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)
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(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
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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)
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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
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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.
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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
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[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
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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
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POLAROID CORPORATION
By:/s/ Samuel Liggero
Samuel Liggero, Vice President
Date: May 19, 2000
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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
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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
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[INFORMATION REGARDING OTHER AUTHORIZED USERS WILL BE PROVIDED BY LICENSOR TO LICENSEE FROM TIME TO TIME IN THE FUTURE]
| ARTICLE 5 |
| THIS SCHEDULE CONTAINS SUMMARY FINANCIAL INFORMATION EXTRACTED FROM FINANCIAL STATEMENTS CONTAINED IN THE MOST RECENT QUARTERLY REPORT ON FORM 10-Q OF RESEARCH FRONTIERS INCORPORATED FOR THE QUARTER ENDED JUNE 30,2000 AND IS QUALIFIED IN ITS ENTIRETY BY REFERENCE TO SUCH FINANCIAL STATEMENTS. |
| PERIOD TYPE | 6 MOS |
| FISCAL YEAR END | DEC 31 1999 |
| PERIOD END | JUN 30 2000 |
| CASH | 14,606,547 |
| SECURITIES | 3,292,686 |
| RECEIVABLES | 340,000 |
| ALLOWANCES | 0 |
| INVENTORY | 0 |
| CURRENT ASSETS | 18,273,621 |
| PP&E | 318,131 |
| DEPRECIATION | 0 |
| TOTAL ASSETS | 18,614,357 |
| CURRENT LIABILITIES | 1,215,321 |
| BONDS | 0 |
| PREFERRED MANDATORY | 0 |
| PREFERRED | 0 |
| COMMON | 12,134,571 |
| OTHER SE | 0 |
| TOTAL LIABILITY AND EQUITY | 18,614,357 |
| SALES | 198,734 |
| TOTAL REVENUES | 615,721 |
| CGS | 0 |
| TOTAL COSTS | 5,946,666 |
| OTHER EXPENSES | 0 |
| LOSS PROVISION | 0 |
| INTEREST EXPENSE | 0 |
| INCOME PRETAX | (5,330,945) |
| INCOME TAX | 0 |
| INCOME CONTINUING | 0 |
| DISCONTINUED | 0 |
| EXTRAORDINARY | 0 |
| CHANGES | 0 |
| NET INCOME | (5,330,945) |
| EPS BASIC | (.44) |
| EPS DILUTED | (.44) |