New 8-K
ITEM 1.01. ENTRY INTO A MATERIAL DEFINITIVE AGREEMENT.
On February 15, 2017 (the “Effective Date”) Uni-Pixel Displays, Inc. (“Displays”), a wholly owned subsidiary of Uni-Pixel, Inc. (“Uni-Pixel” or the “Company”), entered into the Letter Agreement Amendment (the “Amendment”) to the XSense Patent License Agreement (the “Patent License Agreement”) and the XSense Intellectual Property License Agreement (the “IP License Agreement”, and collectively with the Patent License Agreement, the “License Agreements”) by and between Displays and Atmel Corporation (“Atmel”). Displays originally entered into the License Agreements with Atmel, as previously disclosed by the Company, on April 16, 2015. The Amendment adds an affiliate of Atmel, Microchip Technology (Barbados) II Inc., as a party to the License Agreements.
The Amendment revises the respective License Agreements to provide that the licenses granted by Atmel to Displays for the Licensed XSense Patents (as defined in the Patent License Agreement) and the Licensed XSense IP (as defined in the IP License Agreement) allow for Displays to enter into a non-transferable, non-assignable, non-exclusive, royalty-bearing sublicense solely to General Interface Solution Limited, a Samoa corporation (“GIS”), to make, use offer for sale, sell and import Licensed XSense Products (as defined in the License Agreements), subject to certain terms provided for in the Amendment. Furthermore, the Amendment provides that if a sublicense agreement is in effect at the time that the License Agreements are terminated for any reason, then such sublicense will survive and remain in full force and effect with Atmel having assumed such sublicense agreement.
The Amendment increases the Royalty Rate (as such term is defined in the Patent License Agreement) for all sales of Licensed XSense Products by the Company under the Patent License Agreement, not including any sublicense arrangement, to 4%. The Amendment also provides that the definition of Sales Price (which is used to calculate the Royalty Rate) in the Patent License Agreement means the gross revenue recognized by the Company from the sale, use or other disposition of a Licensed XSense Product by the Company.
In addition, the Amendment adds that the Company shall pay Atmel a separate Royalty Rate of 5.7% for any GIS sublicenses, based on the manufacturing costs used by the Company to calculate the royalty payable under its sublicense agreement with GIS (the “Sublicense Price”), provided always that the Sublicense Price shall be reflect an arm’s length transaction between a willing licensor and a willing licensee and be no less than the manufacturing cost incurred by other manufacturers involving the most similar products sold in the same volume in an arms-length transaction, as reasonably determined by Displays and auditable by Atmel. A minimum of 4% of the 5.7% Royalty Rate owed to Atmel for a sublicense agreement with GIS must be paid in cash, in which case the remaining 1.7% will be paid to Atmel in the Company’s stock or other consideration as mutually agreed upon by the parties. Furthermore, the maximum cumulative annual royalties payable for the GIS sublicense is $13,250,000. Royalties from the GIS sublicense are separate from and do not count toward the minimum annual royalty amount paid for Display’s license under the Patent License Agreement during the Initial Term (as such term is defined in the Patent License Agreement), the maximum cumulative annual royalties during the Renewal Period (as such term is defined in the Patent License Agreement), nor the calculation of when the Non-Refundable Prepayment (as such term is defined in the Patent License Agreement) has been fully used and credited.
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