Preparation and Prosecution of US Provisional Utility (non-provisional) Patent Applications

This is a combined synopsis/solicitation for commercial services and is prepared in accordance with the format in FAR Subpart 12.6, as supplemented with additional information included in this notice. (i) This announcement constitutes the only solicitation; interested and qualified contractors should respond. A written solicitation will not be issued. (ii) This document will function as solicitation 12444823Q0001 and is being issued as a Request For Proposal (RFP) to result in a Blanket Purchase Agreement (BPA) award. (iii) This solicitation document with the incorporated provisions and documents are those in effect through Federal Acquisition Circular 2005-72. This is an unrestricted action. In carrying out its responsibilities to promote technology transfer under the Stevenson-Wydler Act of 1980, as amended by the Federal Technology Transfer Act (FTTA) of 1986 as amended, the U.S. Forest Service (FS), through its Knowledge Management and Communications (KMC) staff, often seeks patent protection for inventions developed in its laboratories during the course of scientific and technical activities carried on in support of the FS mission. The decision to file a U.S. Patent application, Provisional and/or Utility on an invention is made when FS determines that a patent for the invention will significantly enhance the technology transfer/commercialization potential of the invention thereby creating jobs, helping small and other businesses, improving the American economy, enhancing the visibility and vitality of USDA FS research programs and promoting open availability of FS technologies. The Government anticipates awarding multiple five year Blanket Purchase Agreements (BPAs) to meet our on-going and evolving needs. The North American Industry Classification System (NAICS) Code for this requirement is 541190 - All Other Legal Services, the small business size standard is $13.5M These BPAs shall be available to all Forest Service users. Future requirements for the services listed below will be competed between BPA holders. As requirements become known, BPA holders will be contacted for price and availability on the current, known requirement. BPA holders will respond with their pricing for the specific requirement. The Call(s) will be awarded to the Lowest Priced, Technically Acceptable Offeror. These will be firm fixed price contracts. Payment for the Calls issued against these BPAs may be made through Credit Card or through the Government's online Invoicing Processing Program (IPP). Specific direction will be given in the applicable Call. The award of a BPA will not constitute an order for work. Performance required against the BPA shall be issued as Calls against the Agreement. Offerors are required to be registered in the System for Awards Management (SAM) to receive an award. The Government is not obligated to issue a Call against the BPA if the Government believes that the Contractor may have a professional conflict of interest, and the Contractor may decline to accept any order based on a professional conflict of interest. Should any questions be raised as to whether or not a situation is considered a conflict, the Contracting Officer will make the final determination. The work to be delivered under the Call's Scope of Work (SOW) shall include the Contractor's necessary interaction with inventor(s) on invention disclosure, preparation, and prosecution of a patent application for the following technology categories: - General Sciences: Materials and Nanomaterials - General Sciences: Electronics - General Sciences: Fire - General Sciences: Biology, Cellular, Genomic, Metrology - Engineering: Chemical & Analytic Instrumentation & Industrial Processes, Microfluidics - Engineering: Combinatorial chemistry and material science - Engineering: Building and Construction - Engineering: Materials and Nanomaterials. FS intends to file least five to fifteen (5-15) patents (Provisional and Utility) per year cumulatively under this BPA suite. The contractor shall perform the necessary services to process U.S. Provisional and/or Utility (non-provisional) patent applications. These services include but are not limited to the services in the subparagraphs of this section of the contract. All U.S. Provisional and Utility (non-provisional) patent applications must be submitted to the Forest Service Technology Transfew Coordinator (FS TTC) no later than the date stipulated in each Call. Patent Prosecution Services: The Contractor shall perform all necessary and appropriate services in connection with working with FS TTC and inventor(s) on patent applications, the evaluation of invention disclosures with respect to the patentability (This means drafting claims around the prior art given to the law firm) and the preparation and prosecution of provisional/non-provisional patent applications before the US Patent and Trademark Office (USPTO). All domestic patent matters shall be handled in compliance with Title 35, United States Code (35 USC) and with Volume 37, Code of Federal Regulations (37 CFR) and any other applicable laws and legal authorities. All patent prosecution services will be a conducted on a task order basis with a Call that will be originated by the FS Contract Officer. The Call will describe the specific task and scope of work to be performed. Specific requirements for patent prosecution services or for particular tasks that will not be enumerated on any given Call are provided below: Preparation of a U.S. provisional and/or utility non-provisional) patent application with figures/drawings, which includes working with inventor(s) and FS TTC on patent applications and services for drafting patent application with transmittal papers ADS/IDS/POA/declaration to the FS TTC. The Contractor shall provide a final copy of the patent application in electronic format to the FS TTC. Submission of an Information Disclosure Statement to the FS TTC preferably at the time the patent application is submitted to the Government. Prosecution of patent applications (as requested by FS TTC) to include, for example, drafting for review responses to office actions and Restriction Requirements including but not limited to Election of Species . After receipt of any Office Action(s), the Contractor shall discuss with the FS TTC (a telephonic discussion) regarding the Office Action(s). After having been awarded a Call, the Contractor shall prepare (for FS TTC review prior to submission to the USPTO) a draft response to the Office Action. Response(s) to the Office Action(s), to include receipt, review, reporting to FS TTC, and preparation of response. The Contractor shall submit to the FS TTC an electronic copy (preferably via e-mail) of entire response includingclaims as added, amended, deleted and/or modified in Response(s) to Office Action(s). Conduct a USPTO Examiner Interview by telephone as necessary and upon request of the Government. FS TTC will be included in any Examiner Interviews. Submittal of invoice for services performed upon the completion of work in accordance with the terms and conditions in each Call issued. Deadlines The Contractor shall be responsible for timely submission to the FS TTC and must adequately determine and notify the FS TTC of relevant deadlines. The Contractor shall be cognizant of and endeavor to maximize patent term adjustments provided by the USPTO under the American Inventors Protection Act of 1999 and any subsequent laws and regulations that impact patents and patent protection. The Government will require Consideration in the event of a loss of intellectual property rights due to a lack of action or inappropriate action by the Contractor. Appropriate consideration may include the cost of all patent prosecution costs associated with patent application that are impacted by the loss of rights. Such loss is considered grounds for termination of the contract by the Government. BPAs will be awarded to interested offerors who can successfully meet the technical requirements of this notice. TECHNICAL REQUIREMENTS to QUALIFY for BPA award: 1) Offeror must provide evidence of recent and relevent experience with similar efforts. 2) Offeror must provide an active United States Patent and Tradement Office Registration Number. 3) Offeror must provide examples of successful experience working with USDA, or equivalent agency. NOTE: For the sake of administrative ease, the Government may use internal knowledge of a contractor's past performance or technical skill in evaluating a contractor's Technical Requirements and entry to the BPA suite. If this internal knowledge negatively affects the technical evaluation, the offeror will be notified in writing and will be invited to respond before being excluded from the award. All proposals shall be sent via email to susan.a.davis@usa.gov prior to the posted cutoff date of this notice. Offerors shall comply with applicable federal, regional, state and local regulatory standards, Offerors should provide; 1) Provide the name(s) of the representative(s) from your company 2) The applicable Sam UEI number for the offeror 3) Documentation for technical evaluation (to ensure Technical Requirements are met) Any questions regarding this acquisition should be addressed to susan.a.davis@usda.gov