SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 10-Q
QUARTERLY REPORT UNDER SECTION 13 OR 15 (d) OF
THE SECURITIES EXCHANGE ACT OF 1934
For Quarter Ended June 30, 2000 Commission File No. 1-9399
RESEARCH FRONTIERS INCORPORATED
(Exact name of registrant as specified in charter)
Delaware 11-2103466
(State of incorporation or organization) (IRS Employer
Identification No.)
240 Crossways Park Drive, Woodbury, N.Y. 11797
(Address of principal executive offices) (Zip Code)
(516) 364-1902
(Registrant's telephone number, including area code)
Indicate by check mark whether the registrant (1) has filed all
reports required to be filed by Section 13 or 15(d) of the Securities
Exchange Act of 1934 during the preceding 12 months (or for such
shorter period that the registrant was required to file such reports),
and (2) has been subject to such filing requirements for the past 90 days.
Yes X No __
Indicate the number of shares outstanding of each of the
issuer's classes of common stock, as of the latest practicable date:
As of August 10, 2000, there were outstanding 12,199,683 shares
of Common Stock, par value $0.0001 per share.
RESEARCH FRONTIERS INCORPORATED
Balance Sheets
June 30,2000
Assets (Unaudited) Dec.31,1999
Current assets:
Cash and cash equivalents $ 14,606,547 8,142,569
Marketable investment securities-held-to-maturity 3,276,280 1,246,083
Marketable investment securities-available for sale 16,406 --
Royalty receivable 340,000 --
Receivable from warrant exercise pending settlement -- 222,549
Salary advance to officer -- 66,445
Prepaid expenses and other current assets 34,388 17,491
Total current assets 18,273,621 9,695,137
Fixed assets, net 318,131 319,321
Deposits and other assets 22,605 22,605
Total assets $ 18,614,357 10,037,063
Liabilities and Shareholders' Equity
Current liabilities:
Accounts payable 114,682 158,702
Deferred revenue 237,420 46,154
Accrued expenses 863,219 324,471
Total liabilities 1,215,321 529,327
Shareholders' equity:
Capital stock, par value $0.0001 per share;
authorized 100,000,000 shares, issued and
outstanding 12,134,571 shares and 11,523,900 shares 1,213 1,152
Additional paid-in capital 53,006,054 39,750,276
Other comprehensive loss (33,594) --
Accumulated deficit (35,421,676) (30,090,731)
17,551,997 9,660,697
Notes receivable from officers (152,961) (152,961)
Total shareholders' equity 17,399,036 9,507,736
Total liabilities and shareholders' equity $ 18,614,357 10,037,063
See accompanying notes to financial statements.
RESEARCH FRONTIERS INCORPORATED
Statements of Operations
(Unaudited)
Six months ended Three months ended
June 30,2000 June 30,1999 June 30,2000 June 30,1999
Fee income $ 198,734 91,250 $ 99,960 40,625
Operating expenses 1,534,540 801,973 664,908 425,934
Purchase of patents -- 289,177 -- 289,177
Research and development 1,278,378 812,638 611,266 381,800
Non-recurring non-cash
compensation expense 3,133,748 -- 363,748 --
5,946,666 1,903,788 1,639,922 1,096,911
Operating loss (5,747,932) (1,812,538) (1,539,962) (1,056,286)
Net investment income 416,987 126,098 228,758 59,671
Net loss $ (5,330,945) (1,686,440) $(1,311,204) (996,615)
Basic and diluted net
loss per common share $ (.44) (.15) $ (.11) (.09)
Weighted average number of
common shares outstanding 12,022,456 10,949,096 12,096,206 10,957,549
See accompanying notes to financial statements.
RESEARCH FRONTIERS INCORPORATED
Statements of Cash Flows
(Unaudited)
Six months ended
June 30,2000 June 30, 1999
Cash flows from operating activities:
Net loss $ (5,330,945) (1,686,440)
Adjustments to reconcile net loss to net cash
used in operating activities:
Depreciation and amortization 49,965 40,341
Expense relating to issuance of
contingent performance options 3,133,748 --
Expense relating to issuance of stock and
warrants for services performed 22,168 4,584
Revenue relating to marketable securities
received as license fee (50,000) --
Cashless exercise of warrants -- 21,820
Changes in assets and liabilities:
Salary advance to officer 66,445 --
Royalty receivable (340,000) (50,000)
Accrued interest and dividends receivable (1,537) (247)
Prepaid expenses and other current assets (15,360) (73,663)
Deferred revenue 191,266 (31,250)
Accounts payable and accrued expenses 494,728 (32,220)
Net cash used in operating activities (1,779,522) (1,807,075)
Cash flows from investing activities:
Proceeds from maturity of held-to-maturity
treasury securities 1,246,083 1,189,386
Purchases of held-to-maturity treasury securities (3,276,280) (1,215,795)
Purchases of fixed assets (48,775) (15,727)
Net cash used in investing activities (2,078,972) (42,136)
Cash flows from financing activities:
Net proceeds from issuances of common stock 10,600,750 614,837
Purchase of treasury stock (278,278) (165,475)
Net cash provided by financing activities 10,322,472 449,362
Net increase (decrease) in cash and cash equivalents 6,463,978 (1,399,849)
Cash and cash equivalents at beginning of year 8,142,569 5,403,283
Cash and cash equivalents at end of period $ 14,606,547 4,003,434
See accompanying notes to financial statements.
RESEARCH FRONTIERS INCORPORATED
Notes to Financial Statements
June 30, 2000
(Unaudited)
Basis of Presentation
The financial information included herein is unaudited; however, such
information reflects all adjustments (consisting solely of normal recurring
adjustments) which are, in the opinion of management, necessary for a fair
presentation of the financial position, results of operations, and cash flows
for the interim periods to which the report relates. The results of operations
for the six-month period ended June 30, 2000 are not necessarily indicative
of the results to be expected for the full year. The notes included herein
should be read in conjunction with the notes to the financial statements of
the Company as of December 31, 1999 and for the three years then ended,
included in the Company's Annual Report on Form 10-K.
Business
Research Frontiers Incorporated (the Company) 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.
Patent Costs
The Company expenses costs relating to the development or acquisition of
patents due to the uncertainty of the recoverability of these items.
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.
Shareholder's Equity
Issuance of Common Stock
For the six months ended June 30, 2000, the Company received
$10,600,750 of net cash proceeds from (i) the issuance of 45,775 shares of
common stock issued upon the exercise of options resulting in net proceeds
of $368,481 and (ii) 579,983 shares of common stock issued upon the
exercise of warrants resulting in net proceeds of $10,232,269. In addition,
1,013 shares were issued to a director in payment of $13,000 in directors fees.
For the six months ended June 30, 1999, the Company received $614,837
of net cash proceeds from the issuance of 85,289 shares of common stock
from the exercise of warrants. In addition, 2,850 shares were issued
through the cancellation of 33,250 warrants, resulting in public relations
expense of $21,820.
Treasury Stock
For the six months ended June 30, 2000, the Company purchased in the
open market and subsequently retired 16,100 shares of treasury stock with
an aggregate cost of $278,278. For the six months ended June 30, 1999, the
Company purchased in the open market and subsequently retired 21,500
shares of treasury stock with an aggregate cost of $165,475.
Issuance of Warrants
During 1999, the Company issued warrants to purchase 50,000 shares at
prices ranging from $9.00 to $21.00 per share in payment for investor
relations services provided to the Company, which vested 10,000 shares per
quarter commencing on April 1, 1999. The Company recorded $4,584 and
$9,168 of expense in connection with the issuance of these warrants during
the three and six months ended June 30, 2000, respectively.
Contingent Performance Options
During 1999, the Company granted 237,800 contingent performance
options to employees, which vested only, if a certain performance milestone
in the price of the Company's common stock was achieved during the
second quarter of 2000. 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 three and six months ended
June 30, 2000 in connection with these options was $363,748 and
$3,133,748, respectively, as the applicable milestones for the vesting of
these options were achieved during the second quarter of 2000. The
charges recorded as a result of the issuance of these performance options
were calculated based upon changes in the Company's stock price as of the
end of each quarter until the vesting date, and are non-cash accounting charges.
Comprehensive Income
The Company accounts for its comprehensive income under the provisions
of Statement of Financial Accounting Standards No. 130, "Reporting
Comprehensive Income." (Statement 130). Statement 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. The Company did not have any foreign
currency translation adjustments, or minimum pension liability adjustments
during 2000 or 1999. The Company did not have unrealized gains or losses
on marketable securities classified as available-for-sale during 1999 or the
first quarter of 2000, but did have an unrealized loss on marketable
securities classified as available-for-sale during the second quarter of 2000.
Consequently, comprehensive loss equaled the net loss of $996,615 and
$1,686,440 for the three and six months ended June 30, 1999, respectively,
and was $1,344,798 and $5,364,539 for the three and six months ended
June 30, 2000, respectively.
Performance Bonus Plan
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 approximately 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. Based on the increase in the
Company's market capitalization for the three months ended June 30, 2000,
the Company accrued $377,500 in accordance with the bonus plan of which
$138,750 is included in research and development expense and $238,750
is included in operating expenses. A similar amount was accrued for during
the first quarter of 2000. The bonus was computed based on the caps
specified in the plan.
Management's Discussion and Analysis of
Financial Condition and Results of Operations
Results of Operations for the Six Month Periods Ended June 30, 2000 and 1999
The Company's fee income from licensing activities for the first six months
of 2000 was $198,734 as compared to $91,250 for the first six months of 1999.
Operating expenses increased by $732,567 for the first six months of 2000
to $1,534,540 from $801,973 for the first six months of 1999. This
increase was primarily the result of increased payroll (primarily as a result
of the addition of two new employees during the first quarter of 2000 and
the accrual for certain performance bonuses), insurance, public relations,
stock listing fees, depreciation, general expenses, and travel expenses, offset
by lower investor relations expenses, legal and accounting fees.
Research and development expenditures increased by $465,740 to
$1,278,378 for the first six months of 2000 from $812,638 for the first six
months of 1999. This increase was primarily the result of higher research-
related salaries and performance bonuses, materials costs, patent and
depreciation expenses, offset by lower consulting expenses.
During the first half 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.
Operating expenses and research and development expenses listed above
included amounts accrued under a performance bonus plan of $477,500 and
$277,500, respectively. These performance bonuses in the amount accrued
for were paid by the Company during the third quarter of 2000 because the
applicable performance milestones were achieved. In addition to these
performance bonus accruals, the Company also recorded a non-cash
compensation charge of $3,133,748 which is related to the non-recurring
grant of certain contingent performance options issued to employees and
directors during 1999. Because of the performance milestones which must
be achieved in order for these options to vest (and which in fact were
achieved during the second quarter of 2000), the Company was required to
account for these options as variable plan under APB Opinion No.25.
Without taking into account the non-cash accounting charge associated with
the contingent performance options described above, the Company's net loss
would have been $2,197,197 ($0.18 per share) for the first six months of 2000
as compared to $1,686,440 ($0.15 per share) for the first six months of 1999.
The Company's net gain from its investing activities for the first six months
of 2000 was $416,987, as compared to a net gain from its investing
activities of $126,098 for the first six months of 1999. This difference was
primarily due to higher level average investment balances in the first half
of 2000 compared to the first half of 1999.
As a consequence of the factors discussed above, the Company's net loss
was $5,330,945 ($0.44 per share) for the first six months of 2000 as
compared to $1,686,440 ($0.15 per share) for the first six months of 1999.
Without taking into account the non-cash accounting charge associated with
the contingent performance options described above, the Company's net loss
would have been $2,197,197 ($0.18 per share) for the first six months of 2000
as compared to $1,686,440 ($0.15 per share) for the first six months of 1999.
Results of Operations for the Three Month Periods Ended June 30, 2000 and 1999
The Company's fee income from licensing activities for the second quarter
of 2000 was $99,960 as compared to $40,625 for the second quarter of 1999.
Operating expenses increased by $238,974 for the second quarter of 2000
to $664,908 from $425,934 for the second quarter of 1999. This increase
was primarily the result of increased payroll (primarily as a result of the
addition of two new employees during the first quarter of 2000 and the
accrual for certain performance bonuses), public relations, insurance,
depreciation, and travel expenses, offset by lower investor relations
expenses, legal and accounting fees.
Research and development expenditures increased by $229,466 to $611,266
for the second quarter of 2000 from $381,800 for the second quarter of
1999. This increase was primarily the result of higher research-related
salaries and performance bonuses, materials costs, patent, insurance, and
depreciation expenses.
During the second quarter 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.
Operating expenses and research and development expenses listed above
included amounts accrued under a performance bonus plan of $238,750 and
$138,750, respectively. These performance bonuses in the amount accrued
for were paid by the Company during the third quarter of 2000 because the
applicable performance milestones were achieved. In addition to these
performance bonus accruals, the Company also recorded a non-cash
compensation charge of $363,748 which is related to the non-recurring
grant of certain contingent performance options issued to employees and
directors during 1999. Because of the performance milestones which must
be achieved in order for these options to vest (and which in fact were
achieved during the second quarter of 2000), the Company was required to
account for these options as variable plan under APB Opinion No.25.
Without taking into account the non-cash accounting charge associated with
the contingent performance options described above, the Company's net loss
would have been $947,456 ($0.08 per share) for the second quarter of 2000
as compared to $996,615 ($0.09 per share) for the second quarter of 1999.
The Company's net gain from its investing activities for the second quarter
of 2000 was $228,758, as compared to a net gain from its investing
activities of $59,671 for the second quarter of 1999. This difference was
primarily due to higher level average investment balances in the first
quarter of 2000 compared to the first quarter of 1999.
As a consequence of the factors discussed above, the Company's net loss
was $1,311,204 ($0.11 per share) for the second quarter of 2000 as
compared to $996,615 ($0.09 per share) for the second quarter of 1999.
Without taking into account the non-cash accounting charge associated with
the contingent performance options described above, the Company's net loss
would have been $947,456 ($0.08 per share) for the second quarter of 2000
as compared to $996,615 ($0.09 per share) for the second quarter of 1999.
Financial Condition, Liquidity and Capital Resources
During the first six months of 2000, the Company's cash and cash
equivalent balance increased by $6,463,978 principally as a result of the
$10,600,750 of proceeds received, net of expenses, from the issuance of
common stock upon the exercise of options and warrants, offset partially
by cash used to fund the Company's operating activities of $1,779,522 and
investing activities of $2,078,972. At June 30, 2000, the Company had
working capital of $17,058,300 and its shareholders' equity was $17,399,036.
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. As noted above, the Company had accrued
$755,000 as of June 30, 2000 towards the payment of these bonuses.
These performance bonuses in the amount accrued for were paid by the
Company during the third quarter of 2000 because the applicable
performance milestones were achieved.
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 five
to six 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.
New Accounting Pronouncements
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. The
Company has 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. 101B delayed the
implementation date for registrants to adopt the accounting guidance
contained in SAB No. 101 by no later than the fourth fiscal quarter of the
fiscal year beginning after December 15, 1999 (quarter ending December
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.
PART II. OTHER INFORMATION
Item 4. Submission of Matters to a Vote of Security-Holders
The Annual Meeting of Stockholders of Research Frontiers Incorporated
was held on June 8, 2000. Listed below is a summary of how the
9,991,047 shares voted at the Annual Meeting on the various proposals
voted upon and adopted at the Annual Meeting. For the election of Joseph
M. Harary as a Class I member of the Company's Board of Directors,
9,944,577 shares were voted in favor of election, and 46,470 votes were
withheld. For the ratification of the appointment of KPMG LLP as auditors
for the 2000 fiscal year, 9,926,966 shares were voted in favor of election,
37,671 shares were voted against, and 26,410 shares abstained from voting.
Item 5. Other Information.
On May 23, 2000, Research Frontiers announced that Polaroid Corporation
had acquired from Research Frontiers a worldwide non-exclusive license to
manufacture and sell suspended particle device (SPD) films to Research
Frontiers' current and future SPD end-product licensees. This growing list
of customers for SPD light-controlling film currently includes numerous
leading companies whose licenses with Research Frontiers permit them to
manufacture and sell SPD windows, mirrors, sunvisors, flat panel displays,
and eyewear. The license also permits Polaroid to make the chemical
emulsions used to make such films, in either their own SPD film production
or for sale to other film manufacturers licensed by Research Frontiers.
Polaroid joins Dainippon Ink and Chemicals Incorporated, and Hitachi
Chemical Co., Ltd. as a licensed manufacturer of SPD emulsions, and joins
General Electric, Hankuk Glass Industries Inc., Materials Sciences
Corporation and Hitachi Chemical Co., Ltd. as a producer of SPD film.
Effective July 1, 2000, Research Frontiers Incorporated was added to the
small-cap Russell 2000 Index. Inclusion in this prestigious equity index
is based upon a company's market capitalization as of May 31, 2000.
Research Frontiers is also part of the Russell 2000 Growth Index which,
according to the Frank Russell Company, measures the performance of
those Russell 2000 companies with higher price-to-book ratios and higher
forecasted growth values.
Item 6. Exhibits and Reports on Form 8-K
(a) Exhibits.
10.17 License Agreement effective as of May 23, 2000 between the
Company and Polaroid Corporation. Filed herewith with
portions of this document omitted pursuant to the Registrant's
request for confidential treatment and filed separately with the
Securities and Exchange Commission.
(b) Reports on Form 8-K. None.
SIGNATURES
Pursuant to the requirements of the Securities Exchange Act
of 1934, the registrant has duly caused this report to be signed on
its behalf by the undersigned thereunder duly authorized.
RESEARCH FRONTIERS INCORPORATED
(Registrant)
/s/ Robert L. Saxe
Robert L. Saxe, President and Treasurer
(Principal Executive, Financial, and
Accounting Officer)
Date: August 10, 2000
[EXHIBIT 10.17- 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
POLAROID CORPORATION
This License Agreement ("Agreement") effective as of May
23, 2000 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
POLAROID CORPORATION, a Delaware corporation
(hereinafter called "LICENSEE"). 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.
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves, Light Valve Film, and SPD Emulsions (all as
hereinafter defined) and of methods and apparatus relating to
products incorporating such concepts (which products, although
not currently in commercial use, can include, without limitation
thereto, windows for buildings and vehicles, sunvisors, sunroofs,
flat panel displays, eyewear and rear-view mirrors); 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 Light Valve Film and SPD Emulsions used to make Light
Valve Film (both as hereinafter defined); 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 promises 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.
"Authorized User" means LICENSOR and/or any other person or
entity listed by LICENSOR on Schedule B hereof who has been
granted permission by LICENSOR to receive SPD Emulsions or
Light Valve Film from LICENSEE under this Agreement.
LICENSEE agrees that LICENSOR in its sole judgment may
amend Schedule B hereof at any time during the term of this
Agreement for any reason by sending LICENSEE a written notice
of such amendment and specifying the reason for such change.
The persons or entities now or hereafter listed on Schedule B may
not include all of LICENSOR's current licensees and may include
prospective licensees of LICENSOR, and for legal or practical
reasons, LICENSOR may restrict whether or not SPD Emulsions
and Light Valve Film may be sold, leased or transferred to such
person or entity, and/or the application that such SPD Emulsions
or Light Valve Film may be used for by the recipient. LICENSEE
agrees that it and its permitted sublicensees hereunder shall cease
all additional sales, leases, or other dispositions of SPD Emulsions
and Light Valve Film to any person or entity whose name is
deleted from Schedule B by LICENSOR, unless and until
LICENSOR consents in writing to the resumption of such sales,
leases or other dispositions (a) immediately upon receipt of any
written notice from LICENSOR that any person or entity is no
longer included on Schedule B, however LICENSEE may
complete any sale, lease or disposition of SPD Emulsions or Light
Valve Film for which LICENSEE has accepted a binding purchase
order or contract prior to the date it received the notice from
LICENSOR, or (b) if either LICENSEE or its permitted
sublicensees becomes aware that any such person or entity listed
on Schedule B or otherwise receiving SPD Emulsions or Light
Valve Film is making any improper use of SPD Emulsions or
Light Valve Film, in which case LICENSEE shall promptly notify
LICENSOR of such improper use.
"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 either in the form of a liquid suspension, gel,
film or other material.
"Light Valve Film" means a film or sheet or more than one thereof
comprising a suspension of particles used or intended for use
solely in or as a Light Valve. The Light Valve Film shall comprise
either (a) a suspension of particles dispersed throughout a
continuous liquid phase enclosed within one or more rigid or
flexible solid films or sheets, or (b) a discontinuous phase of a
liquid comprising dispersed particles, said discontinuous phase
being dispersed throughout a continuous phase of a rigid or
flexible solid film or sheet. The Light Valve Film may also
comprise one or more other layers such as, without limitation, a
film, coating or sheet or combination thereof, which may provide
the Light Valve Film with (1) scratch resistance, (2) protection
from ultraviolet radiation, (3) reflection of infrared energy, and/or
(4) electrical conductivity for transmitting an applied electric or
magnetic field to the activatable material.
"SPD Emulsions" means any component or components used or
usable in or used or usable to make a Light Valve Film, including,
but not limited to, particles, particle precursors, coatings,
polymers, liquid suspensions and suspending liquids, or any
combination thereof.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including
(by way of example) drawings, written recitations of data,
specifications, parts, lists, assembly procedures, operating and
maintenance manuals, test and other technical reports and the like
owned or controlled by LICENSOR, to the extent they exist, that
relate to SPD Emulsions and/or to the suspensions used or usable
for SPD Emulsions or Light Valve Film and that consist of
concepts invented or developed by LICENSOR and which are
deemed significant 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 SPD Emulsions and Light Valve Film
manufactured by LICENSEE pursuant to this Agreement solely to
an Authorized User in the Authorized User's permitted territory
and for the applications specified and purpose permitted on
Schedule B hereof. The license granted pursuant to this Section
2.1 shall be royalty-free to LICENSEE and its permitted
sublicensees hereunder.
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 SPD Emulsions or Light Valve Film or any
components thereof made by or for LICENSEE pursuant to this
Agreement except for the purposes of research and development
pursuant to Section 4.1 hereof and as specifically licensed in
Section 2.1 hereof.
2.3 Sublicenses. LICENSEE shall have the right to grant
non-exclusive sublicenses to any wholly-owned and controlled
subsidiary of LICENSEE, whose obligations 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.
3 REPORTS AND RECORD-KEEPING.
3.1 Reports. Within 45 days after the end of each fiscal
quarter, LICENSEE shall send to LICENSOR a quarterly report
setting forth in reasonable detail the quantity of SPD Emulsions
and Light Valve Film manufactured each quarter and the amount
of SPD Emulsions and Light Valve Film sold, leased, disposed of,
or delivered by or for LICENSEE and its sublicensees during such
quarter to Authorized Users and samples provided to third parties,
with the amounts sold or otherwise provided to each Authorized
User, including sample recipients, and their identity clearly broken
down. The first report submitted under this Agreement shall cover
the period from the Effective Date of the Agreement to the end of
the first quarter in which SPD Emulsions or Light Valve Film are
produced hereunder. LICENSEE shall also furnish to LICENSOR
at the same time it becomes available to any third party, a copy of
each brochure, standard price list, advertisement or other
marketing and promotional materials prepared, published or
distributed by LICENSEE or its sublicensees relating to SPD
Emulsions or Light Valve Film.
3.2 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each report supported thereby, true and accurate
records, files, data and books of accounts that relate to the
manufacture, sale or other disposition of SPD Emulsions or Light
Valve Film, reasonably required for the full computation and
verification of the information to be given in the statements herein
provided for. 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. The cost of the audit shall be borne
by LICENSOR, unless the audit shall disclose a material breach
by LICENSEE of any term of this Agreement, or an inaccuracy
greater than 10% in any report provided to LICENSOR by
LICENSEE, during the audited period, in which case LICENSEE
shall bear the full cost of such audit. The results of the audit shall
be kept confidential pursuant to the provisions of Section 12.1
except to the extent required by a party hereto to enforce its rights
hereunder, or which is otherwise required to be disclosed by law
or under generally accepted accounting principles.
4 OBLIGATIONS OF LICENSOR AND LICENSEE.
4.1 Development of SPD Emulsions and Light Valve Film.
LICENSOR and LICENSEE may cooperate to develop initial
specifications for SPD Emulsions and Light Valve Film.
LICENSEE shall then use its reasonable efforts to produce SPD
Emulsions and Light Valve Film meeting such specifications for
the evaluation and use of LICENSOR and licensees and
prospective licensees of LICENSOR, and for use by LICENSEE
but only for internal research and development. After consultation
with LICENSEE, LICENSOR may at any time propose additional
size or other specifications of the SPD Emulsions and Light Valve
Film to be produced under this Agreement with the disclosure of
additional Technical Information to LICENSEE with respect to
such size or other specifications of SPD Emulsions or Light Valve
Film. LICENSEE may use all commercially reasonable efforts
throughout the term of this Agreement to improve the quality of
SPD Emulsions and Light Valve Film. However, LICENSEE shall
be solely responsible for determining the specifications for all SPD
Emulsions and Light Valve Film, and for any improvements
therein.
4.2 LICENSOR Purchases. If LICENSEE is able to develop
and manufacture SPD Emulsions and Light Valve Film suitable for
use by Authorized Users, upon request of LICENSOR and with
reasonable prior notice, LICENSEE shall sell and deliver to
LICENSOR, SPD Emulsions, Light Valve Film or components
thereof at LICENSEE's prevailing market prices and in quantities
mutually agreed upon by LICENSOR and LICENSEE.
LICENSEE acknowledges that LICENSOR and its present and/or
future licensees (or entities who have been granted the option of
entering into license agreements with LICENSOR) may
independently manufacture (or have third parties manufacture for
them) and sell Light Valve Film or SPD Emulsions under the
terms of agreements between them and LICENSOR, or may
independently manufacture and sell Light Valve Film or SPD
Emulsions which LICENSOR produces, or has produced on its
behalf. Nothing contained in this Agreement shall impose any
obligation on LICENSOR or any other parties to purchase any
SPD Emulsions from LICENSEE. Notwithstanding anything
contained herein to the contrary, during the term of this Agreement
LICENSOR may provide SPD Emulsions and Light Valve Film
obtained by LICENSOR pursuant to this Section 4.2 to third
parties so long as LICENSOR does not receive from the recipient
for the provision of such SPD Emulsions or Light Valve Film any
monetary payment in excess of LICENSOR's purchase price plus
shipping, administrative, overhead and related costs to such
recipient.
4.3 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of SPD
Emulsions or Light Valve Film that is not in strict accordance with
(1) the provisions of this Agreement, (2) restrictions on the type of
product, or the territory in which such product may be, made,
used, sold or otherwise disposed of by or for an Authorized User,
or other provisions or restrictions, which are contained in any
other agreement in force between LICENSOR and an Authorized
User which is known to LICENSEE which relates to Light
Valves, SPD Emulsions or Light Valve Film, or (3) with the
provisions of any other agreement then in force to which
LICENSEE is a party and which relates to Light Valves, SPD
Emulsions or Light Valve Film, shall be deemed a material breach
of this Agreement.
4.4 End Users. LICENSEE agrees to require all direct
recipients of SPD Emulsions and Light Valve Film to whom SPD
Emulsions or Light Valve Film 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 SPD Emulsions or Light
Valve Film. LICENSEE agrees to take all steps to reasonably
assure itself that SPD Emulsions and Light Valve Film sold, leased
or otherwise disposed of by or for LICENSEE is being used for
permitted application and territory only. If a party which is not
then listed on Schedule B hereto wishes to obtain samples of SPD
Emulsions or Light Valve Film or to purchase SPD Emulsions or
Light Valve Film from LICENSEE, LICENSEE shall notify
LICENSOR and shall refer such party to LICENSOR. If such
party enters into a suitable agreement with LICENSOR,
LICENSOR shall inform LICENSEE whether such party may then
obtain samples or purchase SPD Emulsions or Light Valve Film
from LICENSEE.
4.5 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 SPD
Emulsions and Light Valve Film 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.
4.6 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 SPD Emulsions or Light
Valve Film 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.
4.7 Personnel. LICENSEE agrees to assign personnel from
its technical staff who shall work on the development of SPD
Emulsions and Light Valve Film during the term of this
Agreement.
4.8 No other obligations. LICENSEE and LICENSOR have
no other obligations to each other except as expressly provided in
this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for SPD Emulsions, Light Valve Film, or
other products incorporating Light Valves are and shall remain the
exclusive property of the adopting party, and the other party shall
not obtain any rights and license to such marks under this
Agreement, but may inform others that the adopting party has
produced SPD Emulsions, Light Valve Film, 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 SPD Emulsions and Light Valve
Film, and related materials (other than sales by LICENSEE to
LICENSOR pursuant to Section 4.2 hereof), 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) If during the term
of this Agreement, LICENSOR makes any improvements or
modifications which are invented or developed by or on behalf of
LICENSOR after the Effective Date of this Agreement and on or
before December 31, 2000, and which relate in any way to or are
useful in the design, operation, manufacture and assembly of SPD
Emulsions and/or Light Valve Film, such improvements and
modifications shall from time to time be disclosed to LICENSEE
and be automatically included, on a non-exclusive basis, in the
rights and licenses granted pursuant to Section 2.1 hereof, and any
patents and/or patent applications relating thereto shall
automatically be added to Schedule A hereof.
(b) Any future improvements or modifications invented or
developed by or on behalf of LICENSEE, LICENSEE's
sublicensees and LICENSOR (other than as specifically described
in Sections 7.2(a)) 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 SPD Emulsions, Light
Valve Film and/or to the suspensions or other components used or
usable in SPD Emulsions and/or Light Valve Film 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.
(c) 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 (other than as
specifically described in Section 7.2(a)) have been made relating
to the subject matter of this Agreement, and as to the general
nature of any such improvements and modifications.
(d) 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. Documentation. Within thirty calendar days after the
Effective Date of this Agreement, LICENSOR shall furnish
LICENSEE with all Technical Information owned or controlled by
LICENSOR, which is reasonably necessary or desirable in order
for LICENSEE to manufacture SPD Emulsions and Light Valve
Film. 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 relating to the materials, specifications, formulation,
manufacturing method and manufacturing equipment relating to
SPD Emulsions and Light Valve Film and (2) photocopies of all
U.S. Patents and patent applications relating to SPD Emulsions
and Light Valve Film owned or controlled by LICENSOR as of the
Effective Date of this Agreement. LICENSOR shall not be
obligated hereunder to furnish copies of LICENSOR's foreign
patents and patent applications, but will furnish a list thereof in
Schedule A hereto.
8.2 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 relating to
the manufacture of SPD Emulsions and Light Valve Film, and to
inspect LICENSOR's research and development facilities relating
to SPD Emulsions and Light Valve Film. The visits of employees
of LICENSEE to LICENSOR's facility shall be carried out within
the six-month period commencing with the Effective Date of this
Agreement, and shall not exceed 200 man-hours during such
period. To assist LICENSEE's employees while they are at
LICENSOR's facility, LICENSOR'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.
8.3 Materials and Additional Training. Upon request by
LICENSEE during the term of this Agreement, when mutually
convenient to LICENSOR and LICENSEE, LICENSOR shall
supply LICENSEE with additional training in LICENSOR's or
LICENSEE's facility and with small quantities of materials related
to SPD Emulsions 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.
The respective number of engineers for dispatch and the duration
of their stay shall be agreed to by LICENSOR and LICENSEE
separately from time to time. All expenses to be incurred in
connection with the dispatch of LICENSOR's engineers under this
Section 8.3 including the traveling and living expenses of such
engineers of LICENSOR shall be borne and paid by LICENSEE.
Each invoice submitted by LICENSOR for such service shall
include detailed explanations of the charges, and, if requested by
LICENSEE, copies of receipts.
8.4 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 by LICENSOR to LICENSEE
pursuant to this Agreement.
8.5 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.
8.6 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 if patent marking is required by law
or to protect a party's intellectual property rights. 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. After the expiration
or termination of this Agreement, LICENSEE shall have no right
to sell, and no obligation to manufacture and deliver, SPD
Emulsions and Light Valve Film to any Authorized User or to any
other party.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time upon at least 30 days' notice
if LICENSEE shall at any time breach any material term of this
Agreement and such breach is not cured within any applicable
cure period specified in Article 11 of this Agreement, repeatedly
provide inaccurate reports hereunder, or if there has been a
cessation by LICENSEE of general operations or of work related
to SPD Emulsions or Light Valve Film.
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 under the terms specified in Section 4.2 any
SPD Emulsions and Light Valve Film which shall then be in the
possession of LICENSEE, and, if requested by LICENSOR,
LICENSEE shall finish and deliver to LICENSOR any SPD
Emulsions and Light Valve Film 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 SPD Emulsions and Light Valve Film
(and SPD Emulsions and Light Valve Film 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, 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, Light
Valve Film or SPD Emulsions which relate to or arise out of
Technical Information disclosed by LICENSEE to LICENSOR,
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, 3.2, 4.6, 6.1, 6.2, 7.2, 8.5, 10.2,
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 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.
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 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 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. The burden of
proving the availability of any exception of confidentiality shall be
on the LICENSEE. LICENSOR shall affix an appropriate legend
on all written documentation given to LICENSEE which contains
confidential information. Other than for the oral information
conveyed during the training conducted pursuant to Sections 8.2
and 8.3 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
Technical Information confidential hereunder, LICENSEE will not
make, use, sell, lease or otherwise dispose of products using or
directly or indirectly derived from confidential information or
sample materials supplied to LICENSEE by LICENSOR or its
licensees, sublicensees, or any of their affiliates relating to Light
Valve Film, SPD Emulsions or Light Valves 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, light emitting diodes,
electrochromic devices, or similar technology, 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 that the foregoing
restrictions do not apply to a particular product. Nothing
contained in this section, however, shall be construed as granting
LICENSEE any rights or licenses with respect to any Technical
Information or patents of LICENSOR or its other licensees or their
sublicensees.
(b) LICENSEE will have the right to disclose Technical
Information of LICENSOR to a subcontractor; provided, however,
that LICENSEE shall only disclose such Technical Information as
is strictly necessary to enable said subcontractor to perform its
manufacturing task, and provided that prior to disclosing any
Technical Information to said subcontractor, said subcontractor
has signed a secrecy agreement with LICENSEE at least as
protective of LICENSOR's Technical Information as the
provisions of this Agreement, including, without limitation, said
subcontractor's specific agreement to be bound by the provisions
of Section 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') Internet web site, along with links to the Internet
web sites of the other party and its subsidiaries.
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 SPD Emulsions or Light Valve Film, or (b) as to
the validity of any patent.
13.4 Representation. LICENSOR hereby represents and
warrants that, as of the Effective Date hereof, to the best of its
knowledge there have been no claims, actions or proceedings
brought or threatened against it or its licensees alleging that any
SPD Emulsions, Light Valve Film, and Light Valves manufactured
using Technical Information or other technical information
disclosed by LICENSOR constitutes infringement of any patent or
intellectual property right of any third party, nor is LICENSOR
aware of any patent or intellectual property right of any third party
which would be infringed by LICENSEE's manufacture, use or
sale of SPD Emulsions or Light Valve Film if LICENSEE's
manufacture, use or sale of SPD Emulsions or Light Valve Film
is done in strict compliance with the terms and conditions of this
Agreement and only uses Technical Information disclosed by
LICENSOR hereunder.
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. Should any dispute arise between
LICENSOR and LICENSEE in connection with this Agreement,
LICENSOR and LICENSEE shall first endeavor to settle such
dispute in an amicable manner through mutual consultation.
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: Samuel Liggero, Vice President
Polaroid Corporation
1265 Main Street-Building 4
Waltham, Massachusetts 02451 USA
Facsimile: [xxx-xxx-xxxx]
Telephone: 781-386-6492
with a copy in the same manner to:
Edward S. Roman, Esq.
Polaroid Corporation
784 Memorial Drive
Cambridge, Massachusetts 02139
Facsimile: 781-386-6435
Telephone: 781-386-6405
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: May 23, 2000
POLAROID CORPORATION
By:/s/ Samuel Liggero
Samuel Liggero, Vice President
Date: May 19, 2000
Schedule A
(As of May 23, 2000)
LIST OF UNITED STATES, INTERNATIONAL 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" 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" 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" 10/31/95 11/6/12
5,463,492 Joseph A. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" 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" 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" 11/14/95 5/11/13
5,516,463 Joseph A. Check III et al
"Method of Making Light Polarizing Particles"05/14/96 07/08/14
5,650,872 Robert L. Saxe et al
"Light Valve Containing Ultrafine Particles" 07/22/97 07/22/14
5,728,251 Joseph A. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/15
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
PENDING INTERNATIONAL APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
Schedule B
(As of May 23, 2000)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR
SPD EMULSIONS
Permitted
Name of Customer Licensed Application Territory
Research Frontiers Incorporated All applications Worldwide
General Electric Company Light Valve Film for sale to other Worldwide
specified licensees of Research Frontiers
Hankuk Glass Industries, Inc. Light Valve Film for sale to other Worldwide
specified licensees of Research Frontiers
Hitachi Chemical Co., Ltd. Light Valve Film for sale to other Worldwide
specified licensees of Research Frontiers
Material Sciences Corporation Light Valve Film for sale to other Worldwide
specified licensees of Research Frontiers
Vision-Ease Lens Azusa,Inc. Eyewear Worldwide
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR LIGHT VALVE FILM
Permitted
Name of Customer Licensed Application Territory
Research Frontiers Incorporated All applications Worldwide
Glaverbel, S.A. Automotive vehicle rear-view mirrors,Worldwide
transportation vehicle sunvisors,and (except
architectural and automotive windows Korea
for windows)
Global Mirror GmbH Rear-view mirrors and sunvisors Worldwide
Hankuk Glass Industries Inc. Broad range of SPD light control Worldwide
products 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
Material Sciences Corp. Architectural and automotive windows Worldwide
(except Korea)
ThermoView Industries, Inc. Architectural windows Worldwide
(except Korea)
Vision-Ease Lens Azusa,Inc. Eyewear Worldwide
[INFORMATION REGARDING OTHER AUTHORIZED USERS WILL BE PROVIDED BY LICENSOR TO
LICENSEE FROM TIME TO TIME IN THE FUTURE]
