License Agreement-registrant & Research Dev. Corp.

Exhibit 10.9


LICENSE AGREEMENT


This agreement, made and entered into as of the 31st day of May, 1996, by and between RESEARCH DEVELOPMENT CORPORATION OF JAPAN, a corporation organized and existing under the Act of Japanese Parliament entitled Research Development Corporation Act 1961 (established in 1961, amended in 1981, 1989 and 1993) having its principal place of business at 1-8, Honcho 4-chome, Kawaguchi City, Saitama Pref., 332, Japan (hereinafter referred to as LICENSOR) and NANOPHASE TECHNOLOGIES CORPORATION, a corporation organized and existing under the laws of State of Illinois, the United States of America, having its principal place of business at 8205 South Cass Avenue - Suite 105, Darien, Illinois 60561, The United States of America (hereinafter referred to as LICENSEE);


WITNESSETH:


WHEREAS National Research Institute for Metals, Science and Technology Agency of the Government of Japan (hereinafter referred to as NRIM) is the inventor of Process for Producing Ultrafine Powders of Metal and Ceramics and the owner of the patents thereof stated in Article 1; and


WHEREAS LICENSOR has been duly granted by NRIM an exclusive right to license the said patents to any third party non-exclusively; and


WHEREAS LICENSEE is desirous of acquiring from LICENSOR a license to produce and sell the ultrafine powders of metal and ceramics by processes and methods which may be subject to such NRIM's patents; and


WHEREAS LICENSOR is willing to grant such a license to LICENSEE upon the terms and conditions hereinafter set forth.


NOW, THEREFORE, in consideration of the premises and mutual covenants herein contained, the parties hereby agree as follows:


2


1. DEFINITION


1.1 As used in this AGREEMENT and its recital, the following terms shall
have the following meaning:


(a) "Patent" shall mean the patents to be licensed by this AGREEMENT,
and the number, the date of grant and the title (inclusive of all
extensions, renewals, continuations, reissues and continuations in
part) of which are as follows;


1. U.S.A. Patent No. 4,376,740
granted on March 15, 1983
titled "Process for Production Fine Metal Particles"


2. U.S.A. Patent No. 4,482,134 granted on November 13, 1984 titled
"Apparatus for Producing Fine Metal Particles"


3. U.S.A. Patent No. 4,642,207
granted on February 10, 1987
titled "Process for Producing Ultrafine Particles of Ceramics"


4. U.S.A. Patent No. 4,889,665
granted on December 26, 1989
titled "Process for Producing Ultrafine Particles of Ceramics"


(b) "Product" shall mean ultrafine powders of metal and ceramics produced
using processes or methods within the scope of any valid claim
included within any Patent which is to be licensed by this AGREEMENT.


(c) "Effective Date of this AGREEMENT" shall mean the date stipulated in
Article 9.


(d) "Term of this AGREEMENT" shall mean the period during which this
AGREEMENT remains in force as defined in Article 9.


3


2. LICENSE


2.1 Upon the terms and conditions hereinafter more specifically set forth,
LICENSOR hereby grants to LICENSEE and LICENSEE hereby accepts:
A license for Term of this AGREEMENT to employ Patent to non-exclusively
manufacture and use for internal research, Product in the facilities of
LICENSEE in the United States of America and to non-exclusively use for
internal research and sell Product in the United States of America.


3. SUB-LICENSE


3.1 LICENSEE shall have no right to grant any sub-license to a third party
under this AGREEMENT.


4. LICENSE FEE


4.1 In consideration of the right and the license granted herein, LICENSEE
shall pay the following license fees to LICENSOR:


(1) Initial payment: one million and five hundred thousand Japanese
Yen (Yen 1,500,000) to be paid within thirty (30) days from
Effective Date of this AGREEMENT.


(2) Royalty: three (3) percent of the proceeds of sales of Product to
be paid within forty-five (45) days from the last day of
LICENSEE's each fiscal year through Term of this AGREEMENT.
Proceeds of sales shall mean the total of gross proceeds less
...