Patent Annuity Services

The United States Department of Agriculture (USDA), Agricultural Research Service (ARS), in Beltsville, MD, intends to negotiate on a sole source basis a contract with Computer Packages Inc. (CPI), 11 N Washington St Ste 300, Rockville, MD, 20850-4263, for patent annuity services. The Contractor shall provide docketing, tracking, payment and reporting services for non-domestic (foreign) applications/patents. The Contractor shall perform the following patent-related services and purchases as may be required to maintain patents in effect: The Contractor shall maintain a current case docket to ensure that fees for annuities and taxes are paid on a timely basis. The Contractor shall enter information in its docketing system from Government furnished and publicly available records to affect the payment of annuities, taxes, and maintenance fees. The Contractor shall have an established computerized docketing, tracking, and payment database system with the capabilities to calculate and administer different country by country patent regulations regarding payment of annuities, taxes, and maintenance fees. Safeguards in place to reduce or eliminate errors are a requirement, without the need of restorations. The Contractor shall provide the use of patent office electronic data to verify data. The Contractor shall provide a real time paperless (online) annuity management, including the capability to instruct the contractor online, via fax/phone and by email. Patent annuity services shall include electronic due diligence audit of patents and due diligence audits. Contractor shall provide online electronic management which allows the Government to monitor costs, and Contractor shall guarantee the exchange rate. Contractor shall have the capability to pay accumulated annuities upon grant. The Contractor shall provide the Government Technical Point of Contact (TPOC) with a Tax Maintenance Report identifying all cases with a payment due within the quarter. Reports will be submitted 5 months prior to the start of each calendar quarter. The report shall include the following: Filing, issue, or publication dates either supplied by the Government or available through public records, estimated payment cost of each case in U.S. dollars. The contractor shall provide the following documentation to the TPOC: Monthly annuity confirmation of payments made. Receipts from each patent office as the contractor receive them. The contractor agrees that all information disclosed by the Government to the Contractor in connection with this requirement shall be confidential and that all such information and data on the media in which it is stored shall be the exclusive property of the Government. The Contractor shall not disclosure, either during the term of the Purchase Order or thereafter, any information provided by the Government without the prior written consent of the Contracting Officer. The Contractor shall take all precautions necessary to prevent disclosure of such information. In performance of the Purchase Order, the Contractor shall comply with applicable laws and legal authorities of the country in which the annuity payment or tax is being made. This acquisition is conducted under the authority of Federal Acquisition Regulation (FAR) 13.106-1(b)(1)(i) - Contracting officers may solicit from one source if the contracting officer determines that the circumstances of the contract action deem only one source reasonably available (e.g., urgency, exclusive licensing agreements, brand-name or industrial mobilization). CPI has great familiarity with individual country laws, and an already established docketing, tracking, and payment database system to calculate and pay all annuities for each foreign country. CPI has experience in calculating whether these annuities are payable by the filing date, issue date, or publication date, and has the database capable of making these calculations. CPI has the means to pay the annuity payment in the currency of the country in which the patent application has been filed. In addition to annuity payments, some countries require the payment of nominal working fees, or require that annuity payments, taxes and the nominal workings be made through a foreign agent. CPI has the knowledge of the individual requirements of each country, a network of foreign associates, and a database capable of accomplishing this requirement. CPI is the only known patent annuity service that can pay accumulated annuities upon grant. CPI has current possession of the data pertaining to foreign filing applications in USDA's docket, and it would not be possible for another contractor to accomplish these deadlines without possession of the data. To facilitate a data transfer of the 100+ active files in USDA's foreign filing docket would take several months to be successful. As USDA has many cases, a data transfer must be done in an orderly fashion and can take several months for the docketing and payment of fees, and if it is not done this way payments can be overlooked, foreign patent rights can be lost and the Government could be liable to licensees and/or co-owners for lost rights. CPI's services offer reduction in liability in the management of patent annuities. Data verification and safeguards are integral so as not to miss annuity payments and lose valuable patent rights. Electronic verification of data with the patent office eliminates errors and completes missing data. Electronic verification of data utilizing public sources is a requirement and CPI is the only vendor that provides this service. Unique CPI annuity and data assurance services include: 1. Electronic cleansing of a client's data. 2. Update of missing data in client's records with patent office data. 3. Communication to the client concerning problems discovered by CPI (i.e. incorrect number or date). 4. Elimination of paper and mail handing for annuity management with CPI's Real Time Patent Management System (RTS) and CPI online. No other source offers these features. A real time online management system is a requirement of the SOW, and CPI is the only vendor that has the capability to provide all required services for this requirement. CPI's real time patent management system and CPI online are unique and offers features to perform the requirements of the SOW. These features are not available in other systems. CPI performs patent audit services and due diligence audits as part of their annuity services which are a requirement of the SOW. These audits are unique to CPI and they are the only vendor who can complete these services. These features are included and are required to provide additional safeguards and security for the Government's patent portfolio and these features also provide the ability for the Government to have more control over its own portfolio. This level of safeguards and security is necessary to protect the Government's intellectual property rights. Many of the Government's patents are licensed to commercial partners, and USDA is contractually obligated to maintain these rights. Without these additional safeguards in place, it is likely that a mishap could happen, and the Government could lose valuable patent rights, and be liable to a licensee for not abiding by the terms of the agreement. The Government licenses patent rights to commercial partners for furthering technology transfer. The sole purpose of the Government in obtaining foreign patents is to help a U.S. business become established in the international market. If an annuity is not paid, valuable patent rights will be lost, harming the Government, its commercial partner(s), and its inventor(s). In addition, if a patent is already licensed, the license agreement will state that the Government is responsible for maintaining the licensed patents. If the patents are maintained, the Government could be liable for the loss. Anticipated Date of Award: 11/17/2018. THIS NOTICE OF INTENT IS NOT A REQUEST FOR PROPOSALS. This notice is for informational purposes only and is not to be construed as a commitment by the Government. Vendors that believe they can provide the services listed above are invited to submit substantiating documentation in writing to the identified point of contact. Information received will be considered solely for the purpose of determining whether to conduct a competitive procurement. Oral communications are not acceptable in response to this notice. A determination by the Government to compete this proposed contract based on responses to this notice is solely at the discretion of the Government.