under
Section 8.1 of this Agreement, during the term of this Agreement and
when mutually convenient to LICENSOR and LICENSEE,
LICENSOR shall supply LICENSEE with additional training and
with small quantities of materials related to Licensed Products for
experimental use only by LICENSEE, and shall charge LICENSEE
$750 per man/day plus the cost of any other materials used in
providing such training or making such materials, plus the cost of
shipping such materials to LICENSEE. Each invoice submitted by
LICENSOR for such service shall include detailed explanations of
the charges, and, if requested by LICENSEE, copies of receipts.
8.5 Inquiries. LICENSEE and LICENSOR may also at any time
during the term of this Agreement make reasonable inquiry by
telephone, facsimile or mail to one another in regard to any
information or data furnished pursuant to this Agreement.
8.6 Visits. During all visits by either party to the facilities of the
other party, visitors shall comply with all reasonable rules of the host
company, and each party to this Agreement will indemnify and hold
the other party harmless from any liability, claim or loss whatsoever
(i) for any injury to, or, death of, any of its employees or agents while
such persons are present at the facility of the other party; and (ii) for
any damages to its own property or to the property of any such
employee or agent which may occur during the presence of any such
person at the facility of the other party, regardless of how such
damage occurs, if the rules of the host are followed.
8.7 Sole Purpose. Any documentation or information supplied
pursuant to this Agreement by either party to the other shall be used
solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall provide
appropriate notices of patents, or other similar notice of the patent
rights of the other party on all products utilizing the patented
inventions of the other party. Either party may add its own patent
notice to any copy or embodiment which contains its patented
inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and exclusive
owner of the patents and patent applications listed on Schedule A,
and that, except for the rights granted hereunder, LICENSEE shall
not have any rights or attempt to assert any ownership rights in and
to those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend from the
Effective Date of this Agreement to the date of termination of this
Agreement. Unless sooner terminated or extended, as herein
provided for below, this Agreement shall terminate upon the
expiration of the later of (A) the last to expire of the patents now or
hereafter listed in Schedule A hereof, and (B) the expiration of the
period in which LICENSEE is obligated to maintain confidential
Technical Information of LICENSOR pursuant to Section 12.1
hereof.
10.2 Termination by LICENSEE. LICENSEE may terminate
this Agreement effective as of December 31, 2004 or as of any
anniversary thereof by giving LICENSOR prior notice thereof unless
sooner terminated as hereinafter provided. Such notice shall be
made in writing and shall be given between 60 and 90 days prior to
the effective date for which such termination is to be effective. If
LICENSEE decides to terminate this Agreement for any reason,
LICENSEE shall provide LICENSOR, along with the
aforementioned notice of termination, with a written report
describing the reasons for such termination.
10.3 Termination by LICENSOR. LICENSOR may terminate
this Agreement at any time effective as of December 31, 2004 or as
of any anniversary thereof upon at least 30 days' notice to
LICENSEE for any reason, and LICENSOR may terminate this
Agreement at any time upon at least 30 days' notice to LICENSEE
if LICENSEE shall have failed to make any payment when due or at
any time breach any material term of this Agreement and such
payment is not made or such breach is not cured within any
applicable cure period specified in Article 11 of this Agreement, or
repeatedly provide inaccurate reports hereunder, or if there has been
a cessation by LICENSEE of general operations or of work related
to Licensed Products.
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall cease,
and LICENSEE shall immediately return to LICENSOR all Technical
Information furnished to LICENSEE under this Agreement, together
with all reproductions, copies and summaries thereof; provided,
however, that LICENSEE may retain solely for archival purposes one
copy of all such documents in its legal department files, (2) at
LICENSOR's option, LICENSEE shall, within 30 days of the date of
such termination, either (A) sell and deliver to LICENSOR at
LICENSEE's direct cost of manufacture any Licensed Products
which shall then be in the possession of LICENSEE, and, if
requested by LICENSOR, LICENSEE shall finish and deliver to
LICENSOR any Licensed Products in the process of manufacture as
soon as possible and, in any case, not later than 30 days after
receiving LICENSOR's request, and/or (B) with respect to any
unsold inventory and work in the process of manufacture, to
complete such work in process and sell any remaining inventory
during the period not to exceed six months from the date of
termination or expiration of this Agreement provided that at the
completion of such six-month period, LICENSEE shall promptly
destroy and dispose of any Licensed Products (and Licensed
Products in the process of manufacture) not sold under this Section
10.4 and (3) if this Agreement is terminated for any reason on or
before December 31, 2004, if LICENSOR so elects, LICENSEE
agrees to negotiate in good faith the grant to LICENSOR of a
nonexclusive, royalty-free, irrevocable, worldwide license with the
right to grant sublicenses to others to utilize all technical information,
improvements and/or modifications (whether or not the subject of
patents or pending patent applications) developed or invented by or
on behalf of LICENSEE and/or its sublicensees, subcontractors, or
agents hereunder through the date of such termination of this
Agreement relating to Light Valves, or Licensed Products, and upon
such termination, LICENSEE shall provide LICENSOR in
reasonable detail complete information regarding such technical
information, improvements and/or modifications. Although such
license shall be free of any earned royalties, LICENSEE agrees that
it shall negotiate in good faith the amount of payment by LICENSEE
required for the granting of such license, which amount shall in no
event exceed the amount of minimum annual royalties received as of
the date of termination of this Agreement by LICENSOR from
LICENSEE pursuant to Section 3.2 hereof. LICENSEE agrees upon
written notice by LICENSOR at any time after such payment is made
to deliver to LICENSOR within 30 days of such notice any document
or other instrument reasonably requested by LICENSOR to convey
such license rights to LICENSOR such as, by way of example,
confirmations or instruments of conveyance or assignment. No
termination of this Agreement by expiration or otherwise shall
release LICENSEE or LICENSOR from any of its continuing
obligations hereunder, if any, or limit, in any way any other remedy
one party may have against the other party. Notwithstanding the
foregoing, LICENSEE's obligations to LICENSOR under Sections
3.1, 3.6, 4.2, 4.3, 4.4, 4.5, 4.6, 6.1, 6.2, 7.2, 8.6, 8.7, 10.4, 12.1, and
Articles 13 and 14 shall survive any termination or expiration of this
Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in a
timely manner or a party's material breach or material failure to
punctually perform any of its duties and obligations under this
Agreement, which material breach or failure, if curable, remains
uncured for thirty (30) days after written notice of such breach or
failure is received by the breaching party; or (b) a material
misrepresentation is made by a party in any representation or
warranty contained in this Agreement and the misrepresented facts
or circumstances, if curable, remain uncured thirty (30) days after
written notice of such misrepresentation is received by the breaching
party; and, in either case, if such breach or misrepresentation is not
curable, termination shall occur thirty (30) days after such
misrepresentation or breach at the option of the non-breaching party;
or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's filing of
a voluntary petition in bankruptcy; (b) the filing of any involuntary
petition to have such first party declared bankrupt which has not been
dismissed within ninety (90) days of its filing; (c) the appointment of
a receiver or trustee for such first party which has not been rescinded
within ninety (90) days of the date of such appointment; or (d) such
first party otherwise becoming insolvent or otherwise making an
assignment for the benefit of creditors.
11.2 Default by a Party. If there occurs an Event of Default
with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or specific
performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting party
shall have no further obligations under this
Agreement except those which expressly survive
termination, and except with respect to royalty
payments due and owing to LICENSOR as of the
termination date or any subsequent period specified
in Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for itself,
its sublicensees, and their employees and agents that for twenty (20)
years from the later of the Effective Date of this Agreement or the
latest date of its receipt of information disclosed to LICENSEE by
LICENSOR pursuant to this Agreement, such information shall be
held in confidence; provided, however, there shall be no obligation
to treat as confidential information which is or becomes available to
the public other than through a breach of this obligation, or which
was already possessed by LICENSEE in writing (or otherwise
provable to be in the possession of LICENSEE) prior to the Effective
Date of this Agreement (and was not received from LICENSOR) or
which is shown by LICENSEE to have been received by it from a
third party who had the legal right to so disclose it without
restrictions and without breach of any agreement with LICENSOR
or its licensees. LICENSOR shall affix an appropriate legend on all
written documentation given to LICENSEE which contains
confidential information. LICENSEE acknowledges that the list of
patent applications contained on Schedule A is confidential
information of LICENSOR. Other than for the oral information
conveyed during the training conducted pursuant to Sections 8.3 and
8.4 hereof all of which shall be deemed to be confidential
information, if confidential information is otherwise conveyed orally
by LICENSOR after training has been completed, LICENSOR shall
specify to LICENSEE at the time such information is being conveyed
(or in a subsequent letter referring to the conversation) that the
information conveyed is confidential. It is understood and agreed
that, unless otherwise provided in a separate agreement between
LICENSEE and LICENSOR, LICENSEE has no obligation
hereunder to provide LICENSOR with any confidential or proprietary
information, and that LICENSOR shall have no obligation hereunder
to LICENSEE to maintain in confidence or refrain from commercial
or other use of any information which LICENSOR is or becomes
aware of under this Agreement. The terms and provisions of this
Agreement or any other agreement between the parties shall not be
considered confidential, and the parties hereto acknowledge that,
pursuant to the Securities Exchange Act of 1934, as amended, and
the regulations promulgated thereunder, LICENSOR may file copies
of this Agreement with the Securities and Exchange Commission and
with NASDAQ and with any other stock exchange on which
LICENSOR's securities may be listed. LICENSEE agrees that for
the period of time during which LICENSEE is obligated to keep
information confidential hereunder, LICENSEE will not make, use,
sell, lease or otherwise dispose of products using or directly or
indirectly derived from Licensed Products, Light Valves, or
Components, or which otherwise comprise suspended particles,
which when subjected to a suitable electric or magnetic field, orient
to produce a change in the optical characteristics of the suspension
("SPD Technology") unless an agreement between LICENSOR and
LICENSEE permitting it to do so is in full force and effect and the
royalties, if any, provided in such agreement are being paid to
LICENSOR on such products. The foregoing restriction shall not
apply to products (i) which do not directly or indirectly incorporate
SPD Technology, such as, but not limited to, liquid crystal devices,
or electrochromic devices, or (ii) which incorporate technology
involving suspended particles, which when subjected to a suitable
electric or magnetic field, orient to produce a change in the optical
characteristics of the suspension but which is independently
developed and which is not in any way directly or indirectly derived
from any Technical Information of LICENSOR or its licensees,
sublicensees, or any of their affiliates. LICENSEE shall have the
burden of proving by clear and convincing evidence that the
availability of any exception of confidentiality exists or that the
foregoing restrictions do not apply to a particular product. Nothing
contained in this section, however, shall be construed as granting
LICENSEE any rights or licenses with respect to any Technical
Information or patents of LICENSOR or its other licensees or their
sublicensees.
(b) After LICENSEE's exercise of its Training Option under
Section 8.1 of this Agreement, LICENSEE will have the right to
disclose to a subcontractor information of LICENSOR received
pursuant to Article 8 hereof; provided, however, that LICENSEE
shall only disclose such information as is strictly necessary to enable
said subcontractor to perform its manufacturing task, and provided
that prior to disclosing any information to said subcontractor, said
subcontractor has signed a secrecy agreement with LICENSEE at
least as protective of LICENSOR's Technical Information as the
provisions of this Agreement, including, without limitation, said
subcontractor's specific agreement to be bound by the provisions of
Section 12.1 hereof to the same extent as LICENSEE. For such
purposes, LICENSEE may develop a standard form of secrecy
agreement for LICENSOR's approval, after which LICENSEE may
use such secrecy agreement with all subcontractors without
LICENSOR's prior approval of the secrecy agreement being
necessary. LICENSEE shall have all subcontractors sign said secrecy
agreement prior to the disclosure of Technical Information to said
subcontractor, and LICENSEE shall send LICENSOR a copy of
every such secrecy agreement within thirty (30) days after the
execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents and
warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery of this
Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have been
duly authorized by all necessary corporate action by LICENSOR and
LICENSEE and this Agreement is a valid and binding obligation
enforceable against the parties in accordance with its terms, except
to the extent limited by bankruptcy, insolvency, moratorium and
other laws of general application relating to general equitable
principles;
13.1.2 No Conflicts. Nothing herein conflicts with its rights and
obligations pursuant to any agreement by a party and any other entity;
and
13.1.3 Publicity. The parties shall have the right to use non-
confidential information, including but not limited to information
concerning this Agreement, for marketing, sales, technical assistance,
investor relations, disclosure and public relations purposes, and that
information permitted to be disclosed by a party under this Section
13.1.3 may appear on such party's (or its subsidiaries' or
sublicensees') Internet web site, along with links to the Internet web
sites of the other party and its subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR represents and
warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents and
warrants that it has the right to convey the rights and licenses
granted by this Agreement, and otherwise to perform its obligations
under this Agreement. LICENSOR has caused its employees who are
employed to do research, development, or other inventive work to
disclose to it any invention or information within the scope of this
Agreement and to assign to it rights in such inventions and
information in order that LICENSEE shall receive, by virtue of this
Agreement, the licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is not
aware of any claim for patent infringement or the misappropriation
of trade secrets, being asserted against it by any third party; or of any
infringement of the patents listed on Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a) that
LICENSEE will be able to develop, manufacture, sell or otherwise
commercialize Licensed Products, or (b) as to the validity of any
patent.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be interpreted,
construed, governed and enforced in accordance with and governed
by the laws of the State of New York, and LICENSOR and
LICENSEE hereby submit to the exclusive jurisdiction of the state or
federal courts located in the County of Nassau and State of New
York for such purposes.
14.2 Confidentiality In Court Proceeding. In order to protect
and preserve the confidential information of a party which the parties
recognize may be exchanged pursuant to the provisions of this
Agreement, the disclosing party may request, and the receiving party
shall not oppose, the court in any action relating to this Agreement
to enter a protective order to protect information which is
confidential information under Section 12.1 and to seal the record in
the action or to hold the proceedings, or portion of the proceedings,
in camera; provided, that the requested terms do not prejudice the
receiving party's interests. Nothing, however, shall preclude either
party from thereafter moving to unseal its own records or to have
matter and information designated as confidential under any relevant
protective order designated otherwise in accordance with the
circumstances as they shall appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision that
is legal and enforceable and is as nearly as possible consistent with
the intentions underlying the original provision. If the remainder of
this Agreement is not materially affected by such declaration or
finding and is capable of substantial performance, then the remainder
shall be enforced to the extent permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing to the
contrary, the failure of either party to insist in any one or more
instances upon the strict performance of any one or more of the
provisions of this Agreement, or to exercise any right contained in
this Agreement or provided by law, shall not constitute or be
construed as a waiver or relinquishment of the performance of such
provision or right or the right subsequently to demand such strict
performance or exercise of such right, and the rights and obligations
of the parties shall continue unchanged and remain in full force and
effect.
14.5 Captions. The captions and headings in this Agreement
are inserted for convenience and reference only and in no way define
or limit the scope or content of this Agreement and shall not affect
the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and shall
inure to the benefit of the parties and their successors and assigns.
However, LICENSEE agrees that it shall not assign this Agreement
or its rights hereunder without the prior written consent of
LICENSOR except to a successor to substantially all of its business
relating to Light Valves and whose obligations hereunder are
guaranteed to LICENSOR by LICENSEE. LICENSOR may assign
all of its rights and obligations hereunder to any successor to any of
its business interests or to any company controlling or controlled by
LICENSOR. All assignees shall expressly assume in writing the
performance of all the terms and conditions of this Agreement to be
performed by the assigning party, and an originally signed instrument
of such assumption and assignment shall be delivered to the non-
assigning party within 30 days of the execution of such instrument.
14.7 Schedules. All Schedules attached to this Agreement shall
be deemed to be a part of this Agreement as if set forth fully in this
Agreement.
14.8 Entire Agreement. This Agreement constitutes the entire
understanding and agreement between LICENSOR and LICENSEE
with respect to the subject matter hereof, supersedes all prior
agreements, proposals, understandings, letters of intent, negotiations
and discussions with respect to the subject matter hereof and can be
modified, amended, supplemented or changed only by an agreement
in writing which makes specific reference to this Agreement and
which is executed in writing by the parties; provided, however, that
either party may unilaterally waive in writing any provision imposing
an obligation on the other.
14.9 Notices. Any notice required or permitted to be given or
made in this Agreement shall be in writing and shall be deemed
given on the earliest of (i) actual receipt, irrespective of method of
delivery, (ii) on the delivery day following dispatch if sent by express
mail (or similar next day courier service), or (iii) on the sixth day
after mailing by registered or certified air mail, return receipt
requested, postage prepaid and addressed as follows:
LICENSOR: Robert L. Saxe, President
Research Frontiers Incorporated
240 Crossways Park Drive
Woodbury, New York 11797-2033 USA
Facsimile: (516) 364-3798
Telephone: (516) 364-1902
LICENSEE: Sabine Lang
Managing Director
GLOBAL MIRROR GmbH & Co. KG
101 Tillessen Boulevard
Ridgeway, South Carolina 29130 USA
Facsimile: (803) 337-5205
Telephone: (803) 337-5264
or to such substitute addresses and persons as a party may designate
to the other from time to time by written notice in accordance with
this provision.
14.10 Bankruptcy Code. In the event that either party should
file a petition under the federal bankruptcy laws, or that an
involuntary petition shall be filed against such party, the parties
intend that the non-filing party shall be protected in the continued
enjoyment of its rights hereunder to the maximum feasible extent
including, without limitation, if it so elects, the protection conferred
upon licensees under section 365(n) of Title 17 of the U.S. Code.
Each party agrees that it will give the other party immediate notice of
the filing of any voluntary or involuntary petition under the federal
bankruptcy laws.
14.11 Construction. This Agreement and the exhibits hereto
have been drafted jointly by the parties and in the event of any
ambiguities in the language hereof, there shall no be inference drawn
in favor or against either party.
14.12 Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original,
but all of which shall constitute one and the same instrument.
14.13 Status of the Parties. The status of the parties under this
Agreement shall be solely that of independent contractors. No party
shall have the right to enter into any agreements on behalf of the
other party nor shall it represent to any person that it has such right
or authority.
The parties, through their duly authorized representatives, and
intending to be legally bound, have executed this Agreement, as of
the date and year first above written, whereupon it became effective
in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By:/s/ Joseph M. Harary
Joseph M. Harary, Vice President and General Counsel
Date: December 3, 1999
GLOBAL MIRROR GmbH & Co. KG
By: /s/ Sabine Lang
Sabine Lang, Managing Director
Date: December 3, 1999
Schedule A
(As of December 3, 1999)
LIST OF UNITED STATES AND
FOREIGN PATENTS
AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
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 07/08/14
5,650,872 Robert L. Saxe et al
"Light Valve Containing Ultrafine Particles"
(JDR-108) [CIP of S.N. 351,665] 07/22/97 07/22/14
5,728,251 Joseph A. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve"
(JDR-111) 03/17/98 09/27/15
PENDING APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities and
Exchange Commission]
[EXHIBIT 10.15- 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.]
LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
GLOBAL MIRROR GmbH & Co. KG
This License Agreement ("Agreement") effective as of December 13, 1999
by and between RESEARCH FRONTIERS INCORPORATED, a Delaware
corporation ("LICENSOR") and GLOBAL MIRROR GmbH & Co. KG, a
corporation organized under the laws of Germany ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and development in
the application of physicochemical concepts to Light Valves and Licensed
Products (both as hereinafter defined) and of methods and apparatus relating to
products incorporating such concepts; and is possessed of and can convey
information and know-how for such products and rights to manufacture, use and
sell such products; and
WHEREAS, LICENSEE is interested in manufacturing and selling Licensed
Products; and
WHEREAS, LICENSEE desires to acquire from LICENSOR, and
LICENSOR desires to grant to LICENSEE, certain rights and licenses with respect
to such technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the respective meanings
set forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is the last date
of formal execution of this Agreement by duly authorized representatives of the
parties to this Agreement as indicated on the signature page of this Agreement.
LICENSEE shall sign this Agreement first and LICENSOR may sign this
Agreement at any time on or before February 29, 2000. If LICENSOR does not
countersign this Agreement on or before February 29, 2000,this Agreement shall
be void and of no effect.
"Licensed Product" means a Light Valve intended for use and used solely as a
sunvisor (which may comprise more than one segment) attached to the interior of
a military or 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 Licensed 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 sunvisor 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 "Licensed 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, toys, eyewear, mirrors or filters
for scientific instruments, lamps or contrast enhancement of displays, and (4)
Light Valves used or intended for use in any product other than as specifically
defined herein. The term "transportation vehicle" shall include, but shall not
be limited to, passenger cars, motorcycles, recreational vehicles, trucks,mobile
cranes, trains, aircraft and boats, but shall not include spacecraft,satellites,
or space stations. The term "display" means any device for displaying letters,
numbers, images or other indicia or patterns. Nothing contained herein shall
permit LICENSEE to sell, lease, or otherwise dispose of a Light Valve which
is not combined or intended to be combined as described above into a Licensed
Product.
"Licensed Territory " means all countries of the world.
"Light Valve" means a variable light transmission device comprising: a cell
including cell walls, containing or adapted to contain an activatable material,
described hereinafter, such that a change in the optical characteristics of the
activatable material affects the characteristics of light absorbed by,
transmitted through and/or reflected from the cell; means incorporated in or on
the cell, or separate therefrom for applying an electric or magnetic field to
the activatable material within the cell; and coatings, (including, but not
limited to,electrodes), spacers, seals, electrical and/or electronic components,
and other elements incorporated in or on the cell. The activatable material,
which the cell contains or is adapted to contain, includes in it solid suspended
particles, which when subjected to a suitable electric or magnetic field, orient
to produce a change in the optical characteristics of the device, and may be in
the form a liquid suspension, gel, film or other material.
The "Net Selling Price" of Licensed Products on which royalties are payable
shall be the greater of the following: (A) the genuine selling price of LICENSEE
and its sublicensees hereunder (including amounts charged for any wiring,instal-
lation, and related services provided by LICENSEE and its sublicensees here-
under) 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,
minus the genuine selling price (which,for purposes of this calculation shall be
deemed to be not more than $50 per sunvisor) of a sunvisor similar to the
Licensed Product but not incorporating a Light Valve; (B) 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 sub-
licensees 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, multiplied by a fraction, the numerator of which is the cost of
all components included in the sunvisor associated with the incorporation of
a Light Valve, and the denominator of which is the total manufacturing cost for
such product; and (C) $50.00 per sunvisor. The aforementioned $50 figure
specified in clauses (A) and (C) above shall be adjusted upward as of each
January 1st hereafter beginning on January 1, 2001 by any increase in the
Producer Price Index for Motor Vehicle Parts and Accessories (the "Index") for
the 12 month period ending in December of the prior year, prepared by the Bureau
of Labor Statistics of the United States Department of Labor (or if the Index is
not then being published, the most nearly comparable successor index). In
calculating a genuine selling price of a product for the above calculation, such
price may be reduced only by the applicable proportions of the following if,
and to the extent that, amounts in respect thereof are reflected in such
selling price: (i) normal trade discounts actually allowed; (ii) sales, use or
excise and added value taxes and custom duties paid;(iii) if the genuine selling
price is other than f.o.b. factory, amounts paid for f.o.b. transportation of
the product to the customer's premises or place of installation or delivery;
(iv) 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 for purposes of this calculation,
the genuine selling price of a product may not be less than 90% of the gross
selling price of said product after all deductions therefrom excluding materials
purchased by LICENSEE from LICENSOR pursuant to subsection (iv) hereof, if any.
If a product is leased, sold, used or otherwise disposed of on terms not
involving a bona fide arm's length sale to an unaffiliated third party, then the
Net Selling Price for such transactions shall be deemed to be the Net Selling
Price as defined above for identical products sold to a nonaffiliated customer
nearest to the date of such lease, sale, use, or other disposition.
"Technical Information" means all useful information relating to apparatus,
methods, processes, practices, formulas, techniques, procedures, patterns,
ingredients, designs and the like including (by way of example) drawings,written
recitations of data, specifications, parts, lists, assembly procedures,operating
and maintenance manuals, test and other technical reports, know-how of LICENSOR,
and the like owned or controlled by LICENSOR, to the extent they exist, that
relate to Light Valves, Licensed Products and/or to the suspensions or other
components used or usable for Licensed Products or Light Valves including, but
not limited to,particles, particle precursors, coatings, polymers,liquid suspen-
sions and suspending liquids, or any combination thereof, and that consist of
concepts invented or developed by LICENSOR. Know-how of LICENSOR's suppliers and
of LICENSOR's other licensees and their sublicensees under licenses from
LICENSOR shall not be considered Technical Information owned or controlled
by LICENSOR.
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement, LICENSOR hereby grants
LICENSEE a non-exclusive right and license to use (a) all of the Technical
Information 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, and to lease, sell, or otherwise dispose of Licensed Products in the
Licensed Territory.
2.2 No Other Rights. LICENSEE agrees that, except for the specific
licenses granted to it under Section 2.1 hereof, LICENSEE has not acquired any
rights or licenses under this Agreement to use Light Valves or any components
thereof made by or for LICENSEE or its sublicensees pursuant to this Agreement
except for use in Licensed Products.
2.3 Sublicenses. LICENSEE shall have the right to grant non-exclusive
sublicenses to its affiliated companies listed as such in the letter between
LICENSOR and LICENSEE dated December 3, 1999 and any wholly-owned and
controlled subsidiary of such companies or of LICENSEE, whose obligations to
LICENSOR hereunder LICENSEE hereby guarantees, and which acknowledges
to LICENSOR in writing that it wishes to become a sublicensee hereunder prior to
doing so and agrees to be bound by the terms and conditions of this Agreement.
All sublicenses shall (i) be non-exclusive,(ii) shall terminate with the termin-
ation of the rights and licenses granted to LICENSEE under Section 2.1 hereof,
and be otherwise limited in accordance with the limitations and restrictions
which are imposed on the rights and licenses granted to LICENSEE hereunder,
(iii) contain confidentiality provisions no less protective than those contained
in Section 12.1 hereof, and (iv) shall contain such other terms, conditions, and
licenses as are necessary to enable LICENSEE to fulfill its obligations here-
under.LICENSEE shall send LICENSOR a copy of every sublicense agreement or other
agreement entered into by LICENSEE in connection with a sublicense hereunder
within thirty (30) days of the execution thereof. LICENSOR may terminate any
such sublicense if there is any change in the ownership or control of a
sublicensee.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-KEEPING.
3.1 Royalties and Reports on Net Sales. During the
term of this Agreement, LICENSEE agrees to pay
LICENSOR an earned royalty which shall be five percent
(5%) of the Net Selling Price of Licensed Products which
embody, or the manufacture of which utilizes, any of the
rights granted under Section 2.1 hereof, and which are
manufactured by or for LICENSEE and sold, leased, used or
otherwise disposed of by or for LICENSEE or a permitted
sublicensee. Payments under this Section 3.1 shall be made
on a quarterly basis and made within 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.
LICENSEE shall also furnish to LICENSOR at the same
time it becomes available to any third party, a copy of each
brochure, price list, advertisement or other marketing and
promotional materials prepared, published or distributed by
LICENSEE or its sublicensees relating to Licensed Products.
3.2 Minimum Royalties - Except as otherwise
specifically provided for in Section 3.3, 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]
3.3 Alternative Minimum Royalties if Training Option
has been Exercised - If LICENSEE has exercised the
Training Option set forth in Section 8.1, 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]
3.4 Time and Method of Payment. The initial payment
under Section 3.2 or Section 3.3, as applicable, shall be paid
to LICENSOR on or before June 1, 2000, and each
subsequent payment under either Section 3.2 or Section 3.3,
as applicable, to LICENSOR shall be made on or before
June 1 of each license year commencing June 1, 2001. All
other payments shall be due on the date specified in this
Agreement, or if no date is specified, within 30 days of
invoice. All payments made to LICENSOR shall be paid by
wire transfer of immediately available funds to the account
of Research Frontiers Incorporated at Chase Manhattan
Bank, 1064 Old Country Road, Plainview, New York
11803, Account No.: 904-709361, ABA Wire Code No.:
021 000 021, or to such other account or place, as
LICENSOR may specify in a notice to LICENSEE.
3.5 Sales, Use and Returns. Licensed Products shall be
considered as sold, leased or used and royalties shall accrue
on the earlier of when such Licensed Products are billed out,
or when delivered, shipped or mailed to the customer. If as
a result of a price reduction or a return of Licensed Products
previously sold, a credit or refund to a customer is given on
part or all of the sale price of such Licensed Products, a
credit shall be allowed against royalties accruing thereafter
under this Agreement equal to the royalty paid on that part
of the sales price so credited or refunded.
3.6 Recordkeeping. LICENSEE shall keep and shall
cause each sublicensee to keep for six (6) years after the date
of submission of each statement supported thereby, true and
accurate records, files and books of accounts that relate to
Licensed Products, all data reasonably required for the full
computation and verification of the Net Selling Price of
Licensed Products, deductions therefrom and royalties to be
paid, as well as the other information to be given in the
statements herein provided for, and shall permit LICENSOR
or its duly authorized representatives, upon reasonable
notice, adequately to inspect the same at any time during
usual business hours. LICENSOR and LICENSEE agree
that an independent certified public accounting firm
(selected by LICENSOR from the largest ten certified public
accounting firms in the United States of America or
Germany) may audit such records, files and books of
accounts to determine the accuracy of the statements given
by LICENSEE pursuant to Section 3.1 hereof. Such an
audit shall be made upon reasonable advance notice to
LICENSEE and during usual business hours no more
frequently than annually. The cost of the audit shall be
borne by LICENSOR, unless the audit shall disclose a
breach by LICENSEE of any term of this Agreement, or an
underpayment error in excess of two percent of the total
monies paid to LICENSOR by LICENSEE during the
audited period, in which case LICENSEE shall bear the full
cost of such audit. LICENSEE agrees to pay LICENSOR all
additional monies that are disclosed by the audit to be due
and owing to LICENSOR within thirty days of the receipt of
the report.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without
limitation, any manufacture, sale, lease, use or other
disposition of Licensed Products that is not in strict
accordance with the provisions of this Agreement shall be
deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products
is sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to
LICENSOR or its affiliates for any claims, warranties, or
liability relating to such Licensed Products. LICENSEE
agrees to take all steps to reasonably assure itself that
Licensed Products sold, leased or otherwise disposed of by
or for LICENSEE is being used for permitted purposes only.
4.3 Laws and Regulations. LICENSEE agrees that it
shall be solely responsible for complying with all laws and
regulations affecting the manufacture, use and sale or other
disposition of Licensed Products by LICENSEE and its
sublicensees, and for obtaining all approvals necessary from
governmental agencies and other entities. LICENSEE
agrees to maintain a file of all such approvals and to send
LICENSOR a copy of all such approvals (including English
translations thereof in the case of approvals required by any
foreign country) within 10 business days of any written
request for such copies by LICENSOR. LICENSEE
represents and warrants to LICENSOR that no approval
from any governmental agency or ministry, or from any
third party, is required to effectuate the terms of this
Agreement or the transactions contemplated hereby.
4.4 Purchase of Components from Others. 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, materials, suspensions, films, polymers,
coatings, particle precursors, and particles (each, a
"Component"), which LICENSEE or its sublicensees makes,
has made for it, or purchases from any third party for use in
Licensed Products shall be deemed to have been
manufactured at least in part using the Technical
Information provided by LICENSOR. LICENSEE and its
sublicensees each hereby agrees that (i) all Components
shall be used only in strict accordance with the provisions of
this Agreement, and that such Components may not be used
for any other purpose or resold by LICENSEE or its
sublicensees except as specifically permitted by the license
granted in Section 2.1 hereof, and (ii) LICENSEE and its
sublicensees will only look to the manufacturer or supplier
of such Component or other item used by LICENSEE or its
sublicensees and not to LICENSOR or its affiliates for any
claims, warranties, or liability relating to such Component or
other item. LICENSEE acknowledges that LICENSOR has
not made any representations or warranties regarding the
availability of any Component, or the price thereof, and that
in all respects LICENSEE shall deal directly with the
suppliers of such Components and will obtain from them
information regarding availability, pricing, and/or other
terms relating to such Components.
4.5 No Warranties by LICENSOR. LICENSOR does
not represent or warrant the performance of any Licensed
Product or of any material, Component, or information
provided hereunder, and LICENSEE expressly
acknowledges and agrees that any such material, Component
or information provided by LICENSOR hereunder is
provided "AS IS" and that LICENSOR makes no warranty
with respect thereto and DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
BUT NOT LIMITED TO THE IMPLIED WARRANTIES
OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, RELATED THERETO, ITS
USE OR ANY INABILITY TO USE IT, OR THE
RESULTS OF ITS USE. Except for any breach of the terms
of this Agreement, in no event shall any party to this
Agreement be liable for any damages, whether in contract or
tort (including negligence), including but not limited to
direct, consequential, special, exemplary, incidental and
indirect damages, arising out of or in connection with this
Agreement or the use, the results of use, or the inability to
use any Licensed Product, material, Component or
information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it
will only incorporate Components received from authorized
suppliers into Licensed Products and for no other purpose,
and that LICENSEE will not directly or indirectly attempt
to reverse-engineer any material provided to it hereunder by
LICENSEE or any supplier of any Component.
4.7 Personnel. LICENSEE agrees to assign personnel
from its technical staff who shall be responsible for the
development of Licensed Products during the term of this
Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that
either party may adopt and use for Licensed Products or
other products incorporating Light Valves are and shall
remain the exclusive property of the adopting party, and the
other party shall not obtain any rights and license to such
marks under this Agreement, but may inform others that the
adopting party has produced Licensed Products or products
incorporating Light Valves under such mark or marks.
LICENSOR may require LICENSEE or its permitted
sublicensees to indicate on packaging that such product is
licensed from Research Frontiers Incorporated or to
otherwise include language and/or designations approved by
LICENSOR indicating an affiliation with Research Frontiers
Incorporated.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times
ample product liability and other liability insurance covering
its operations relating to the subject matter of this
Agreement.
6.2 Indemnification. LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an
"Indemnifying Party"), each hereby indemnify and agree to
hold harmless LICENSOR and its shareholders, officers,
directors, agents and employees (each, an "Indemnified
Party"), against any liability, damage, loss, fine, penalty,
claim, cost or expense (including reasonable costs of
investigation and settlement and attorneys', accountants' and
other experts' fees and expenses) arising out of any action or
inaction by any Indemnifying Party relating to this
Agreement including an Indemnifying Party's manufacture,
sale, use, lease or other disposition of Licensed Products,
and related materials, or other use of the information and
rights granted hereunder. Any knowledge of LICENSEE's
or its sublicensee's activities by LICENSOR or its
representatives shall in no way impose any liability on
LICENSOR or reduce the responsibilities of LICENSEE
hereunder or relieve it from any of its obligations and
warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have
the right to file patent applications in the United States and
in foreign countries covering any invention made by such
party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or
on behalf of LICENSEE, LICENSEE's sublicensees and
LICENSOR after the Effective Date of this Agreement, if
any, which relate in any way to or are useful in the design,
operation, manufacture and assembly of Licensed Products,
and/or to the suspensions or other components used or
usable in Licensed Products shall not be included in this
Agreement. Upon written request by the non-inventing
party, LICENSOR and LICENSEE shall negotiate with each
other regarding the grant of nonexclusive rights and licenses
to use such improvements and modifications, but neither
party shall be obligated to grant such rights and licenses to
one another.
(b) During the term of this Agreement each of the
parties hereto agrees to inform the other in writing (without
any obligation to reveal details which would be confidential
information), at least as frequently as once a year in January
of each calendar year, if any significant improvements or
modifications have been made relating to the subject matter
of this Agreement, and as to the general nature of any such
improvements and modifications.
(c) Notwithstanding the foregoing, LICENSOR may,
but shall not be required to, voluntarily and without
additional cost to LICENSEE disclose certain information
relating to future improvements and modifications and
license to LICENSEE rights in such certain future
improvements and modifications, and any information so
disclosed will be considered Technical Information which
LICENSEE shall be obligated to keep confidential pursuant
to Section 12.1 of this Agreement. In connection therewith,
LICENSOR, may voluntarily add patents and/or patent
applications to Schedule A hereof. No disclosure of any
information by LICENSOR shall in any way establish a
course of dealing or otherwise require LICENSOR to make
any future disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of
this Agreement, LICENSEE shall have the right to designate
that any patent application now or hereafter listed on or
incorporated into Schedule A shall be filed or maintained in
any foreign country. 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
specifically so designated by LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. LICENSEE's Training Option. LICENSEE shall
have the option of receiving training from LICENSOR (the
"Training Option"), provided that LICENSEE exercises
such Training Option by sending LICENSOR a notice
stating that LICENSEE is exercising its Training Option
which notice is received by LICENSOR on or before
December 31, 2000 (time being of the essence and the
Training Option expiring null and void if not exercised and
notice received by LICENSOR on or before December 31,
2000) . Only if such Training Option is exercised in a
timely manner shall the provisions of Sections 3.3, 8.2, 8.3,
and 8.4 be in effect.
8.2. Documentation Provided if Training Option is
Exercised. Within thirty business days after the Training
Option is exercised by LICENSEE, LICENSOR shall
furnish LICENSEE with all Technical Information owned or
controlled by LICENSOR, which is reasonably necessary or
desirable 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 an Activatable Material which contains
confidential and proprietary information of LICENSOR and
(2) photocopies of all U.S. Patents and patent applications
relating to Licensed Products owned or controlled by
LICENSOR as of the date that the Training Option is
exercised. 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. Patents and patent applications purchased by
LICENSOR from any third party shall not be considered
owned or controlled by LICENSOR until and unless
LICENSOR has been notified in writing that it has received
written assignments relating to such patents and patent
applications.
8.3 Training. 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 LICENSEE's exercise of its Training Option under
Section 8.1 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's technical staff shall provide up to 200
man-hours assistance during such period at no cost to
LICENSEE. Additionally, there shall be no cost to
LICENSEE for materials used for training during the initial
training at LICENSOR's facility.
8.4 Materials and Additional Training. Upon request
by LICENSEE after LICENSEE's exercise of its Training
Option under Section 8.1 of this Agreement, during the term
of this Agreement and when mutually convenient to
LICENSOR and LICENSEE, LICENSOR shall supply
LICENSEE with additional training and with small
quantities of materials related to Licensed Products for
experimental use only by LICENSEE, and shall charge
LICENSEE $750 per man/day plus the cost of any other
materials used in providing such training or making such
materials, plus the cost of shipping such materials to
LICENSEE. Each invoice submitted by LICENSOR for
such service shall include detailed explanations of the
charges, and, if requested by LICENSEE, copies of receipts.
8.5 Inquiries. LICENSEE and LICENSOR may also at
any time during the term of this Agreement make reasonable
inquiry by telephone, facsimile or mail to one another in
regard to any information or data furnished pursuant to this
Agreement.
8.6 Visits. During all visits by either party to the
facilities of the other party, visitors shall comply with all
reasonable rules of the host company, and each party to this
Agreement will indemnify and hold the other party harmless
from any liability, claim or loss whatsoever (i) for any injury
to, or, death of, any of its employees or agents while such
persons are present at the facility of the other party; and (ii)
for any damages to its own property or to the property of
any such employee or agent which may occur during the
presence of any such person at the facility of the other party,
regardless of how such damage occurs, if the rules of the
host are followed.
8.7 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the
other shall be used solely for the purposes set forth in this
Agreement.
9 INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall
provide appropriate notices of patents, or other similar
notice of the patent rights of the other party on all products
utilizing the patented inventions of the other party. Either
party may add its own patent notice to any copy or
embodiment which contains its patented inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and
exclusive owner of the patents and patent applications listed
on Schedule A, and that, except for the rights granted
hereunder, LICENSEE shall not have any rights or attempt
to assert any ownership rights in and to those patents and
patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend
from the Effective Date of this Agreement to the date of
termination of this Agreement. Unless sooner terminated or
extended, as herein provided for below, this Agreement shall
terminate upon the expiration of the later of (A) the last to
expire of the patents now or hereafter listed in Schedule A
hereof, and (B) the expiration of the period in which
LICENSEE is obligated to maintain confidential Technical
Information of LICENSOR pursuant to Section 12.1 hereof.
10.2 Termination by LICENSEE. LICENSEE may
terminate this Agreement effective as of December 31, 2003
or as of any anniversary thereof by giving LICENSOR prior
notice thereof unless sooner terminated as hereinafter
provided. Such notice shall be made in writing and shall be
given between 60 and 90 days prior to the effective date for
which such termination is to be effective. If LICENSEE
decides to terminate this Agreement for any reason,
LICENSEE shall provide LICENSOR, along with the
aforementioned notice of termination, with a written report
describing the reasons for such termination.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time effective as of
December 31, 2003 or as of any anniversary thereof upon at
least 30 days' notice to LICENSEE for any reason, and
LICENSOR may terminate this Agreement at any time upon
at least 30 days' notice to LICENSEE if LICENSEE shall
have failed to make any payment when due or at any time
breach any material term of this Agreement and such
payment is not made or such breach is not cured within any
applicable cure period specified in Article 11 of this
Agreement, or repeatedly provide inaccurate reports
hereunder, or if there has been a cessation by LICENSEE of
general operations or of work related to Licensed Products.
10.4 Effect of Termination. If this Agreement expires
or is terminated for any reason whatsoever, in addition to
any other remedies which one party may have against the
other: (1) all of LICENSEE's rights and licenses under this
Agreement shall cease, and LICENSEE shall immediately
return to LICENSOR all Technical Information furnished to
LICENSEE under this Agreement, together with all
reproductions, copies and summaries thereof; provided,
however, that LICENSEE may retain solely for archival
purposes one copy of all such documents in its legal
department files, (2) at LICENSOR's option, LICENSEE
shall, within 30 days of the date of such termination, either
(A) sell and deliver to LICENSOR at LICENSEE's direct
cost of manufacture any Licensed Products which shall then
be in the possession of LICENSEE, and, if requested by
LICENSOR, LICENSEE shall finish and deliver to
LICENSOR any Licensed Products in the process of
manufacture as soon as possible and, in any case, not later
than 30 days after receiving LICENSOR's request, and/or
(B) with respect to any unsold inventory and work in the
process of manufacture, to complete such work in process
and sell any remaining inventory during the period not to
exceed six months from the date of termination or expiration
of this Agreement provided that at the completion of such
six-month period, LICENSEE shall promptly destroy and
dispose of any Licensed Products (and Licensed Products in
the process of manufacture) not sold under this Section 10.4
and (3) if this Agreement is terminated for any reason on or
before December 31, 2003, if LICENSOR so elects,
LICENSEE agrees to negotiate in good faith the grant to
LICENSOR of a nonexclusive, royalty-free, irrevocable,
worldwide license with the right to grant sublicenses to
others to utilize all technical information, improvements
and/or modifications (whether or not the subject of patents
or pending patent applications) developed or invented by or
on behalf of LICENSEE and/or its sublicensees,
subcontractors, or agents hereunder through the date of such
termination of this Agreement relating to Light Valves, or
Licensed Products, and upon such termination, LICENSEE
shall provide LICENSOR in reasonable detail complete
information regarding such technical information,
improvements and/or modifications. Although such license
shall be free of any earned royalties, LICENSEE agrees that
it shall negotiate in good faith the amount of payment by
LICENSEE required for the granting of such license, which
amount shall in no event exceed the amount of minimum
annual royalties received as of the date of termination of this
Agreement by LICENSOR from LICENSEE pursuant to
Section 3.2 hereof. LICENSEE agrees upon written notice
by LICENSOR at any time after such payment is made to
deliver to LICENSOR within 30 days of such notice any
document or other instrument reasonably requested by
LICENSOR to convey such license rights to LICENSOR
such as, by way of example, confirmations or instruments of
conveyance or assignment. No termination of this
Agreement by expiration or otherwise shall release
LICENSEE or LICENSOR from any of its continuing
obligations hereunder, if any, or limit, in any way any other
remedy one party may have against the other party.
Notwithstanding the foregoing, LICENSEE's obligations to
LICENSOR under Sections 3.1, 3.6, 4.2, 4.3, 4.4, 4.5, 4.6,
6.1, 6.2, 7.2, 8.6, 8.7, 10.4, 12.1, and Articles 13 and 14
shall survive any termination or expiration of this
Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events
shall constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due
in a timely manner or a party's material breach or material
failure to punctually perform any of its duties and
obligations under this Agreement, which material breach or
failure, if curable, remains uncured for thirty (30) days after
written notice of such breach or failure is received by the
breaching party; or (b) a material misrepresentation is made
by a party in any representation or warranty contained in
this Agreement and the misrepresented facts or
circumstances, if curable, remain uncured thirty (30) days
after written notice of such misrepresentation is received by
the breaching party; and, in either case, if such breach or
misrepresentation is not curable, termination shall occur
thirty (30) days after such misrepresentation or breach at the
option of the non-breaching party; or
11.1.2 The failure by a party upon request to provide
the other party with adequate assurances of its performance
of all obligations under this Agreement upon: (a) such first
party's filing of a voluntary petition in bankruptcy; (b) the
filing of any involuntary petition to have such first party
declared bankrupt which has not been dismissed within
ninety (90) days of its filing; (c) the appointment of a
receiver or trustee for such first party which has not been
rescinded within ninety (90) days of the date of such
appointment; or (d) such first party otherwise becoming
insolvent or otherwise making an assignment for the benefit
of creditors.
11.2 Default by a Party. If there occurs an Event of
Default with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or
specific performance; and/or
(c) terminate this Agreement and the licenses granted
to LICENSEE hereunder whereupon the non-
defaulting party shall have no further
obligations under this Agreement except those
which expressly survive termination, and
except with respect to royalty payments due
and owing to LICENSOR as of the
termination date or any subsequent period
specified in Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees
for itself, its sublicensees, and their employees and agents
that for twenty (20) years from the later of the Effective
Date of this Agreement or the latest date of its receipt of
information disclosed to LICENSEE by LICENSOR
pursuant to this Agreement, such information shall be held
in confidence; provided, however, there shall be no
obligation to treat as confidential information which is or
becomes available to the public other than through a breach
of this obligation, or which was already possessed by
LICENSEE in writing (or otherwise provable to be in the
possession of LICENSEE) prior to the Effective Date of this
Agreement (and was not received from LICENSOR) or
which is shown by LICENSEE to have been received by it
from a third party who had the legal right to so disclose it
without restrictions and without breach of any agreement
with LICENSOR or its licensees. LICENSOR shall affix an
appropriate legend on all written documentation given to
LICENSEE which contains confidential information.
LICENSEE acknowledges that the list of patent applications
contained on Schedule A is confidential information of
LICENSOR. Other than for the oral information conveyed
during the training conducted pursuant to Sections 8.3 and
8.4 hereof all of which shall be deemed to be confidential
information, if confidential information is otherwise
conveyed orally by LICENSOR after training has been
completed, LICENSOR shall specify to LICENSEE at the
time such information is being conveyed (or in a subsequent
letter referring to the conversation) that the information
conveyed is confidential. It is understood and agreed that,
unless otherwise provided in a separate agreement between
LICENSEE and LICENSOR, LICENSEE has no obligation
hereunder to provide LICENSOR with any confidential or
proprietary information, and that LICENSOR shall have no
obligation hereunder to LICENSEE to maintain in
confidence or refrain from commercial or other use of any
information which LICENSOR is or becomes aware of
under this Agreement. The terms and provisions of this
Agreement or any other agreement between the parties shall
not be considered confidential, and the parties hereto
acknowledge that, pursuant to the Securities Exchange Act
of 1934, as amended, and the regulations promulgated
thereunder, LICENSOR may file copies of this Agreement
with the Securities and Exchange Commission and with
NASDAQ and with any other stock exchange on which
LICENSOR's securities may be listed. LICENSEE agrees
that for the period of time during which LICENSEE is
obligated to keep information confidential hereunder,
LICENSEE will not make, use, sell, lease or otherwise
dispose of products using or directly or indirectly derived
from Licensed Products, Light Valves, or Components, or
which otherwise comprise suspended particles, which when
subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the
suspension ("SPD Technology") unless an agreement
between LICENSOR and LICENSEE permitting it to do so
is in full force and effect and the royalties, if any, provided
in such agreement are being paid to LICENSOR on such
products. The foregoing restriction shall not apply to
products (i) which do not directly or indirectly incorporate
SPD Technology, such as, but not limited to, liquid crystal
devices, or electrochromic devices, or (ii) which incorporate
technology involving suspended particles, which when
subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the
suspension but which is independently developed and which
is not in any way directly or indirectly derived from any
Technical Information of LICENSOR or its licensees,
sublicensees, or any of their affiliates. LICENSEE shall have
the burden of proving by clear and convincing evidence that
the availability of any exception of confidentiality exists or
that the foregoing restrictions do not apply to a particular
product. Nothing contained in this section, however, shall be
construed as granting LICENSEE any rights or licenses with
respect to any Technical Information or patents of
LICENSOR or its other licensees or their sublicensees.
(b) After LICENSEE's exercise of its Training Option
under Section 8.1 of this Agreement, LICENSEE will have
the right to disclose to a subcontractor information of
LICENSOR received pursuant to Article 8 hereof; provided,
however, that LICENSEE shall only disclose such
information as is strictly necessary to enable said
subcontractor to perform its manufacturing task, and
provided that prior to disclosing any information to said
subcontractor, said subcontractor has signed a secrecy
agreement with LICENSEE at least as protective of
LICENSOR's Technical Information as the provisions of
this Agreement, including, without limitation, said
subcontractor's specific agreement to be bound by the
provisions of Section 12.1 hereof to the same extent as
LICENSEE. For such purposes, LICENSEE may develop a
standard form of secrecy agreement for LICENSOR's
approval, after which LICENSEE may use such secrecy
agreement with all subcontractors without LICENSOR's
prior approval of the secrecy agreement being necessary.
LICENSEE shall have all subcontractors sign said secrecy
agreement prior to the disclosure of Technical Information
to said subcontractor, and LICENSEE shall send
LICENSOR a copy of every such secrecy agreement within
thirty (30) days after the execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party
represents and warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery
of this Agreement by the officer or representative so doing,
and the consummation of the transactions contemplated
hereby, have been duly authorized by all necessary
corporate action by LICENSOR and LICENSEE and this
Agreement is a valid and binding obligation enforceable
against the parties in accordance with its terms, except to the
extent limited by bankruptcy, insolvency, moratorium and
other laws of general application relating to general
equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with its
rights and obligations pursuant to any agreement by a party
and any other entity; and
13.1.3 Publicity. The parties shall have the right to use
non-confidential information, including but not limited to
information concerning this Agreement, for marketing, sales,
technical assistance, investor relations, disclosure and public
relations purposes, and that information permitted to be
disclosed by a party under this Section 13.1.3 may appear on
such party's (or its subsidiaries' or sublicensees') Internet
web site, along with links to the Internet web sites of the
other party and its subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR
represents and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR
represents and warrants that it has the right to convey the
rights and licenses granted by this Agreement, and otherwise
to perform its obligations under this Agreement. LICENSOR
has caused its employees who are employed to do research,
development, or other inventive work to disclose to it any
invention or information within the scope of this Agreement
and to assign to it rights in such inventions and information
in order that LICENSEE shall receive, by virtue of this
Agreement, the licenses granted to it under Section 2.1
hereof.
13.2.2 Infringement. As of the date hereof,
LICENSOR is not aware of any claim for patent
infringement or the misappropriation of trade secrets, being
asserted against it by any third party; or of any infringement
of the patents listed on Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make
no guaranty or warranty to one another under this
Agreement (a) that LICENSEE will be able to develop,
manufacture, sell or otherwise commercialize Licensed
Products, or (b) as to the validity of any patent.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be
interpreted, construed, governed and enforced in accordance
with and governed by the laws of the State of New York,
and LICENSOR and LICENSEE hereby submit to the
exclusive jurisdiction of the state or federal courts located in
the County of Nassau and State of New York for such
purposes.
14.2 Confidentiality In Court Proceeding. In order to
protect and preserve the confidential information of a party
which the parties recognize may be exchanged pursuant to
the provisions of this Agreement, the disclosing party may
request, and the receiving party shall not oppose, the court in
any action relating to this Agreement to enter a protective
order to protect information which is confidential
information under Section 12.1 and to seal the record in the
action or to hold the proceedings, or portion of the
proceedings, in camera; provided, that the requested terms
do not prejudice the receiving party's interests. Nothing,
however, shall preclude either party from thereafter moving
to unseal its own records or to have matter and information
designated as confidential under any relevant protective
order designated otherwise in accordance with the
circumstances as they shall appear at that time.
14.3 Severability. If any provision of this Agreement
is declared or found to be illegal, unenforceable or void, the
parties shall negotiate in good faith to agree upon a
substitute provision that is legal and enforceable and is as
nearly as possible consistent with the intentions underlying
the original provision. If the remainder of this Agreement is
not materially affected by such declaration or finding and is
capable of substantial performance, then the remainder shall
be enforced to the extent permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing
to the contrary, the failure of either party to insist in any one
or more instances upon the strict performance of any one or
more of the provisions of this Agreement, or to exercise any
right contained in this Agreement or provided by law, shall
not constitute or be construed as a waiver or relinquishment
of the performance of such provision or right or the right
subsequently to demand such strict performance or exercise
of such right, and the rights and obligations of the parties
shall continue unchanged and remain in full force and effect.
14.5 Captions. The captions and headings in this
Agreement are inserted for convenience and reference only
and in no way define or limit the scope or content of this
Agreement and shall not affect the interpretation of its
provisions.
14.6 Assignment. This Agreement shall be binding on
and shall inure to the benefit of the parties and their
successors and assigns. However, LICENSEE agrees that it
shall not assign this Agreement or its rights hereunder
without the prior written consent of LICENSOR except to a
successor to substantially all of its business relating to Light
Valves and whose obligations hereunder are guaranteed to
LICENSOR by LICENSEE. LICENSOR may assign all of
its rights and obligations hereunder to any successor to any
of its business interests or to any company controlling or
controlled by LICENSOR. All assignees shall expressly
assume in writing the performance of all the terms and
conditions of this Agreement to be performed by the
assigning party, and an originally signed instrument of such
assumption and assignment shall be delivered to the non-
assigning party within 30 days of the execution of such
instrument.
14.7 Schedules. All Schedules attached to this
Agreement shall be deemed to be a part of this Agreement as
if set forth fully in this Agreement.
14.8 Entire Agreement. This Agreement constitutes
the entire understanding and agreement between
LICENSOR and LICENSEE with respect to the subject
matter hereof, supersedes all prior agreements, proposals,
understandings, letters of intent, negotiations and
discussions with respect to the subject matter hereof and can
be modified, amended, supplemented or changed only by an
agreement in writing which makes specific reference to this
Agreement and which is executed in writing by the parties;
provided, however, that either party may unilaterally waive
in writing any provision imposing an obligation on the other.
14.9 Notices. Any notice required or permitted to be
given or made in this Agreement shall be in writing and shall
be deemed given on the earliest of (i) actual receipt,
irrespective of method of delivery, (ii) on the delivery day
following dispatch if sent by express mail (or similar next
day courier service), or (iii) on the sixth day after mailing by
registered or certified air mail, return receipt requested,
postage prepaid and addressed as follows:
LICENSOR: Robert L. Saxe, President
Research Frontiers Incorporated
240 Crossways Park Drive
Woodbury, New York 11797-2033 USA
Facsimile: (516) 364-3798
Telephone: (516) 364-1902
LICENSEE: Sabine Lang
Managing Director
GLOBAL MIRROR GmbH & Co. KG
101 Tillessen Boulevard
Ridgeway, South Carolina 29130 USA
Facsimile: (803) 337-5205
Telephone: (803) 337-5264
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code. In the event that either party
should file a petition under the federal bankruptcy laws, or
that an involuntary petition shall be filed against such party,
the parties intend that the non-filing party shall be protected
in the continued enjoyment of its rights hereunder to the
maximum feasible extent including, without limitation, if it
so elects, the protection conferred upon licensees under
section 365(n) of Title 17 of the U.S. Code. Each party
agrees that it will give the other party immediate notice of
the filing of any voluntary or involuntary petition under the
federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits
hereto have been drafted jointly by the parties and in the
event of any ambiguities in the language hereof, there shall
no be inference drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed
in any number of counterparts, each of which shall be
deemed an original, but all of which shall constitute one and
the same instrument.
14.13 Status of the Parties. The status of the parties
under this Agreement shall be solely that of independent
contractors. No party shall have the right to enter into any
agreements on behalf of the other party nor shall it represent
to any person that it has such right or authority.
The parties, through their duly authorized
representatives, and intending to be legally bound, have
executed this Agreement, as of the date and year first above
written, whereupon it became effective in accordance with
its terms.
RESEARCH FRONTIERS INCORPORATED
By:/s/ Robert L. Saxe
Robert L. Saxe, President
Date: December 13, 1999
GLOBAL MIRROR GmbH & Co. KG
By:/s/ Sabine Lang
Sabine Lang, Managing Director
Date: December 3, 1999
Schedule A
(As of December 3, 1999)
LIST OF UNITED STATES AND
FOREIGN PATENTS
AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
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 07/08/14
5,650,872 Robert L. Saxe et al
"Light Valve Containing Ultrafine Particles"
(JDR-108) [CIP of S.N. 351,665] 07/22/97 07/22/14
5,728,251 Joseph A. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve"
(JDR-111) 03/17/98 09/27/15
PENDING APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities and
Exchange Commission]
[EXHIBIT 10.16- 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.]
WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
THERMOVIEW INDUSTRIES, INC.
This License Agreement ("Agreement") effective as of March
21, 2000 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
THERMOVIEW INDUSTRIES, INC., a Delaware corporation
("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves and Licensed Products (both as hereinafter defined)
and of methods and apparatus relating to products incorporating
such concepts; and is possessed of and can convey information
and know-how for such products and rights to manufacture, use
and sell such products; and
WHEREAS, LICENSEE is interested in manufacturing and
selling Licensed Products; and
WHEREAS, LICENSEE desires to acquire from LICENSOR,
and LICENSOR desires to grant to LICENSEE, certain rights and
licenses with respect to such technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises and
the mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the
respective meanings set forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is
the last date of formal execution of this Agreement by duly
authorized representatives of the parties to this Agreement as
indicated on the signature page of this Agreement.
"Licensed Product" means a Light Valve Architectural Window
Product incorporating a Light Valve. The term "Licensed
Product" shall not include Light Valves used or intended for use
in any product other than as specifically defined herein, such as
other window products not specifically defined herein, windows
for transportation vehicles, including, but not limited to passenger
cars, recreational vehicles, trucks, mobile cranes, trains, aircraft,
boats, vans, sport utility vehicles, space craft and space-stations,
and non-window products such as but not limited to displays,
eyewear, sunvisors, toys, mirrors or filters for scientific
instruments, lamps or contrast enhancement of displays. The term
"display" means any device for displaying letters, numbers, images
or other indicia or patterns. Nothing contained herein shall permit
LICENSEE to sell, lease, or otherwise dispose of a Light Valve
which is not combined or intended to be combined as described
above into a Light Valve Architectural Window Product.
"Licensed Territory " means all countries of the world except
North and South Korea.
"Light Valve" means a variable light transmission device
comprising: a cell including cell walls, containing or adapted to
contain an activatable material, described hereinafter, such that a
change in the optical characteristics of the activatable material
affects the characteristics of light absorbed by, transmitted through
and/or reflected from the cell; means incorporated in or on the
cell, or separate therefrom for applying an electric or magnetic
field to the activatable material within the cell; and coatings,
(including, but not limited to, electrodes), spacers, seals, electrical
and/or electronic components, and other elements incorporated in
or on the cell. The activatable material, which the cell contains or
is adapted to contain, includes in it solid suspended particles,
which when subjected to a suitable electric or magnetic field,
orient to produce a change in the optical characteristics of the
device, and may be in the form a liquid suspension, gel, film or
other material.
"Light Valve Architectural Window Product" means a Light Valve
used or intended for use solely as a window integrally
incorporated in, or attached as a fixture to the external structure or
internal structure of any building, whether permanent or
temporary, and whether above or below ground.
The "Net Selling Price" of Licensed Products on which royalties
are payable shall be the greater of the following: (A) 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, minus the genuine selling
price (which, for purposes of this calculation shall be deemed to
be not more than $100 per window) of a window similar to the
Licensed Product but not incorporating a Light Valve; (B) 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, multiplied by a fraction, the
numerator of which is the cost of all components included in the
window associated with the incorporation of a Light Valve, and
the denominator of which is the total manufacturing cost for such
product; and (C) $100 per window. The aforementioned $100
figure specified in clauses (A) and (C) above shall be adjusted
upward as of each January 1st hereafter beginning on January 1,
2001 by any increase in the Producer Price Index for Finished
Goods (the "Index") for the 12 month period ending in December
of the prior year, prepared by the Bureau of Labor Statistics of the
United States Department of Labor (or if the Index is not then
being published, the most nearly comparable successor index). In
calculating a genuine selling price of a product for the above
calculation, such price may be reduced only by the applicable
proportions of the following if, and to the extent that, amounts in
respect thereof are reflected in such selling price: (i) normal trade
discounts actually allowed; (ii) sales, use or excise and added
value taxes and custom duties paid; (iii) if the genuine selling price
is other than f.o.b. factory, amounts paid for f.o.b. transportation
of the product to the customer's premises or place of installation
or delivery; (iv) insurance costs and the costs of packing material,
boxes, cartons and crates required for shipping; provided,
however, that for purposes of this calculation, the genuine selling
price of a product may not be less than 90% of the gross selling
price of said product after all deductions therefrom. If a product
is leased, sold, used or otherwise disposed of on terms not
involving a bona fide arm's length sale to an unaffiliated third
party, then the Net Selling Price for such transactions shall be
deemed to be the Net Selling Price as defined above for identical
products sold to a nonaffiliated customer nearest to the date of
such lease, sale, use, or other disposition.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including
(by way of example) drawings, written recitations of data,
specifications, parts, lists, assembly procedures, operating and
maintenance manuals, test and other technical reports, know-how
of LICENSOR, and the like owned or controlled by LICENSOR,
to the extent they exist, that relate to Light Valves, Licensed
Products and/or to the suspensions or other components used or
usable for Licensed Products or Light Valves including, but not
limited to, particles, particle precursors, coatings, polymers, liquid
suspensions and suspending liquids, or any combination thereof,
and that consist of concepts invented or developed by LICENSOR.
Know-how of LICENSOR's suppliers and of LICENSOR's other
licensees and their sublicensees under licenses from LICENSOR
shall not be considered Technical Information owned or controlled
by LICENSOR.
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement, LICENSOR
hereby grants LICENSEE a non-exclusive right and license to use
(a) all of the Technical Information 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, and to lease, sell,
or otherwise dispose of Licensed Products in the Licensed
Territory.
2.2 No Other Rights. LICENSEE agrees that, except for the
specific licenses granted to it under Section 2.1 hereof,
LICENSEE has not acquired any rights or licenses under this
Agreement to use Light Valves or any components thereof made
by or for LICENSEE or its sublicensees pursuant to this
Agreement except for use in Licensed Products.
2.3 Sublicenses. LICENSEE shall have the right to grant
non-exclusive sublicenses to any of its wholly-owned and
controlled subsidiaries, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing that it wishes to become
a sublicensee hereunder prior to doing so and agrees to be bound
by the terms and conditions of this Agreement. All sublicenses
shall (i) be non-exclusive, (ii) shall terminate with the termination
of the rights and licenses granted to LICENSEE under Section 2.1
hereof, and be otherwise limited in accordance with the limitations
and restrictions which are imposed on the rights and licenses
granted to LICENSEE hereunder, (iii) contain confidentiality
provisions no less protective than those contained in Section 12.1
hereof, and (iv) shall contain such other terms, conditions, and
licenses as are necessary to enable LICENSEE to fulfill its
obligations hereunder. LICENSEE shall send LICENSOR a copy
of every sublicense agreement or other agreement entered into by
LICENSEE in connection with a sublicense hereunder within
thirty (30) days of the execution thereof. LICENSOR may
terminate any such sublicense if there is any change in the
ownership or control of a sublicensee.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-KEEPING.
3.1 Royalties and Reports on Net Sales. During the term of
this Agreement, LICENSEE agrees to pay LICENSOR an earned
royalty which shall be five percent (5%) of the Net Selling Price
of Licensed Products which embody, or the manufacture of which
utilizes, any of the rights granted under Section 2.1 hereof, and
which are manufactured by or for LICENSEE and sold, leased,
used or otherwise disposed of by or for LICENSEE or a permitted
sublicensee. Payments under this Section 3.1 shall be made on a
quarterly basis and made within 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.
LICENSEE shall also furnish to LICENSOR at the same time it
becomes available to any third party, a copy of each brochure,
price list, advertisement or other marketing and promotional
materials prepared, published or distributed by LICENSEE or its
sublicensees relating to Licensed Products.
3.2 Minimum Royalties - Except as otherwise specifically
provided for in Section 3.3, 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]
3.3 Alternative Minimum Royalties if Training Option has
been Exercised - If LICENSEE has exercised the Training Option
set forth in Section 8.1, 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]
3.4 Time and Method of Payment. The initial payment under
Section 3.2 or Section 3.3, as applicable, shall be paid to
LICENSOR within 10 days of the Effective Date of this
Agreement and may be made, at LICENSEE's option either in
cash or by delivering to LICENSOR [Confidential Information
Omitted and filed separately with the Securities and Exchange
Commission] shares of common stock of LICENSEE issued in the
name of Research Frontiers Incorporated, and each subsequent
payment under either Section 3.2 or Section 3.3, as applicable, to
LICENSOR shall be made on or before January 31 of each license
year commencing January 1, 2001. With respect to minimum
annual royalty payments dues under Section 3.2 or 3.3 for the
calendar years beginning January 1, 2001, 2002, and, 2003,
payment may be made at LICENSEE's option either in cash or, if
LICENSEE is a public company and current in all of its reporting
requirements under the Securities Exchange Act of 1934, as
amended, and the regulations promulgated thereunder, by
delivering to LICENSOR of the number of shares of common
stock of LICENSEE issued in the name of Research Frontiers
Incorporated and rounded up to the nearest 100 shares equal to:
(A) the dollar amount of the payment to be made in stock, divided
by (B) the lesser of (X) 80% of the average closing price per share
of common stock of LICENSEE on the principal exchange on
which such shares of common stock are principally traded for the
five trading days immediately prior to the date LICENSEE
instructs its stock transfer agent to issue such shares, and (Y)
$4.00 per share. All shares delivered to LICENSOR in payment
hereunder shall be considered fully paid and non-assessable. All
other payments shall be due on the date specified in this
Agreement, or if no date is specified, within 30 days of invoice.
All payments made to LICENSOR (except the initial minimum
royalty payment if made by delivery of LICENSEE's common
stock as aforesaid) 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.: 904-709361, ABA Wire Code
No.: 021 000 021, or to such other account or place, as
LICENSOR may specify in a notice to LICENSEE.
3.5 Sales, Use and Returns. Licensed Products shall be
considered as sold, leased or used and royalties shall accrue on the
earlier of when such Licensed Products are billed out, or when
delivered, shipped or mailed to the customer. If as a result of a
price reduction or a return of Licensed Products previously sold,
a credit or refund to a customer is given on part or all of the sale
price of such Licensed Products, a credit shall be allowed against
royalties accruing thereafter under this Agreement equal to the
royalty paid on that part of the sales price so credited or refunded.
3.6 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 3.1 hereof. Such an audit
shall be made upon reasonable advance notice to LICENSEE and
during usual business hours no more frequently than annually.
The cost of the audit shall be borne by LICENSOR, unless the
audit shall disclose a breach by LICENSEE of any term of this
Agreement, or an underpayment error in excess of two percent of
the total monies paid to LICENSOR by LICENSEE during the
audited period, in which case LICENSEE shall bear the full cost
of such audit. LICENSEE agrees to pay LICENSOR all additional
monies that are disclosed by the audit to be due and owing to
LICENSOR within thirty days of the receipt of the report.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of Licensed
Products that is not in strict accordance with the provisions of this
Agreement shall be deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products is
sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to LICENSOR or
its affiliates for any claims, warranties, or liability relating to such
Licensed Products. LICENSEE agrees to take all steps to
reasonably assure itself that Licensed Products sold, leased or
otherwise disposed of by or for LICENSEE is being used for
permitted purposes only.
4.3 Laws and Regulations. LICENSEE agrees that it shall be
solely responsible for complying with all laws and regulations
affecting the manufacture, use and sale or other disposition of
Licensed Products by LICENSEE and its sublicensees, and for
obtaining all approvals necessary from governmental agencies and
other entities. LICENSEE agrees to maintain a file of all such
approvals and to send LICENSOR a copy of all such approvals
(including English translations thereof in the case of approvals
required by any foreign country) within 10 business days of any
written request for such copies by LICENSOR. LICENSEE
represents and warrants to LICENSOR that no approval from any
governmental agency or ministry, or from any third party, is
required to effectuate the terms of this Agreement or the
transactions contemplated hereby.
4.4 Purchase of Components from Others. 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,
materials, suspensions, films, polymers, coatings, particle
precursors, and particles (each, a "Component"), which
LICENSEE or its sublicensees makes, has made for it, or
purchases from any third party for use in Licensed Products shall
be deemed to have been manufactured at least in part using the
Technical Information provided by LICENSOR. LICENSEE and
its sublicensees each hereby agrees that (i) all Components shall
be used only in strict accordance with the provisions of this
Agreement, and that such Components may not be used for any
other purpose or resold by LICENSEE or its sublicensees except
as specifically permitted by the license granted in Section 2.1
hereof, and (ii) LICENSEE and its sublicensees will only look to
the manufacturer or supplier of such Component or other item
used by LICENSEE or its sublicensees and not to LICENSOR or
its affiliates for any claims, warranties, or liability relating to such
Component or other item. LICENSEE acknowledges that
LICENSOR has not made any representations or warranties
regarding the availability of any Component, or the price thereof,
and that in all respects LICENSEE shall deal directly with the
suppliers of such Components and will obtain from them
information regarding availability, pricing, and/or other terms
relating to such Components.
4.5 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Licensed Product or
of any material, Component, or information provided hereunder,
and LICENSEE expressly acknowledges and agrees that any such
material, Component or information provided by LICENSOR
hereunder is provided "AS IS" and that LICENSOR makes no
warranty with respect thereto and DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT
NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, RELATED THERETO, ITS USE OR ANY
INABILITY TO USE IT, OR THE RESULTS OF ITS USE. Except
for any breach of the terms of this Agreement, in no event shall
any party to this Agreement be liable for any damages, whether in
contract or tort (including negligence), including but not limited
to direct, consequential, special, exemplary, incidental and indirect
damages, arising out of or in connection with this Agreement or
the use, the results of use, or the inability to use any Licensed
Product, material, Component or information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it will
only incorporate Components received from authorized suppliers
into Licensed Products and for no other purpose, and that
LICENSEE will not directly or indirectly attempt to reverse-
engineer any material provided to it hereunder by LICENSEE or
any supplier of any Component.
4.7 Personnel. LICENSEE agrees to assign personnel from
its technical staff who shall be responsible for the development of
Licensed Products during the term of this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Licensed Products or other products
incorporating Light Valves are and shall remain the exclusive
property of the adopting party, and the other party shall not obtain
any rights and license to such marks under this Agreement, but
may inform others that the adopting party has produced Licensed
Products or products incorporating Light Valves under such mark
or marks. LICENSOR may require LICENSEE or its permitted
sublicensees to indicate on packaging that such product is licensed
from Research Frontiers Incorporated or to otherwise include
language and/or designations approved by LICENSOR indicating
an affiliation with Research Frontiers Incorporated.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times ample
product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement.
6.2 Indemnification. LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an "Indemnifying
Party"), each hereby indemnify and agree to hold harmless
LICENSOR and its shareholders, officers, directors, agents and
employees (each, an "Indemnified Party"), against any liability,
damage, loss, fine, penalty, claim, cost or expense (including
reasonable costs of investigation and settlement and attorneys',
accountants' and other experts' fees and expenses) arising out of
any action or inaction by any Indemnifying Party relating to this
Agreement including an Indemnifying Party's manufacture, sale,
use, lease or other disposition of Licensed Products, and related
materials, or other use of the information and rights granted
hereunder. Any knowledge of LICENSEE's or its sublicensee's
activities by LICENSOR or its representatives shall in no way
impose any liability on LICENSOR or reduce the responsibilities
of LICENSEE hereunder or relieve it from any of its obligations
and warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the
right to file patent applications in the United States and in foreign
countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or on
behalf of LICENSEE, LICENSEE's sublicensees and LICENSOR
after the Effective Date of this Agreement, if any, which relate in
any way to or are useful in the design, operation, manufacture and
assembly of Licensed Products, and/or to the suspensions or other
components used or usable in Licensed Products shall not be
included in this Agreement. Upon written request by the non-
inventing party, LICENSOR and LICENSEE shall negotiate with
each other regarding the grant of nonexclusive rights and licenses
to use such improvements and modifications, but neither party
shall be obligated to grant such rights and licenses to one another.
(b) During the term of this Agreement each of the parties
hereto agrees to inform the other in writing (without any obligation
to reveal details which would be confidential information), at least
as frequently as once a year in January of each calendar year, if
any significant improvements or modifications have been made
relating to the subject matter of this Agreement, and as to the
general nature of any such improvements and modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but shall
not be required to, voluntarily and without additional cost to
LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE rights
in such certain future improvements and modifications, and any
information so disclosed will be considered Technical Information
which LICENSEE shall be obligated to keep confidential pursuant
to Section 12.1 of this Agreement. In connection therewith,
LICENSOR, may voluntarily add patents and/or patent
applications to Schedule A hereof. No disclosure of any
information by LICENSOR shall in any way establish a course of
dealing or otherwise require LICENSOR to make any future
disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that any
patent application now or hereafter listed on or incorporated into
Schedule A shall be filed or maintained in any foreign country. 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 specifically so designated by LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. LICENSEE's Training Option. LICENSEE shall have
the option of receiving training from LICENSOR (the "Training
Option"), provided that LICENSEE exercises such Training
Option by sending LICENSOR a notice stating that LICENSEE is
exercising its Training Option which notice is received by
LICENSOR on or before December 31, 2000 (time being of the
essence and the Training Option expiring null and void if not
exercised and notice received by LICENSOR on or before
December 31, 2000) . Only if such Training Option is exercised
in a timely manner shall the provisions of Sections 3.3, 8.2, 8.3,
and 8.4 be in effect.
8.2. Documentation Provided if Training Option is
Exercised. Within thirty business days after the Training Option is
exercised by LICENSEE, LICENSOR shall furnish LICENSEE
with all Technical Information owned or controlled by
LICENSOR, which is reasonably necessary or desirable 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 an Activatable Material which
contains confidential and proprietary information of LICENSOR
and (2) photocopies of all U.S. Patents and patent applications
relating to Licensed Products owned or controlled by LICENSOR
as of the date that the Training Option is exercised. 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. Patents and patent applications
purchased by LICENSOR from any third party shall not be
considered owned or controlled by LICENSOR until and unless
LICENSOR has been notified in writing that it has received
written assignments relating to such patents and patent
applications.
8.3 Training. 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 LICENSEE's exercise of its Training
Option under Section 8.1 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's
technical staff shall provide up to 200 man-hours assistance during
such period at no cost to LICENSEE. Additionally, there shall be
no cost to LICENSEE for materials used for training during the
initial training at LICENSOR's facility.
8.4 Materials and Additional Training. Upon request by
LICENSEE after LICENSEE's exercise of its Training Option
under Section 8.1 of this Agreement, during the term of this
Agreement and when mutually convenient to LICENSOR and
LICENSEE, LICENSOR shall supply LICENSEE with additional
training and with small quantities of materials related to Licensed
Products for experimental use only by LICENSEE, and shall
charge LICENSEE $750 per man/day plus the cost of any other
materials used in providing such training or making such
materials, plus the cost of shipping such materials to LICENSEE.
Each invoice submitted by LICENSOR for such service shall
include detailed explanations of the charges, and, if requested by
LICENSEE, copies of receipts.
8.5 Inquiries. LICENSEE and LICENSOR may also at any
time during the term of this Agreement make reasonable inquiry
by telephone, facsimile or mail to one another in regard to any
information or data furnished pursuant to this Agreement.
8.6 Visits. During all visits by either party to the facilities of
the other party, visitors shall comply with all reasonable rules of
the host company, and each party to this Agreement will
indemnify and hold the other party harmless from any liability,
claim or loss whatsoever (i) for any injury to, or, death of, any of
its employees or agents while such persons are present at the
facility of the other party; and (ii) for any damages to its own
property or to the property of any such employee or agent which
may occur during the presence of any such person at the facility of
the other party, regardless of how such damage occurs, if the rules
of the host are followed.
8.7 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the other
shall be used solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall provide
appropriate notices of patents, or other similar notice of the patent
rights of the other party on all products utilizing the patented
inventions of the other party. Either party may add its own patent
notice to any copy or embodiment which contains its patented
inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and
exclusive owner of the patents and patent applications listed on
Schedule A, and that, except for the rights granted hereunder,
LICENSEE shall not have any rights or attempt to assert any
ownership rights in and to those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend from
the Effective Date of this Agreement to the date of termination of
this Agreement. Unless sooner terminated or extended, as herein
provided for below, this Agreement shall terminate upon the
expiration of the later of (A) the last to expire of the patents now
or hereafter listed in Schedule A hereof, and (B) the expiration of
the period in which LICENSEE is obligated to maintain
confidential Technical Information of LICENSOR pursuant to
Section 12.1 hereof.
10.2 Termination by LICENSEE. LICENSEE may terminate
this Agreement effective as of December 31, 2003 or as of any
anniversary thereof by giving LICENSOR prior notice thereof
unless sooner terminated as hereinafter provided. Such notice
shall be made in writing and shall be given between 60 and 90
days prior to the effective date for which such termination is to be
effective. If LICENSEE decides to terminate this Agreement for
any reason, LICENSEE shall provide LICENSOR, along with the
aforementioned notice of termination, with a written report
describing the reasons for such termination. Notwithstanding
anything contained herein to the contrary, LICENSEE may
terminate this Agreement effective as of December 31, 2001 if by
December 31, 2001 Light Valve film samples are not made
available to third party recipients by any of LICENSOR's licensees
or their permitted sublicensees.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time effective as of December 31,
2003 or as of any anniversary thereof upon at least 30 days' notice
to LICENSEE for any reason, and LICENSOR may terminate this
Agreement at any time upon at least 30 days' notice to LICENSEE
if LICENSEE shall have failed to make any payment when due or
at any time breach any material term of this Agreement and such
payment is not made or such breach is not cured within any
applicable cure period specified in Article 11 of this Agreement,
or repeatedly provide inaccurate reports hereunder, or if there has
been a cessation by LICENSEE of general operations or of work
related to Licensed Products.
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall cease,
and LICENSEE shall immediately return to LICENSOR all
Technical Information furnished to LICENSEE under this
Agreement, together with all reproductions, copies and summaries
thereof; provided, however, that LICENSEE may retain solely for
archival purposes one copy of all such documents in its legal
department files, (2) at LICENSOR's option, LICENSEE shall,
within 30 days of the date of such termination, either (A) sell and
deliver to LICENSOR at LICENSEE's direct cost of manufacture
any Licensed Products which shall then be in the possession of
LICENSEE, and, if requested by LICENSOR, LICENSEE shall
finish and deliver to LICENSOR any Licensed Products in the
process of manufacture as soon as possible and, in any case, not
later than 30 days after receiving LICENSOR's request, and/or (B)
with respect to any unsold inventory and work in the process of
manufacture, to complete such work in process and sell any
remaining inventory during the period not to exceed six months
from the date of termination or expiration of this Agreement
provided that at the completion of such six-month period,
LICENSEE shall promptly destroy and dispose of any Licensed
Products (and Licensed Products in the process of manufacture)
not sold under this Section 10.4 and (3) if this Agreement is
terminated for any reason on or before December 31, 2003,
LICENSEE hereby grants to LICENSOR a nonexclusive,
royalty-free, irrevocable, worldwide license with the right to grant
sublicenses to others to utilize all technical information,
improvements and/or modifications (whether or not the subject of
patents or pending patent applications) developed or invented by
or on behalf of LICENSEE and/or its sublicensees, subcontractors,
or agents hereunder through the date of such termination of this
Agreement relating to Light Valves, or Licensed Products, and
upon such termination, LICENSEE shall provide LICENSOR in
reasonable detail complete information regarding such technical
information, improvements and/or modifications. The foregoing
license shall be self-effectuating, but LICENSEE agrees upon
written notice by LICENSOR at any time hereafter to deliver to
LICENSOR within 30 days of such notice any document or other
instrument reasonably requested by LICENSOR to convey such
license rights to LICENSOR such as, by way of example,
confirmations or instruments of conveyance or assignment. No
termination of this Agreement by expiration or otherwise shall
release LICENSEE or LICENSOR from any of its continuing
obligations hereunder, if any, or limit, in any way any other
remedy one party may have against the other party.
Notwithstanding the foregoing, LICENSEE's obligations to
LICENSOR under Sections 3.1, 3.6, 4.2, 4.3, 4.4, 4.5, 4.6, 6.1,
6.2, 7.2, 8.6, 8.7, 10.4, 12.1, and Articles 13 and 14 shall survive
any termination or expiration of this Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in a
timely manner or a party's material breach or material failure to
punctually perform any of its duties and obligations under this
Agreement, which material breach or failure, if curable, remains
uncured for thirty (30) days after written notice of such breach or
failure is received by the breaching party; or (b) a material
misrepresentation is made by a party in any representation or
warranty contained in this Agreement and the misrepresented facts
or circumstances, if curable, remain uncured thirty (30) days after
written notice of such misrepresentation is received by the
breaching party; and, in either case, if such breach or
misrepresentation is not curable, termination shall occur thirty (30)
days after such misrepresentation or breach at the option of the
non-breaching party; or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's filing
of a voluntary petition in bankruptcy; (b) the filing of any
involuntary petition to have such first party declared bankrupt
which has not been dismissed within ninety (90) days of its filing;
(c) the appointment of a receiver or trustee for such first party
which has not been rescinded within ninety (90) days of the date
of such appointment; or (d) such first party otherwise becoming
insolvent or otherwise making an assignment for the benefit of
creditors.
11.2 Default by a Party. If there occurs an Event of Default
with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or specific
performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting
party shall have no further obligations under this
Agreement except those which expressly survive
termination, and except with respect to royalty payments
due and owing to LICENSOR as of the termination date
or any subsequent period specified in Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for
itself, its sublicensees, and their employees and agents that for
twenty (20) years from the later of the Effective Date of this
Agreement or the latest date of its receipt of information disclosed
to LICENSEE by LICENSOR pursuant to this Agreement, such
information shall be held in confidence; provided, however, there
shall be no obligation to treat as confidential information which is
or becomes available to the public other than through a breach of
this obligation, or which was already possessed by LICENSEE in
writing (or otherwise provable to be in the possession of
LICENSEE) prior to the Effective Date of this Agreement (and
was not received from LICENSOR) or which is shown by
LICENSEE to have been received by it from a third party who had
the legal right to so disclose it without restrictions and without
breach of any agreement with LICENSOR or its licensees.
LICENSOR shall affix an appropriate legend on all written
documentation given to LICENSEE which contains confidential
information. LICENSEE acknowledges that the list of patent
applications contained on Schedule A is confidential information
of LICENSOR. Other than for the oral information conveyed
during the training conducted pursuant to Sections 8.3 and 8.4
hereof all of which shall be deemed to be confidential information,
if confidential information is otherwise conveyed orally by
LICENSOR after training has been completed, LICENSOR shall
specify to LICENSEE at the time such information is being
conveyed (or in a subsequent letter referring to the conversation)
that the information conveyed is confidential. It is understood and
agreed that, unless otherwise provided in a separate agreement
between LICENSEE and LICENSOR, LICENSEE has no
obligation hereunder to provide LICENSOR with any confidential
or proprietary information, and that LICENSOR shall have no
obligation hereunder to LICENSEE to maintain in confidence or
refrain from commercial or other use of any information which
LICENSOR is or becomes aware of under this Agreement. The
terms and provisions of this Agreement or any other agreement
between the parties shall not be considered confidential, and the
parties hereto acknowledge that, pursuant to the Securities
Exchange Act of 1934, as amended, and the regulations
promulgated thereunder, LICENSOR may file copies of this
Agreement with the Securities and Exchange Commission and
with NASDAQ and with any other stock exchange on which
LICENSOR's securities may be listed. LICENSEE agrees that for
the period of time during which LICENSEE is obligated to keep
information confidential hereunder, LICENSEE will not make,
use, sell, lease or otherwise dispose of products using or directly
or indirectly derived from Licensed Products, Light Valves, or
Components, or which otherwise comprise suspended particles,
which when subjected to a suitable electric or magnetic field,
orient to produce a change in the optical characteristics of the
suspension ("SPD Technology") unless an agreement between
LICENSOR and LICENSEE permitting it to do so is in full force
and effect and the royalties, if any, provided in such agreement are
being paid to LICENSOR on such products. The foregoing
restriction shall not apply to products (i) which do not directly or
indirectly incorporate SPD Technology, such as, but not limited to,
liquid crystal devices, or electrochromic devices, or (ii) which
incorporate technology involving suspended particles, which when
subjected to a suitable electric or magnetic field, orient to produce
a change in the optical characteristics of the suspension but which
is independently developed and which is not in any way directly
or indirectly derived from any Technical Information of
LICENSOR or its licensees, sublicensees, or any of their affiliates.
LICENSEE shall have the burden of proving by clear and
convincing evidence that the availability of any exception of
confidentiality exists or that the foregoing restrictions do not apply
to a particular product. Nothing contained in this section,
however, shall be construed as granting LICENSEE any rights or
licenses with respect to any Technical Information or patents of
LICENSOR or its other licensees or their sublicensees.
(b) After LICENSEE's exercise of its Training Option under
Section 8.1 of this Agreement, LICENSEE will have the right to
disclose to a subcontractor information of LICENSOR received
pursuant to Article 8 hereof; provided, however, that LICENSEE
shall only disclose such information as is strictly necessary to
enable said subcontractor to perform its manufacturing task, and
provided that prior to disclosing any information to said
subcontractor, said subcontractor has signed a secrecy agreement
with LICENSEE at least as protective of LICENSOR's Technical
Information as the provisions of this Agreement, including,
without limitation, said subcontractor's specific agreement to be
bound by the provisions of Section 12.1 hereof to the same extent
as LICENSEE. For such purposes, LICENSEE may develop a
standard form of secrecy agreement for LICENSOR's approval,
after which LICENSEE may use such secrecy agreement with all
subcontractors without LICENSOR's prior approval of the secrecy
agreement being necessary. LICENSEE shall have all
subcontractors sign said secrecy agreement prior to the disclosure
of Technical Information to said subcontractor, and LICENSEE
shall send LICENSOR a copy of every such secrecy agreement
within thirty (30) days after the execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents and
warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery of this
Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have been
duly authorized by all necessary corporate action by LICENSOR
and LICENSEE and this Agreement is a valid and binding
obligation enforceable against the parties in accordance with its
terms, except to the extent limited by bankruptcy, insolvency,
moratorium and other laws of general application relating to
general equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with its rights
and obligations pursuant to any agreement by a party and any other
entity; and
13.1.3 Publicity. The parties shall have the right to use non-
confidential information, including but not limited to information
concerning this Agreement, for marketing, sales, technical
assistance, investor relations, disclosure and public relations
purposes, and that information permitted to be disclosed by a party
under this Section 13.1.3 may appear on such party's (or its
subsidiaries' or sublicensees') Internet web site, along with links
to the Internet web sites of the other party and its subsidiaries and
sublicensees.
13.2 LICENSOR Representations. LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents
and warrants that it has the right to convey the rights and licenses
granted by this Agreement, and otherwise to perform its
obligations under this Agreement. LICENSOR has caused its
employees who are employed to do research, development, or
other inventive work to disclose to it any invention or information
within the scope of this Agreement and to assign to it rights in
such inventions and information in order that LICENSEE shall
receive, by virtue of this Agreement, the licenses granted to it
under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is
not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by any
third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a) that
LICENSEE will be able to develop, manufacture, sell or otherwise
commercialize Licensed Products, or (b) as to the validity of any
patent.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be interpreted,
construed, governed and enforced in accordance with and
governed by the laws of the State of New York, and LICENSOR
and LICENSEE hereby submit to the exclusive jurisdiction of the
state or federal courts located in the County of Nassau and State
of New York for such purposes.
14.2 Confidentiality In Court Proceeding. In order to protect
and preserve the confidential information of a party which the
parties recognize may be exchanged pursuant to the provisions of
this Agreement, the disclosing party may request, and the
receiving party shall not oppose, the court in any action relating to
this Agreement to enter a protective order to protect information
which is confidential information under Section 12.1 and to seal
the record in the action or to hold the proceedings, or portion of
the proceedings, in camera; provided, that the requested terms do
not prejudice the receiving party's interests. Nothing, however,
shall preclude either party from thereafter moving to unseal its
own records or to have matter and information designated as
confidential under any relevant protective order designated
otherwise in accordance with the circumstances as they shall
appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision
that is legal and enforceable and is as nearly as possible consistent
with the intentions underlying the original provision. If the
remainder of this Agreement is not materially affected by such
declaration or finding and is capable of substantial performance,
then the remainder shall be enforced to the extent permitted by
law.
14.4 Waiver. Unless agreed to by the parties in writing to
the contrary, the failure of either party to insist in any one or more
instances upon the strict performance of any one or more of the
provisions of this Agreement, or to exercise any right contained in
this Agreement or provided by law, shall not constitute or be
construed as a waiver or relinquishment of the performance of
such provision or right or the right subsequently to demand such
strict performance or exercise of such right, and the rights and
obligations of the parties shall continue unchanged and remain in
full force and effect.
14.5 Captions. The captions and headings in this Agreement
are inserted for convenience and reference only and in no way
define or limit the scope or content of this Agreement and shall
not affect the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign this
Agreement or its rights hereunder without the prior written
consent of LICENSOR except to a successor to substantially all of
its business relating to Light Valves and whose obligations
hereunder are guaranteed to LICENSOR by LICENSEE.
LICENSOR may assign all of its rights and obligations hereunder
to any successor to any of its business interests or to any company
controlling or controlled by LICENSOR. All assignees shall
expressly assume in writing the performance of all the terms and
conditions of this Agreement to be performed by the assigning
party, and an originally signed instrument of such assumption and
assignment shall be delivered to the non-assigning party within 30
days of the execution of such instrument.
14.7 Schedules. All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth fully
in this Agreement.
14.8 Entire Agreement. This Agreement constitutes the
entire understanding and agreement between LICENSOR and
LICENSEE with respect to the subject matter hereof, supersedes
all prior agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference to
this Agreement and which is executed in writing by the parties;
provided, however, that either party may unilaterally waive in
writing any provision imposing an obligation on the other.
14.9 Notices. Any notice required or permitted to be given
or made in this Agreement shall be in writing and shall be deemed
given on the earliest of (i) actual receipt, irrespective of method of
delivery, (ii) on the delivery day following dispatch if sent by
express mail (or similar next day courier service), or (iii) on the
sixth day after mailing by registered or certified air mail, return
receipt requested, postage prepaid and addressed as follows:
LICENSOR: Robert L. Saxe, President
Research Frontiers Incorporated
240 Crossways Park Drive
Woodbury, New York 11797-2033 USA
Facsimile: (516) 364-3798
Telephone: (516) 364-1902
LICENSEE: Stephen A. Hoffmann
Chairman and Chief Executive Officer
Thermoview Industries, Inc.
1101 Herr Lane
Louisville, KY 40222
Facsimile: (502) 412-0301
Telephone: (502) 412-5600
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code. In the event that either party should
file a petition under the federal bankruptcy laws, or that an
involuntary petition shall be filed against such party, the parties
intend that the non-filing party shall be protected in the continued
enjoyment of its rights hereunder to the maximum feasible extent
including, without limitation, if it so elects, the protection
conferred upon licensees under section 365(n) of Title 17 of the
U.S. Code. Each party agrees that it will give the other party
immediate notice of the filing of any voluntary or involuntary
petition under the federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits hereto
have been drafted jointly by the parties and in the event of any
ambiguities in the language hereof, there shall no be inference
drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an
original, but all of which shall constitute one and the same
instrument.
14.13 Status of the Parties. The status of the parties under
this Agreement shall be solely that of independent contractors. No
party shall have the right to enter into any agreements on behalf of
the other party nor shall it represent to any person that it has such
right or authority.
The parties, through their duly authorized representatives, and
intending to be legally bound, have executed this Agreement, as
of the date and year first above written, whereupon it became
effective in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By: /s/ Robert L. Saxe
Robert L. Saxe, President
Date: March 21, 2000
THERMOVIEW INDUSTRIES, INC.
By: /s/ Stephen A. Hoffmann
Stephen A. Hoffmann, Chairman and
Chief Executive Officer
Date: March 20, 2000
<PAGE>
Schedule A
(As of March 21, 2000)
LIST OF UNITED STATES AND
FOREIGN PATENTS
AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
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 07/08/14
5,650,872 Robert L. Saxe et al
"Light Valve Containing Ultrafine Particles"
(JDR-108) [CIP of S.N. 351,665] 07/22/97 07/22/14
5,728,251 Joseph A. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve"
(JDR-111) 03/17/98 09/27/15
PENDING APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities and
Exchange Commission]
INDEPENDENT AUDITORS' CONSENT
The Board of Directors
Research Frontiers Incorporated
We consent to incorporation by reference in the registration statements
(No. 33-53030, 33-86910, 333-08623, 333-34163 and 333-80575) on
Form S-8 and (No. 333-40369 and 333-65219 ) on Form S-3 of Research
Frontiers Incorporated of our report dated March 27,2000 relating to the
balance sheets of Research Frontiers Incorporated as of December 31, 1999
and 1998 and the related statements of operations, shareholders' equity and
cash flows for each of the years in the three-year period ended December
31, 1999, which report appears in the December 31, 1999 annual report on
Form 10-K of Research Frontiers Incorporated.
/s/ KPMG LLP
KPMG LLP
Melville, New York
March 30, 2000
<TABLE> <S> <C>
<ARTICLE> 5
<LEGEND>
THIS SCHEDULE CONTAINS SUMMARY FINANCIAL INFORMATION EXTRACTED FROM FINANCIAL
STATEMENTS CONTAINED IN THE MOST RECENT ANNUAL REPORT ON FORM 10-K OF RESEARCH
FRONTIERS INCORPORATED FOR THE YEAR ENDING DECEMBER 31, 1999 AND IS QUALIFIED
IN ITS ENTIRETY BY REFERENCE TO SUCH FINANCIAL STATEMENTS.
</LEGEND>
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<PERIOD-TYPE> 12-MOS
<FISCAL-YEAR-END> DEC-31-1999
<PERIOD-END> DEC-31-1999
<CASH> 8,142,569
<SECURITIES> 1,246,083
<RECEIVABLES> 222,549
<ALLOWANCES> 0
<INVENTORY> 0
<CURRENT-ASSETS> 9,695,137
<PP&E> 319,321
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<TOTAL-ASSETS> 10,037,063
<CURRENT-LIABILITIES> 529,327
<BONDS> 0
0
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<COMMON> 11,523,900
<OTHER-SE> 0
<TOTAL-LIABILITY-AND-EQUITY> 10,037,063
<SALES> 128,096
<TOTAL-REVENUES> 514,399
<CGS> 0
<TOTAL-COSTS> 4,247,421
<OTHER-EXPENSES> 0
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