VETERANS AFFAIRS, DEPARTMENT OF USA Tender
VETERANS AFFAIRS, DEPARTMENT OF USA Tender
Costs
Summary
R498--ballard Spahr - Patent Legal Services (eda 3/17/23 - New Contract Start 4/23/2023) (va-21-00040498)
Description
Page 23 Of 24 summary: This Is A Sources Sought Notice And Not A Request For Proposals. This Request Is Solely For The Purpose Of Conducting Market Research To Enhance Vha S Understanding Of The Market S Offered Products, Services And Capabilities. The Government Will Not Pay Any Costs For Responses Submitted In Response To This Sources Sought. this Sources Sought Notice Provides An Opportunity For Respondents To Submit Their Notice Of Ability, And Their Available Products And Services In Response To The Requirement Described Below. Vendors Are Being Invited To Submit Information Relative To Their Potential Of Fulfilling The Requirement Below, In The Form Of A Capability Response That Addresses The Specific Requirement Identified In This Sources Sought. the Veterans Health Administration (vha) Is Seeking A Vendor To Provide The Following Products And/or Services Below. Please See The General Requirements Section Below For The Requested Products/services And Descriptions. This Sources Sought Is To Facilitate The Contracting Officer S Review Of The Market Base, For Acquisition Planning, Size Determination, And Procurement Strategy. 1. General Requirements the Department Of Veterans Affairs Office Of Research & Development Requires For The Services Of Qualified Patent Attorneys And Agents To Perform Domestic And Foreign Patent Prosecution And Provide Legal Services Useful For The Management Of Va Patent Portfolios. Patent Attorneys And Agents Will Assist The Office Of Research And Development S Technology Transfer Program In Obtaining Patent Rights For Va Inventions And Provide Patent Legal Counseling Services. 2. Contractor Requirements And Tasks: potential Contracting Firms Responding To This Solicitation Must Demonstrate A Thorough Understanding And Have Significant Experience In The Practice Of U.s. Patent Law. All Firm Attorneys Or Agents Assigned To Handle Matters Under This Contract Must Be In Good Standing To Practice Before The United States Patent And Trademark Office (uspto) And, If A Firm Practitioner Is An Attorney, Be An Active Member In Good Standing With His Or Her Respective State Bar Licensing Organization. Contracting Firms Will Be Responsible For Identifying Competent Attorneys In Foreign Jurisdictions For Foreign National And Foreign Regional Patent Filings. Contractors Shall Be Responsible For Directing Foreign Associates Subject To Va Guidance And Approval. The Contractor Shall File, Or Ensure Foreign Associates File, Patent Applications Which Include All Parts Necessary To Meet Statutory Requirements For Obtaining A Priority Date As Of The Date Of Filing, Or An Earlier Date, If Earlier Filed Applications Are Claimed As Priority Documents. The Following List Of Tasks Is Provided As A Minimum, Non-exhaustive, Description Of The Kinds Of Us, International And Foreign Patent Prosecution Tasks That Will Be Required Of Contractors the Contractor Shall Ensure That The Proposed Pricing Is Fully Burdened And Inclusive Of All Required Tasks As Outlined Below. The Va Is Also Requesting From Industry Alternative Ways To Develop The Price/cost Schedule With Applicable Priced Line Items. The Va Is Interested In How Industry Determines Pricing And Billing For These Services. selection As A Va Contracted Law Firm Under This Solicitation Will Entail The Transfer Of All Or A Substantial Fraction Of Va S Currently Existing Legal Docket Of Matters To The Contracting Firm. the Contractor Shall, As Directed By Ttp Contracting Officer, Perform All Necessary And Appropriate Services In Connection With The Filing And Prosecution Of U.s. National, International (pct), Foreign Regional (e.g., European Patent Office) And Foreign National Patents. Domestic Patent Matters Shall Be Handled In Compliance With Title 35, Us Code, And With Volume 37, Code Of Federal Regulation And Other Applicable Laws, Regulations And Current Case Law. The Preparation And Filing Of Provisional, Utility, Plant, Or Design Patent Applications Shall Be Based On Invention Disclosures In Light Of Known Prior Art And Any Contemplated Prosecution Strategy. All Foreign Patent Matters Shall Be Handled By The Contractor Or Foreign Associates Under The Direction Of The Contractor, In Accordance With The Applicable Statues, Regulations, And Case Law Of The Particular Foreign Jurisdiction. The Payment Of All Domestic, International And Foreign Patent Office Fees Will Be Billed As A Pass-through Cost With No Additional Markup. All Required Responses To U.s. And Foreign Patent Office Actions Should Be Filed Within Foreign Filing Deadlines Or Shortened U.s. Statutory Periods Such That Extension Of Time Or Patent Revival Fees Are Avoided Unless Specifically Authorized By Ttp. For All Applications Claiming A Priority Date To An Application Filed Prior To March 16, 2013, The Law Firm Will Provide Notice To Ttp When It Believes New Matter Is Being Added To The Claims Of A New Or Existing Application In A Patent Family. all Tasks In This Section Are Keyed To Deliverables In Section 4. Section 4 Provides A Default Schedule Of Deliverables And Associated Times Of Performance For Each Task In Section 4. The Deliverables And Time Of Performance May Be Varied By Va From The Schedule In Section 4 In A Specific Task Order. Va Reserves The Right To Specify Staffing Requirements And Limit The Amount Of Time For Partner/senior Attorney Review In A Specific Task Order. 2.1 Task 1 Filing Patent Applications. Contractor Shall: 2.1.1 Prepare And Submit Patentability Assessment Or Prior Art Search. Contractor Shall Provide The Following Services, Only When And As Specifically Requested By Ttp, After Providing A Written Cost Estimate: search Patent And/or Non-patent Literature Databases, Including ,where Requested Chemical Structure Databases, For Disclosures Relevant To Subject Matter Identified By Ttp. provide Freedom To Operate Searches Of Issued And Pending Patent Claims. When Requested, Provide Written Summary And Analysis Of The Search Results. Provide Prior Art Searches Of Patent And/or Non-patent Literature Databases, Including, Where Requested Chemical Structure Databases To Assist In Patent Application Filing And Prosecution Decisions. provide Infringement/non-infringement And Patent Validity Opinions. 2.1.2 File U.s. Design Patent Application And Corresponding International Design Registrations. when And As Directed By Ttp, Draft Design Patent Applications By Reviewing Invention Disclosure Materials, Discuss With Ttp Technology Transfer Specialist Responsible For Va Id Number, And Speak With Va Investigators As Appropriate. file The U.s. Design Patent Application With The Uspto Prior To Any Known Public Disclosure Dates; when Specifically Instructed By Ttp, The Contractor Shall Direct Foreign Associate(s) To File Corresponding International Design Registration Applications Per The Requirements Of The Hague Convention Or The Law Of The Foreign Jurisdiction, As Appropriate. contractor Will Provide Copies Of All Foreign Associate And Foreign Patent Office Correspondence And Reminders Of Prosecution Deadlines Per The Schedule Specified In Section 3. 2.1.3 File U.s. Provisional Application. when And As Directed By Ttp, Prepare Draft Provisional Patent Applications Including A Specification, Draft Claim(s) And Applicable Drawings, Based Upon Invention Disclosure, Manuscripts, Drawing(s), Discussions With Ttp Technology Transfer Specialist Responsible For Va Id Number And Conduct Inventor Interview(s) As Necessary. file U.s. Provisional Applications With The Uspto By Ttp S Requested Deadline And/or Prior To Any Known Public Disclosure Dates. 2.1.3.1 Provide Notice Of U.s. Provisional Application Conversion And Other Filing Deadlines To The Ttp. contractor Will Notify Ttp Of U.s. Provisional Application Expiration And Conversion Deadline Per The Schedule Specified In Section 3. 2.1.4 File U.s. Non-provisional Utility Patent Application. when And As Directed By Ttp, Prepare Draft Non-provisional Patent Applications, For Ttp Review, Prior To Filing Applications. review Pending Provisional Application(s), Invention Disclosure Materials, Known And Disclosed Prior Art, And Manuscripts. Consult With Ttp Technology Transfer Specialist Responsible For Application And, If Approved By Ttp In Advance, Interview Va Inventors When Preparing Non-provisional Application. file The U.s. Non-provisional Application With The Uspto, As Directed By Ttp, So The Application Is Filed Prior To: the One (1) Year Anniversary Of A Provisional Application To Which The Non-provisional Application Will Claim Priority. any Known Investigator Or Third-party Public Disclosures Dates; And/or the One (1) Year Anniversary Of Any Known Public Disclosures. request Expedited Prosecution (such As Prioritized Examination, Accelerated Examination) As Directed By Ttp. 2.1.5 File International Applications Under The Patent Cooperation Treaty (pct). when And As Directed By Ttp, Draft International Applications In Compliance With The Patent Cooperation Treaty. utilize The Invention Disclosure Materials, Known And Disclosed Prior Art, Filed Parent Patent Applications, Such As Provisional Applications Or Non-provisional Application, Design Registrations And Applications, And Information Provided By Inventors. file Pct Applications In A Pct Designated Receiving Office. Unless Otherwise Directed By Ttp, Filings Shall Be During The Pendency Of Any Earlier Filed Application To Which The Pct Application May Claim Priority Under Foreign, Domestic Or International Law. 2.1.5.1 Provide Ttp Notice Of Pct Request, Response, And National Stage Conversion Filing Deadlines. contractor Will Notify Ttp Of Pct Requests, Written Opinion Response, And National Stage Conversion Filing Deadlines Per The Schedule Specified In Section 3. 2.1.6 File U.s. National Stage Application Under Pct. when And As Directed By Ttp, Prepare For Ttp Review A U.s. National Stage Patent Application Based On A Prior Filed Pct Application. file, As Directed By Ttp, The U.s. National Stage Application Within U.s. And International Filing Deadline Requirements In Order To Maintain The Earliest Claimed Priority Date For The Subject Matter Disclosed In The Parent Application(s). file Supplemental Information Necessary To Perfect The National Stage Filing. 2.1.7 Provide Notice To Ttp Of Paris Convention Application Filing Deadlines. contractor Will Notify Ttp Of Paris Convention Application Filing Deadlines Per The Schedule Specified In Section 3 2.1.7.1 File Patent Application Under Paris Convention. when And As Directed By Ttp, Prepare For Ttp Review English-language Patent Applications Including Proposed Claim Sets, Meeting The Legal Requirements Of The Paris Convention. utilize Invention Disclosure Materials, Known And Disclosed Prior Art, Prior Filed Parent Applications And Information Provided By Investigators To Prepare The Paris Convention Application. as Requested By Ttp, Provide Translation Cost Estimates For Each Country In Which The Paris Convention Application May Be Filed. As Requested By Ttp, Secure Translation Services To Have The Paris Convention Applications Translated In The Countries Designated By Ttp. file As Directed By Ttp, The Paris Convention Application In Specified Foreign Or Regional Patent Offices. 2.1.9 File Foreign Regional Or Foreign National Stage Application Based On Pct Filing. when And As Directed By Ttp, Prepare For Ttp Review English-language Patent Applications Including The Proposed Claims Meeting The Legal Requirements For Each Foreign Regional Or Foreign National Jurisdiction. utilize Invention Disclosure Materials, Known And Disclosed Prior Art, Prior Filed Parent Applications And Information Provided By Inventors To Prepare The Foreign Regional Or Foreign National Stage Application(s). as Requested By Ttp, Provide Translation Cost Estimates For Each Country Or Region In Which The Foreign Regional Or Foreign National Patent Application May Be Filed. Have Translated The Patent Applications Into Languages Requested By Ttp. file Foreign Regional Or National Application(s) So As To Maintain The Benefit Of The Earliest Claimed Priority Dates In Parent Application(s). 2.1.10 Instructions To Foreign Associate To File And Prosecute National And/or Regional Applications. when Specifically Instructed By Ttp, The Contractor Shall Direct Foreign Associate(s) To File Foreign Regional Or Foreign National Applications. contractor Will Provide Copies Of All Foreign Associate And Foreign Patent Office Correspondence And Reminders Of Prosecution Deadlines Per The Schedule Specified In Section 3. when And As Specifically Instructed By Ttp, The Contractor Shall Provide Instructions To Foreign Associate(s) On National Or Regional Patent Prosecution Matters Being Handled By The Foreign Associate. 2.1 Task 2 Formal Patent Documents And Application Parts 2.2.1 Prepare And File Power Of Attorney/revocation Of Power Of Attorney Forms. contractor Will Use Uspto Power Of Attorney Forms. for Foreign Prosecution, Contractor Will Ensure That Foreign Associates Provide And File Jurisdictionally Valid Powers Of Attorney. contractor Will Correspond With Appropriate Parties And Ttp And Acquire All Necessary Authorizing Signatures On Power Of Attorney Documents. All Power Of Attorney Documents Shall Include The Va Id Number, The Contractor S Docket Number, And The Patent Application Serial Number, If Available. 2.2.2 Evaluate Inventorship, Ownership And Prepare Inventor Declaration Or Supplemental Statement. contractor Will Investigate And Determine Inventorship Based On Proposed Patent Claims And Ttp Input And, As Directed By Ttp, Inventor Interviews Or Statements. prepare The Inventor Declarations Or, As Necessary, A Supplemental Statement, And Have Appropriate Parties Sign All Documents. All Inventor Declarations Or Supplemental Statements Shall Include The Va Id Number, The Contractor S Docket Number, And The Patent Application Serial Number, If Available. 2.2.3 File Inventor Declaration, Correct Inventorship During Prosecution, Or File Supplemental Statement. where All Inventors Are Named On The Uspto Application Data Sheet (ads), Contractor May File Inventor Declarations Prior To A Notice Of Allowance Or In Response To A Notice Of Allowability. where Inventors Are Not Named In The Uspto Ads, Contractor Will File Executed Inventor Declaration Or Corrected Ads Forms With The Uspto As Early In Prosecution Of The Application As Possible, Within Statutorily Required Periods And Prior To Publication Of The Application. where Inventorship Changes During The Course Of Prosecution, Contractor Will Obtain Necessary Signatures And File All Required Documentation In Order To Reflect The Change Of Inventorship. Inventorship Should Be Confirmed, And Corrections Should Be Completed Prior To Payment Of The Issue Fee. 2.2.4 Prepare And File Application Data Sheets (ads). Contractor Will Utilize The Uspto Application Data Sheet (ads) Form. The Ads Must Correctly Claim Priority To All Parent Patent Applications, Identify All Inventors, Name Va As Applicant Where Appropriate And Otherwise Comply With Uspto Ads Requirements. 2.2.5 File Revised Application Data Sheet. when Necessary And Directed By Ttp, Contractor Will File Corrected Or Revised Ads. 2.2.6 Prepare And File Amino Acid And/or Nucleic Acid Sequence Listings. where Necessitated By The Subject Matter Of An Application, Contractor Will Prepare And File Amino Acid And/or Nucleic Acid Sequence Listings Compliant With Uspto Or Foreign Patent Office Requirements. 2.2.7 Prepare And File Drawings. where Necessitated By The Subject Matter Of An Application, Contractor Will Prepare And File Accurate Drawings Compliant With Uspto Or Foreign Patent Office Requirements. 2.2.8 Review And Report Patent Application Filing Receipt. Contractor Will Use The Uspto Electronic Filing System (efs) System For Filing U.s. Applications Unless A Filing Deadline Must Be Met And The Efs System Is Not Operational. contractor Will Review Application Filing Receipts For Accuracy And File For Corrections As Necessary And As Directed By Ttp. 2.2.9 File Request For Corrected Filing Receipt. when Necessary And Directed By Ttp, Contractor Will File A Request For Corrected Filing Receipt. 2.2.10 Prepare And Record Domestic And Foreign Assignments. contractor Will Prepare Legally Valid Domestic Assignment Documents And Obtain Assignment Document Signatures Of All Requisite Parties. Assignment Document(s) Requiring Va Signatories Should Be Directed To The Technology Transfer Specialist Responsible For The Application And Must Include The Va Id Number, Contractor Docket Number, Patent Application Serial Number And Inventor Name(s). contractor Will File For Recordation Executed Assignment Document(s) With The Uspto, Preferably At The Time Of Patent Application Filing, But In Any Event Within 60 Days Of Receipt Of The Executed Assignment Document(s). correspond And Consult With Foreign Associates Regarding Foreign Assignment Requirements. Ensure Jurisdictionally Valid And Correct Foreign Assignment Documents Are Filed Within Required National Periods. Assignment Document(s) Requiring Va Signatories Should Be Directed To The Technology Transfer Specialist Responsible For The Application Must Include The Va Id Number, Contractor Docket Number, Patent Application Serial Number And Inventor Name(s). 2.2.11 Record Corrected Assignments. when Necessary And Directed By Ttp, Contractor Will Prepare And File Corrected Assignment Document(s), For Domestic And Foreign Applications. All Corrected Assignment Document(s) Will Be Subject To The Same Requirements Set Forth In Section 2.2.10 Above. 2.2.12 Report Notice To File Missing Parts/missing Requirements And Prepare And File Responses To Notice To File Missing Parts/missing Requirements. contractor Will Notify Ttp Of The Receipt Of A Notice To File Missing Parts Per The Schedule Specified In Section 3. Contractor Will File Fully Responsive Responses To Notices Of Missing Parts Or Missing Requirements. Contractor Will File Within Shortened Statutory Periods Unless Otherwise Directed By Ttp. 2.2.13 Review And Report Notice Of Acceptance Of Application Under U.s.c. 371 And 37 Cfr 1.495. The Contractor Shall Review And Report To Ttp The Notice Of Acceptance Of Application Under U.s.c. 371 And 37 Cfr 1.495, When Applicable. 2.2.14 Report New Or Revised Publication Date. The Contractor Shall Review And Report To Ttp The Notice Of A New Or Revised Publication Date. 2.2.15 Report Publication Of Application. The Contractor Shall Report To Ttp The Notice Of Publication Of All Domestic And Foreign Filed Patent Application(s). 2.2.16 Payment Of Patent Filing Fees. The Contractor Shall Pay All Patent Filing Fees In Accordance With The Uspto Fee Schedule Effective On The Date Of Payment. The Contractor Shall Be Responsible For Timely Handling And Filing Of Submissions To The Uspto And Other Foreign Regional Or Foreign National Patent Offices In Order To Minimize Additional Costs Or Late Fees. In The Event That It Is Determined By The Co That Additional Claimed Costs Are Due To A Delay, Lack Of Action Or Inappropriate Action By The Contractor, The Contractor Agrees That It, And Not Ttp, Shall Be Liable For All Fees And Expenses Related To Professional Services And Other Costs Necessary To Revive Or Otherwise Extend The Time Period For Response. 2.3 Task 3 Substantive Patent Prosecution For Responses To Office Actions, Responses To Formality Requirements And Other Responses Required By The Uspto Or Other Foreign Regional Or Foreign National Patent Office, Contractor Will File Within Shortened Statutory Response Periods, Unless Otherwise Directed By Ttp. Response Extension Of Time Fees Imposed By The Uspto Or Other Patent Offices Will Presumptively Be Paid Out-of-pocket By The Contractor, Unless Contractor Demonstrates That The Late Filing Was Due To Va Action Or Inaction. Similarly, All Costs For The Revival Of Unintentionally Abandoned Applications Will Be Borne By The Contractor, Unless The Contractor Can Clearly And Convincingly Show The Application Was Abandoned As A Result Of Va Action Or Inaction. 2.3.1 File Information Disclosure Statement. The Contractor Shall File Information Disclosure Statement(s), As Needed Per The Uspto Requirements. Prior Art Known To The Contractor, Ttp, And Inventor(s) Shall Be Identified And Discussed In The Background Section Of The Patent Application. The Contractor Will Take All Reasonable Steps To Ensure That Information Disclosure Statement(s) Containing The Known Relevant Prior Art Is Filed Prior To A First Office Action On The Merits. The Contractor Will Have An Ongoing Obligation To File New Art As It Becomes Aware Of The Art, Including Art Cited In Corresponding International Or Foreign Prosecution Proceedings. The Inventor(s) Shall Be Notified In Writing Of The Duty Of Disclosure During The Prosecution Of The Patent Application. 2.3.2 File Preliminary Amendment. the Contractor Shall File A Preliminary Amendment In An Application, When Necessary Or Instructed To Do So By Ttp, At The Time A 35 Usc 371 U.s. Patent Application Is Filed Or Prior To Issuance Of The First Office Action. 2.3.3 Report Office Actions (domestic And Foreign). report To Ttp All Office Actions No Later Than Five (5) Days After The Contractor Receives It From The Office Of The Patent Examining Authority Per The Schedule Specified In Section 3 At 3.3.3. send Reminders To Ttp Of Upcoming Office Action Response Due Dates Per The Schedule Specified In Section 3 At 3.3.3. 2.3.4 Prepare And File Office Action Response For Domestic And Foreign Prosecution. when Specifically Directed By Ttp, Review Office Action And Prepare Draft Response. review Office Action, The Specification, Prior Art, And, With Prior Notification To Ttp, Speak With The Va Investigators When Preparing The Response. Office Action Responses Must Address All Rejections Or Objections Raised By The Patent Office In The Office Action And Must Be Drafted In View Of Applicable Statutes, Regulations And Current Case Law. timely File The Response To The Office Action With The Uspto Or Foreign Patent Office; Extensions Of Time May Be Taken Only When Authorized By Ttp. 2.3.5 Report International Search Report (isr) Under The Pct. Provide Copy Of The International Search Report (isr) And When Requested By Ttp, Review Isr, Prepare Informal Comments For Ttp Review. 2.3.6 File Pct Article 19 Amendment. The Contractor Shall File An Article 19 Amendment Only When Expressly Authorized By Ttp. 2.3.7 File Demand For International Preliminary Examination Report (iper). The Contractor Will Prepare And File Demands For International Preliminary Examination When, And As Directed By, Ttp. 2.3.8 Report International Preliminary Examination Report (iper). The Contractor Will Report The International Preliminary Examination Report (iper) To Ttp After Receipt From The International Examining Authority. 2.3.9 File Pct Article 34 Amendment. The Contractor Shall File An Article 34 Amendment Only When Expressly Authorized By Ttp. 2.3.10 File Inventors Declarations/affidavits. When Necessitated By Prosecution And Directed By Ttp, The Contractor Shall Consult And Confer With The Inventor(s) To Draft Declarations Appropriate To The Prosecution Strategy Formulated With Ttp. 2.3.11 File Request For Continued Examination. The Contractor Shall File A Request For Continued Examination (rce) Only When Expressly Authorized By Ttp. 2.3.12 Represent Va Before The Patent Trial And Appeals Board (ptab). The Contractor Will Represent Va, In Person As Necessary, Before The Patent Trial And Appeals Board (ptab) In All Matters Assigned By Task Order To The Contractor, Including Without Limitation, Derivation And Interference Proceedings. 2.3.13 File Notice Of Appeal. The Contractor Shall Only File A Notice Of Appeal When Expressly Authorized By Ttp. 2.3.14 Prepare And File Appeal Brief. The Contractor Shall Only File An Appeal Brief When Expressly Authorized By Ttp. 2.3.15 File Petition. The Contractor Shall Only File A Petition When Expressly Authorized By Ttp. 2.3.16 Report Notice Of Interference And Derivation Proceedings. the Contractor Shall Provide Ttp With A Copy Of Any Notices Of Interference Of Derivation Proceedings Per The Schedule Set Forth In Section 3. 2.3.18 File Continuation And Divisional Patent Applications. the Contractor Will Prepare And File Continuation And Divisional Applications When And As Directed By Ttp; The Contractor Will Ensure That Any Divisional Or Continuation Applications Are Filed Prior To The Payment Of Issue Fee In The Parent Application Unless Expressly Instructed To Do Otherwise By Ttp. 2.3.19 File Express Abandonment (foreign And Domestic). No Patent Application May Be Voluntarily Abandoned Without Written Authorization From Ttp And Written Confirmation From The Co Or Cor. Written Confirmation May Be Made Through Email Communication. 2.3.20 Report Notices Of Abandonment And Revival (foreign And Domestic) the Contractor Will Be Presumptively Responsible For Any Unavoidably Or Unintentionally Abandoned Patent Applications And Will Solely Bear The Costs Of Revival. 2.4 Task 4 Issuance And Post Issuance 2.4.1 Review And Report Notice Of Allowance/issue Fee Due. The Contractor Shall Review And Report To Ttp The Notice Of Allowance/issue Fee Within A Week From When The Contractor Receives The Notice Per The Schedule Set Forth In Section 3. prior To Paying Any Issue Fee, The Contractor Shall: review And Confirm That Inventorship Is Accurate; confirm That Priority Is Accurately Claimed; to The Best Of Contractor S Ability, Ensure That All Relevant Art Has Been Cited In An Ids Initialed By The Examiner; review Examiner S Amendments (if Any) And Communicate Amendments To Ttp; And prepare And File Necessary Corrections To The Application. 2.4.2 Pay Issue Fee. The Contractor Shall Timely Pay The Issue Fee When Directed By The Ttp Cor. 2.4.3 Review And Report Issue Notification. The Contractor Shall Review And Report The Notification That The Patent Will Issue Within A Week From When The Contractor Receives The Notice Per The Schedule Set Forth In Section 3. 2.4.4 Review And Report Letters Patent. The Contractor Shall Review And Report The Receipt Of The Letters Patent And Provide Patent Ribbon Copies To Va. 2.4.5 Report Maintenance And Annuity Fee Deadlines. The Contractor Shall Report All Maintenance And Annuity Fee Due Dates And Deadlines And Send Ttp Reminders Of Upcoming Maintenance And Annuity Fee Due Dates Per The Schedule Set Forth In Section 3. 2.4.6 Pay Maintenance And Annuity Fee(s). The Contractor Shall Timely Pay The Maintenance And Annuity Fees Unless Ttp Expressly Indicates In Writing And The Cor Confirms In Writing That Contractor Should Not Pay Maintenance Or Annuity Fees. 2.4.7 File Petition To Correct Issued Patent. The Contractor Will Prepare And File Post-issuance Corrections As Necessary And After Consultation With Ttp. 2.4.8 Foreign Opposition Proceedings. the Contractor Will Promptly Communicate The Notice Of Opposition Proceedings To Ttp According To The Schedule Set Forth In Section 3. the Contractor Will Coordinate Meetings With Ttp And The Foreign Associate(s) In Order To Formulate A Strategy For Responding To The Opposition. the Contractor Will Arrange And Manage Representation Before Foreign Opposition Boards. 2.4.9 Supplemental Examination Requests. When And As Directed By Ttp, The Contractor Shall Request Supplemental Examination. 2.4.10 Request For Reexamination. When And As Directed By Ttp, The Contractor Shall Request Reexamination Of An Issued U.s. Patent. 2.4.11 Report Notice Of Ex Parte Reexamination. The Contractor Will Report The Receipt Of Demands For Ex Parte Reexamination Represent Ttp And Assist In The Prosecution Of Ex Parte Reexaminations. 2.4.12 Post Grant And Inter Parties Review. When And As Directed By Ttp, File For Post Grant Review Or Inter-parties Review. 2.5 Task 5 Miscellaneous 2.5.1 Prepare And Submit Pre-issuance Submissions (35 Usc 112(e)). Where Requested By Ttp, Consult With Ttp And Prepare Pre-issuance Submissions (third Party Submission) To The Uspto. 2.5.2 Advise And Consult On Intellectual Property (ip) Matters. When Specifically Instructed By Ttp, The Contractor Shall Advise And Consult With Ttp (and Other Va Offices As Directed By Ttp): on Ip Related Issues Dealing With Possible Patent Litigation. Patent Litigation Matters Are Handled By Department Of Justice In Coordination With Va S Office Of General Counsel. on U.s. Patent Prosecution Strategy And Portfolio Management. on Patent Valuation And Licensing Strategy. on Enforcement Of Va S Intellectual Property Licenses And Agreements Including Joint Intellectual Property. on International And Foreign Patent Prosecution Strategy And Portfolio Management. filing And Registration Of Other Va-owned Intellectual Property, Including But Not Limited To Trademark Applications And Copyright Registrations. on Other Ip Issues Not Directly Related To Pending Patent Applications Or Issued Patents. 2.5.3 Respond To Information Requests Concerning Outstanding Patent Prosecution , Other Legal Or Administrative Matters. Acknowledge And Respond, If Possible, To Informational Requests From Technology Transfer Office Addressing Thoroughly All Points Raised Within One Business Day Of Ttp Query. 2.5.4 Prepare Docket Reports. When Specifically Instructed By Ttp, Prepare A Docket Report Of The Pending Applications And A Status Of Each Application, Including Information Regarding Outstanding Office Actions And Other Uspto Requirements. 2.5.5 Matter Close-out And/or Transfer. Task Orders For A Particular Matter May Be Terminated For Cause Or Convenience. Where A Matter Is Transferred Following Termination Or Expiration Of A Task Order, Contractor Agrees To Ensure All Attorney Work Product, Files And Information Concerning The Matter Are Transferred As Instructed By Ttp. Where Requested By Ttp, Contractor Will Accept Transfer Of Legacy Matters From Prior Contracted Va Law Firms. 3. Deliverables Cross Referenced To Tasks And Default Time Of Performance all Deliverable Correspondence Must Be Directed To Both The Managing Technology Transfer Specialist And To The Va Patent Email Box: Vatechtp@va.gov. Days For Purpose Of This Solicitation Means Calendar Days item deliverables Cross- Referenced To Tasks deliverable (unless Otherwise Specified In An Awarded Task Order) time Of Performance (unless Otherwise Specified In An Awarded Task Order) 3.1.1 [3.1.1] Prepare And Submit Patentability Assessment provide Ttp With Completed Assessment Ttp Specified Due Date 3.1.2 [3.1.2] File U.s. Design Patent Application filing Receipt And Copy Of The Application within 2 Weeks Of Filing 3.1.3 [3.1.3] File U.s. Provisional Application (a) Provide Ttp Draft Application (b) Provide Ttp Filing Receipt And Copy Of The Application As Filed (a) 30 Days Prior To Filing Due Date (b) Within 2 Weeks Of Filing 3.1.3.1 [3.1.3.1] Provide U.s. Provisional Application Conversion Date Reminders update On The Us Provisional Application Deadlines provide Ttp With Notice Of Filing Deadline 6 Months Prior To Conversion, 3 Months Prior To Conversion, If Necessary, And 1 Month Prior To Conversion, If Necessary 3.1.4 [3.1.4] File U.s. Non-provisional Utility Application (including Con/div) (a) Provide Ttp With Draft Application And, If Requested, Written Or Oral Explanation Of Claim Drafting Strategy (b) Filing Receipt And Copy Of The Application (a)30 Days Prior To Filing Due Date (b) Within 2 Weeks Of Filing 3.1.5 [3.1.5] File International Application Under Patent Cooperation Treaty (pct) (a)provide Ttp With Draft Application And, If Requested, Written Or Oral Explanation Of Claim Drafting Strategy (b) Provide Ttp Filing Receipt And Copy Of The Application (a)30 Days Prior To Filing Due Date (b) Within 2 Weeks Of Filing 3.1.5.1 [3.1.5.1] Provide Ttp Notice Of Pct Request, Response, And National Stage Conversion Filing Deadlines. provide Ttp With Notices Of Filing Deadline 6 Months, 3 Month And 1 Month Prior To The Filing Deadline 3.1.6 [3.1.6] File U.s. National Stage Application Under Pct provide Ttp With Filing Receipt And Copy Of The Application within 2 Weeks Of Filing 3.1.7 [3.1.7] Provide Paris Convention Filing Deadline Reminders provide Ttp With Notices 6 Months Prior To Deadline, 3 Months Prior To Deadline, If Necessary, And 1 Month Prior To Deadline, If Necessary 3.1.7.1 [3.1.7.1] File Patent Application Under Paris Convention. (a) Provide For Ttp Review, English-language Patent Applications Meeting The Legal Application Requirements Of The Paris Convention (b)provide Foreign Language Patent Document Translation Estimates As Requested By Ttp. (c) Have Application Translated Into Languages Required By Ttp (d) File Paris Convention Application (a) Provide Ttp With Patent Application (b)written Cost Estimate(c) Copy Of Each Translation (d) Provide Ttp With Filing Receipt And Copy Of The Patent Application As Filed (a) Forty-five (45) Days Prior To Any Filing Deadline (b) Within 5 Business Days Of Request (c) Translated Copy Due One Week Prior To Filing Deadline (d) Within 2 Weeks Of Filing 3.1.9 [3.1.9] File Foreign Regional Or Foreign National Stage Application Based On Pct Filing . (a) Provide For Ttp Review, English-language Patent Applications Meeting The Legal Application Requirements For The Regional Or National Stage Application (b)provide Foreign Language Patent Document Translation Estimates As Requested By Ttp. (c) Have Application Translated Into Languages Required By Ttp (d) File Foreign Regional Or Foreign National Stage Application Based On Pct Filing. (e) Pay Foreign Attorney Or Agent Fees For Providing Services In The Country Or Region Of Filing. (a) Provide Ttp With Patent Application (b)written Cost Estimate (c) Copy Of Each Translation (d) Provide Ttp With Filing Receipt And Copy Of The Patent Application As Filed (e) Provide Ttp An Itemized List Of Services Provided By Agent Or Attorney (a) Forty-five (45) Days Prior To Any Filing Deadline (b) Within 5 Business Days Of Request (c) Translated Copy Due One Week Prior To Filing Deadline (d) Within 2 Weeks Of Filing (e) Must Be Included In Regular Invoices To Ttp 3.1.10 [3.1.10] Filing And Prosecution Instructions To Foreign Associate Regarding Regional And/ Or National Stage Applications (a) Direct Foreign Associate To File Regional Or National Application (b) Provide Instructions To Foreign Associate(s) (c)provide Copies Of All Foreign Associate And Foreign Patent Office Correspondence. (d) Provide Reminder Notices Of Prosecution Filing Deadlines (a)email Confirmation Foreign Associate Has Filed Application (b)email Confirmation Foreign Associate Has Or Will Act As Directed (c) Provide Copy Of Correspondence (d) Provide Notice To Ttp (a)within 2 Business Days Of Task Assignment By Ttp To Contractor (b) Within 2 Business Days Of Task Assignment By Ttp To Contractor (c) Within 10 Days Of Contractor Receipt Of Communication. (d) At 3 Months, 1 Month And 2 Weeks Prior To The Prosecution Deadline 3.2.1 [3.2.1]prepare And File Powers Of Attorney notification Of Completed Task To Ttp within 2 Weeks Of Filing 3.2.2 [3.2.2]evaluate Inventorship, Ownership And Prepare Inventor S Declaration Or Supplemental Statement notification Of Completed Task To Ttp within 2 Weeks Of Task Assignment/ Prior To Notice Of Allowance. 3.2.3 [3.2.3]file Inventor Declaration, Correct Inventorship During Prosecution, Or File Supplemental Statement copy Of Filing Receipt within 2 Weeks Of Filing 3.2.4 [3.2.4]prepare And File Application Data Sheets. provide Copy To Ttp With Filed Application within 2 Weeks Of Filing 3.2.5 [3.2.5]file Revised Application Data Sheet filing Receipt And Copy Of Revised Application Data Sheet within 2 Weeks Of Filing 3.2.6 [3.2.6] Prepare And File Amino Acid And/or Nucleic Acid Sequence Listings. provide List Of Seq Idss With Filed Application within 2 Weeks Of Filing 3.2.7 [3.2.7]prepare And File Drawings provide Copy To Ttp With Filed Application within 2 Weeks Of Filing 3.2.8 [3.2.8]review And Report Patent Application Filing Receipt. provide Copy To Ttp With Filed Application within 2 Weeks Of Filing 3.2.9 [3.2.9]file Request For Corrected Filing Receipt copy Of Pto Corrected Filing Receipt within 2 Weeks Of Contractor Receipt Of Pto Communication 3.2.10 [3.2.10] Prepare And Record Domestic And Foreign Assignments filing Receipt And Copy Of The Assignment within 2 Weeks Of Filing 3.2.11 [3.2.11]file Domestic And Foreign Corrective Assignment filing Receipt And Copy Of The Corrected Assignment within 2 Weeks Of Filing 3.2.12 [3.2.12]report Notice To File Missing Parts/missing Requirements And Prepare And File Responses To Notice To File Missing Parts/missing Requirements. notification Of Completed Task To Ttp within 2 Weeks Of Task Assignment 3.2.13 [3.2.13]review And Report Notice Of 371 Acceptance notification Of Completed Task To Ttp To Ttp within 2 Weeks Of Filing 3.2.14 [3.2.14]report New Or Revised Publication Date notification Of Completed Task To Ttp within 2 Weeks Of Task Assignment 3.2.15 [3.2.15] Report Publication Of Application notification Of Completed Task To Ttp within 2 Weeks Of Task Assignment 3.2.16 [3.2.16] Pay Us, Wipo And Foreign Patent Office Filing And Prosecution Fees At The Current Fee Rate payment Notification For Specific Fees Upon Completion Of Task within 1 Week Of Payment 3.3.1 [3.3.1] File Information Disclosure Statement filing Receipt within 2 Weeks Of Filing 3.3.2 [3.3.2]file Preliminary Amendment filing Receipt within 2 Weeks Of Filing 3.3.3 [3.3.3] Report Office Actions And Provide Response Due Date Reminders (domestic And Foreign Prosecution) (a). Report Receipt Of Office Action (b). Provide Response Due Date Reminder During Shortened Statutory Response Periods (c). Provide Response Due Date Reminder During Extension Periods For Response (a) Email Notice To Ttp And Tech Transfer Specialist With Action Attached (b) Email Notice To Ttp And Tech Transfer Specialist With Action Attached (c) Email Notice To Ttp And Tech Transfer Specialist With Action Attached (a)within 5 Calendar Days Of Receipt Of Action By Contractor Of Action (b) Provide Reminders Using Following Schedule Until Response Filed Or Extension Period Entered: Reminders Sent At 30 Days, Two Weeks And 1 Week Prior To Shortened Statutory Response Date. (c) Provide Reminders Using Following Schedule: Reminders Sent At 30 Days, Two Weeks And 1 Week Prior To Each 30 Day Extension Period Response Due Date Until Response Is Filed Or Application Intentionally Abandoned By Ttp. 3.3.4 [3.3.4] Prepare Draft Office Action Response For Domestic And Foreign Prosecution Copy Of Draft Office Action Response as Directed By Ttp 3.3.4.1 [3.3.4]file Office Action Response For Domestic And Foreign Prosecution filing Receipt And Copy Of Office Action Response within 2 Weeks Of Filing 3.3.5 [3.3.5]report International Search Report (pct) ttp Notice Including Copy Of Isr within 5 Days Of Contractor Receipt Of Report 3.3.6 [3.3.6]file Pct Article 19 Amendment filing Receipt And Copy Of Pct Amendment within 2 Weeks Of Filing 3.3.7 [3.3.7]file Demand For International Preliminary Examination Report filing Receipt within 2 Weeks Of Ttp Request 3.3.8 [3.3.8]report International Preliminary Examination Report. ttp Notice/copy Of Report within 2 Weeks Of Contractor Receipt Of Report 3.3.9 [3.3.9]file Pct Article 34 Amendment filing Receipt And Copy Of Pct Amendment within 2 Weeks Of Filing 3.3.10 [3.3.10] File Inventor S Declarations/affidavits filing Receipt And Copy Of Declaration/affidavit within 2 Weeks Of Ttp Assignment Of Task 3.3.11 [3.3.11]file Request For Continuing Examination filing Receipt And Copy Of Request within 2 Weeks Of Filing 3.3.12 [3.3.12] Represent Va Before The Patent Trial And Appeals Board. provide Summary Memo Of Hearing within 1 Week Of Hearing 3.3.13 [3.3.13]file Notice Of Appeal filing Receipt within 2 Weeks Of Filing 3.3.14 [3.3.14] Prepare And File Appeals Brief filing Receipt And Copy Of Appeal Briefs within Appeals Brief Deadline 3.3.15 [3.3.15]file Petiti On filing Receipt And Copy Of Petition within 2 Weeks Of Filing. 3.3.16 [3.3.16] Report Notice Of Interference Or Derivation Proceedings. ttp Notification within 5 Days Of Contractor Receipt Of Notice 3.3.18 [3.3.18]file Continuing And Divisional Patent Applications filing Receipt within 2 Weeks Of Filing. 3.3.19 [3.3.19] File For Express Abandonment filing Receipt within 2 Weeks Of Filing. 3.3.20 [3.3.20]report Notice Abandonment And Revival (foreign And Domestic) ttp Notification within 2 Days Of Contractor Receipt Of Notice 3.4.1 [3.4.1] Review And Report Notice Of Allowance / Issue Fee Due notification Of Completed Task To Ttp within 1 Week Of Notice 3.4.2 [3.4.2] Pay Issue Fee filing Receipt Of Issue Fee within 2 Weeks Of Filing 3.4.3 [3.4.3] Review And Report Issue Notification notification Of Completed Task To Ttp within 2 Weeks Of Notification 3.4.4 [3.4.4] Review And Report Letters Patent ribbon Copy Of Patent within 2 Weeks Of Receipt By Contractor 3.4.5 [3.4.5] Report Maintenance And Annuity Fee Deadline notification Of On A Quarterly Basis A Report On The U.s. Maintenance Fees And Foreign Annuity Payments Due In The Time Interval Forward To Sixâ (6) Months From The Date Of Each Quarterly Report on A Quarterly Basis And Within 2 Weeks Of Open Period Deadline. 3.4.6 [3.4.6] Pay Maintenance And Annuity Fee filing Receipt Of Maintenance And Annuity Fee within 2 Weeks Of Filing 3.4.7 [3.4.7] File Petition To Correct Issued Patent filing Receipt And Copy Of Amendments within 2 Weeks Of Filing 3.4.8 [3.4.8] Report Notice Of Foreign Opposition ttp Notification within 5 Days Of Contractor Receipt Of Notice 3.4.9 [3.4.9] Supplemental Examination Requests filing Receipt And Copy Of Petition within 30 Days Of Ttp Task Assignment 3.4.10 [3.4.10]request Reexamination filing Receipt And Petition Requesting Reexamination within 30 Days Of Ttp Task Assignment 3.4.11 [3.4.11]report Notice Of Ex-parte Reexamination ttp Notification within 5 Days Of Contractor Receipt Of Notice 3.4.12 [3.4.12]post Grant And Inter Partes Review filing Receipt And Copy Of Petition within 30 Days Of Ttp Task Assignment 3.5.1 [3.5.1prepare And Submit Pre-issuance Submissions (35 Usc 112(e)) filing Receipt And Copy Of All Associated Documents within 30 Days Of Ttp Task Assignment 3.5.2 [3.5.2] Advise And Consult On Intellectual Property (ip) Matters As Required In Task Order As Directed By Ttp 3.5.3 [3.5.3]acknowledge And Respond To Information Requests Concerning Outstanding Patent Prosecution, Other Legal Or Contract Administration Matter. response To Information Request within 1 Business Day Of Request 3.5.4 [3.5.4prepare Docket Report copy Of Docket Report within 3 Days Of Task Assignment 3.6 [3.5.5]matter Close-out And Transfer report Of All Matters And Files Transferred And Confirmation From Transferee Of Receipt Of All Listed Matters And Files. within 30 Days Of Assignment Of Task Or Sooner, If And As Required By Ttp. 4. Reports 4.1. Reporting Format all Reports, Including Billing Statements, Required Or Requested Under This Contract Shall Be Electronically Transmitted To Ttp In Legal Electronic Data Exchange Standard (ledes) Compatible Format. 4.2 Quarterly Updates status Reports Will Be Submitted On A Quarterly Basis.â Reports Should Be A Comprehensive Listing Of The Firm S Va Portfolio.â Reports Will Be Submitted Electronically To The Cor No Later Than The 10th Business Day Of Each Quarter.â Va Fiscal Year Quarters Begin October (1st Qtr.), January (2nd Qtr.), April (3rd Qtr.) And July (4th Qtr.).â â the Content Of The Report Should Allow For Va To Capture Current Matters And Forecast Pending Actions Associated With The Portfolio. The Template To Follow Will Be Provided Post-award. Firms Should Email Status Reports To The Cor To The Va Tech Transfer Patents (ttp) Mailbox (vatechtp@va.gov).â The Subject Of The Email For Quarterly Status Reports Should Be Clearly Titled: [firm Name_qtrly Status Report_month Year] (ex. Abc Law Firm Quartey Status Report, Apr-jun 2023). firms Shall Also Be Required To Submit A Consolidated Billing Statement At The Close Of The Fiscal Year Detailing All Invoices Submitted For Work Performed During The Fiscal Year. The Report Shall Be Submitted To The Ttp Mailbox (vatechtp@va.gov) On Or Before September 30th Of Each Contract Year. status Reports Shall Include, At A Minimum: current Prosecution Status Of All Matters In Your Va Portfolio. patent Applications Filed, Abandoned Or Closed office Actions patents Issued, Patent Number, Issue Date va Invention Disclosure Number/patent Firm Docket Number/patent Serial Number Filing Date As Applicable, Task Order Number; title Of Subject Matter details Of Actions Completed During The Quarter With Filing Dates actions Due Or Required In The Next Quarter With Due Dates report On The U.s. Maintenance Fees And Foreign Annuity Payments Due In The Time Interval Forward To Sixâ (6) Months From The Date Of Each Quarterly Report include Information Related To Extensions, If Applicable (quantity Of Extensions Used/quantity Available For Use) status Of Active Milestones Including Slippage And Proposed Revision Of Target Date(s), When Appropriate comments/discussions Section, When Appropriate. 4.3 Document/email Correspondence Format the Following Shall Apply To All Correspondence/emails To Technology Transfer Program Office: deliver Electronically Via Email To The Ttp Mailbox (vatechtp@va.gov) With A Copy To The Va Ttp Managing Technology Transfer Specialist Handling The Matter. unless Otherwise Specified Herein, Deliverables Shall Be In Microsoft Word, Excel Or Adobe Pdf Format only Ribbon Copies Of Issued Patents Will Be Delivered By Mail To Ttp Unless Otherwise Directed. 4.3.1 Correspondence/ Email Shall Reference: va Invention Disclosure Number (va Id#) patent Application Serial Number law Firm Docket Number task Order Number immediate Lineage (i.e., This Application Is A Continuation Of Patent Serial #...) inventor(s) title Of Invention 4.4 Documents Filed With The Uspto contractor Shall Ensure All Documents/filings Submitted To The Uspto On Behalf Of Va Shall Include The Va Invention Disclosure Number (va Id#) In The Docket Reference Number Of The Uspto Form. Contractor Shall Also Ensure That All Documents/filings Submitted To The Uspto On Behalf Of The Va Shall Be Filed Under Va S Uspto Customer Number. 5. Personnel Responsibilities And Qualifications in The Performance Of The Contract, The Contractor Shall Provide Personnel With Scientific Training And Patent Prosecution Experience Consistent With Va S Technology Areas To Adequately Perform The Tasks Described In The Statement Of Work (sow). A Resume Or A Statement Of Qualifications Shall Be Submitted For All Persons Assigned To The Contract. At A Minimum, The Resume Or Statement Of Qualifications Shall Contain A Description Of The Individual S Experience, Education, Skills And Any Other Information That Would Be Pertinent To The Position. For Replacement Personnel, The Contractor Shall Notify The Contracting Officer S Representative (cor) Ten (10) Calendar Days In Advance. The Contractor Shall Submit A Detailed Explanation Of The Reasons For The Replacement And A Qualification Statement That Can Be Evaluated By The Cor For Consistency With The Requirement. staffing The Personnel Necessary To Fulfill The Requirements Of This Contract Is Solely And Wholly The Responsibility Of The Contractor. It Is The Responsibility Of The Contractor To Determine How Each Position Will Be Covered, I.e., Whether Each Position Needs An Individual Person Or If Any Of The Positions Can Be Combined. Subcontracting Of Legal Services Under This Contract Is Not Allowed, Other Than For Foreign Filed Matters. attorneys Must Have A Law Degree From An American Bar Association (aba) Accredited Law School, Be An Active Member In Good Standing Of The Bar Of Any State, The District Of Columbia, Puerto Rico, Or Any Territorial Court Under The Constitution And Be Registered To Practice As A Patent Attorney Before The U.s. Patent And Trademark Office. Patent Agents Must Be Registered To Practice As A Patent Agent Before The U.s. Patent And Trademark Office. Foreign Attorneys Or Foreign Agents Utilized By The Contractor Must Be In Good Standing Before The Patent Office To Which They Will Be Employed To Prosecute Patent Applications On Behalf Of Va. the Following Employee Definitions Are Used In The Contract Line Items Numbers (clin) Table For Bidding And Billing Purposes: partner/senior Counsel/of Counsel: A Current Or Former Equity Or Non-equity Partner, Shareholder, Or Other Senior Member Of The Firm Who Is A Licensed Attorney And Has At Least Tenâ (10) Years Of Experience As A Registered Practitioner Before The Uspto. The Attorney Must Have Expertise In Us And International (patent Cooperation Treaty, Pct) Patent Prosecution, As Well As Have Good Working Knowledge Of Foreign Filing And Prosecution Practices In Major Markets. senior Patent Attorney: A Licensed Attorney Having A Minimum Of Sixâ (6) Years Of Patent Prosecution Experience Before The Uspto As A Registered Practitioner. The Attorney Must Have In Depth Knowledge Of U.s. Patent And Pct Statutes, Rules, Regulations And Case Law. junior Patent Attorney: A Licensed Attorney Having A Minimum Of Threeâ (3) Years Of Experience As A Registered Practitioner Before The Uspto. The Attorney Must Have A Strong Working Knowledge Of U.s. Patent And Pct Statutes, Rules, Regulations And Case Law. senior Patent Agent: A Person Registered To Practice As A Patent Agent, And In Good Standing Before The Uspto, Having A Minimum Of Sixâ (6) Years Of Experience As A Registered Patent Agent. junior Patent Agent: A Person Registered To Practice As A Patent Agent, And In Good Standing Before Uspto, Having A Minimum Of Threeâ (3) Years Of Patent Prosecution Experience. technical Specialist: A Person Having Graduated With An Advanced Degree Within The Last Three Years In A Technical Area Of Interest To The Va, Having A Minimum Of One (1) Year Of Patent Prosecution Experience. patent Searching Specialist: A Person Who Has The Background And Training To Perform Scientific Literature And Patent Document Searches And Has At Least Two (2) Year Of Experience Conducting Such Patent, Scientific And Literature Searches. paralegal: A Person Who Has Taken And Passed The Paralegal Course And Has At Least Two (2) Years Experience Handling Patent Application Prosecution Formalities Under The Supervision Of An Attorney Or Patent Agent. docket Clerk: A Person Who Performs Administrative Tasks Such As Filing, Order Invoicing, Mailing And General Docketing And Office Support Functions. the Legal Firm Awarded This Contract Shall Be Made Up Of Practitioners Who Can Demonstrate Technical Expertise In Patent Filing I Encompassing All Of The Following Disciplines: Chemistry -organic, Inorganic, Analytical, Combinatorial, Pharmaceutical And Industrial Chemistry; Biology And Biotechnology E.g. Biochemistry, Molecular Biology, Immunology, Virology, Bacteriology, Genetic Engineering, Genomics, Proteomics; Recombinant Cells And Organisms; Recombinant Nucleic Acids, Peptides And Proteins. Methods And Compositions Involving Recombinant Dna Technology. Pharmaceutical Sciences- Scientific Disciplines Involving The Design And Development Of Compounds, Compositions, Delivery Devices And Formulations Intended For Therapeutic Use In Humans; E.g. Small And Macromolecular Drugs, Biologics, Therapeutic Peptides, Proteins, And Nucleic Acids, Therapeutic Antibodies; Pharmacology, Pharmacodynamics, Pharmacogenomics. Medical Devices Scientific Disciplines Involving The Development Of Products Intended For Preventative, Therapeutic Or Diagnostic Use In Patients, Which Do Not Act On The Patient Predominantly Through Chemical Or Biochemical Means. E.g. Pacemakers, Infusion Pumps, Dialysis Machines, Artificial Organs, Implants, Cochlear Implants, Imaging Technologies Including Fluoroscopy, Magnetic Resonance Imaging (mri), Nuclear Medicine, Positron Emission Tomography (pet), Pet-ct Scans, Projection Radiography Such As X-rays And Ct Scans, Tomography, Ultrasound, Optical Microscopy, And Electron Microscopy; Genetic Testing Kits, Disease Diagnostic Methods And Kits. Electrical Engineering/computer Science E.g. Computer Hardware And Software, Information Technology, Telemedicine, Laboratory And Medical Instrumentation, Bio-robotics. Mechanical Engineering E.g. Patient Assistive Devices, Beds, Wheel Chairs, Surgical Tools And Devices, Prosthesis And, Laboratory Automation. bioinformatics E.g. Computer Science, Statistics, Mathematics And Engineering To Analyze Biological Data design E.g. Ornamental Appearance Protection Across A Range Of Industries, Products And Services Including Consumer Electronics, Consumer Goods, Medical And Industrial Products And Graphical User Interfaces (guis). expertise To Be Demonstrated On An Individual Basis By A Combination Of Relevant Academic Training And Experience Successfully Prosecuted Patents. a Roster Of Proposed Personnel With Above Mentioned Criteria Shall Be Included In The Offeror S Technical Proposal. The Contractor Shall Provide A Listing Of The Staffing Requirements, Including A Description Of The Personnel That Will Be Utilized To Accomplish Each Task In A Request For Quote Of Services. if At Any Time From Date Of Award To The End Of The Contract Any Originally Specified Personnel Are No Longer Available, The Va Reserves The Right To Review The Qualifications Of Proposed Replacement Personnel And To Accept Or Reject Individuals Prior To Their Assignment To The Project. The Contractor Shall Remove Any Employee From The Performance Of Contract Tasks Within Five (5) Workdays Of Receiving Notice From The Contracting Officer That The Employee S Performance Is Unsatisfactory. 6. Communications during The Performance Of This Contract, The Contractor Will Conduct On-going Communications Via E-mail And Telephone With Va Ttp Staff And Investigators To Discuss Issues And Updates Involving Va Technologies. The Contracting Officer S Representative (cor) Will Serve As The Primary Point-of-contact Between The Contractor And Ttp. The Cor And Va Ttp Will Coordinate All Patent Prosecution Activities. The Cor Will Facilitate Communication Between Va Ttp And The Contractor. Contractor Agrees To Provide Prosecution Related Notices In A Format Which May Be Electronically Imported Into Va S Docketing Database And Will Use Reasonable Efforts To Work With Va To Automate Docket Reporting Events In Order To Minimize Administrative Efforts. The Cor Will Coordinate All Contract Activities Approved Under The Task Order Necessary For Fulfilling The Requirements Of The Statement Of Work (sow). Contractor Will Not Contact Inventors Without Authorization By Ttp. The Contractor Should Direct Any Issues Related To The Terms And Conditions Of The Contract, Or Any Contractual Issue To The Contracting Officer Assigned To This Contract. 7. Place Of Performance the Place Of Performance Will Take Place At The Contractor S Place Of Business. 8. Government-furnished Equipment there Will Be No Government-furnished Equipment Provided. 9. Travel travel May Also Occasionally Be Required To Accompany The Technology Transfer Specialists In Conducting Site Visits With Inventors At Va Medical Centers Throughout The Va S National Organization. reasonable Transportation And Travel Costs Will Be Reimbursed In Accordance With The Federal Travel Regulations (ftr) In Accordance With Far 31.205-44(travel Cost). Travel Must Be Approved In Advance By The Cor. The Contractor Shall Submit Travel Invoices To The Cor. Travel Costs Shall Not Exceed $5,000.00 Per Patent-related Matter Expenses Shall Not Exceed On A Daily Basis The Maximum Per Diem Rates In Effect At The Time Of Travel As Per The Federal Travel Regulation, Prescribed By The General Services Administration For Travel In The Contiguous United States. 10. Confidentiality And Non-disclosure all Attorney Work-product Created Under This Contract Is And Will Be The Confidential Property Of Va. Contractor Acknowledges That In The Performance Of This Contract It May Receive Or Have Access To Sensitive Or Confidential Information, Including Personal Information Of Va Employees And Third-party Proprietary Information. The Contractor Shall Use And Disclose Such Information Only As Directed By Va. Contractor Agrees To Restrict Access To Va Information Only To Those Employees Necessary To Meet Contractor S Obligations Under This Contract. contractor Shall Ensure That Its Employees Understand And Comply With All Applicable Laws, Rules, Regulations And Va Policies Governing Access To Sensitive And Confidential Information. Contractor Agrees That Any Employee Performing Work Under This Agreement Who Misuses Va Sensitive Or Confidential Information Will Be Immediately Removed From Eligibility To Further Work Under The Contract. response Commitment i. Response: a. Capability Statement. Please Provide Your Socioeconomic Status, And Size Classification (large Business, Small Business, Sdvosb, Vosb, Etc.). the Va Is Also Requesting From Industry Alternative Ways To Develop The Price/cost Schedule With Applicable Line Items. The Va Is Interested In How Industry Determines Pricing And Billing For These Services. all Responses Should Be Directed To Annmarie.stewart@va.gov By November 14, 2022, 11am Est. b. Submittals Furnished Will Not Be Returned To The Sender. No Debriefs Will Be Conducted. Eligibility In Participating In A Future Acquisition Does Not Depend Upon A Response To This Notice. c. Proprietary Information Is Neither Requested Nor Desired. If Such Information Is Submitted, It Must Clearly Be Marked "proprietary" On Every Sheet Containing Such Information, And The Proprietary Information Must Be Segregated To The Maximum Extent Practicable From Other Portions Of The Response (e.g., Use An Attachment Or Exhibit). ii. Timeline: this Request Will Close On November 14, 2022, 11am Est notes: 1. This Sources Sought Is For Planning Purposes Only, And Does Not Constitute A Commitment, Implied Or Otherwise, That A Procurement Action Will Follow. The Department Of Veterans Affairs Will Use The Information Submitted In Response To This Notice At Its Discretion And Will Not Provide Comments To Any Submission; However, The Department Of Veterans Affairs Reserves The Right To Contact Any Respondent To This Notice For The Sole Purpose Of Enhancing The Department Of Veteran Affairs Understanding Of The Notice Submission. 2. The Content Of Any Responses To This Notice May Be Reflected In Any Subsequent Solicitation, Except For Content Marked Or Designated As Business Confidential Or Proprietary Which Will Be Fully Protected From Release Outside The Government. the Department Of Veteran Affairs Contracting Office Poc: ann Marie Stewart contracting Officer annmarie.stewart@va.gov
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