Attachment 3-SOW_1161796_Services To Docket and Pay Annuities.pdf

STATEMENT OF WORK

BACKGROUND

The Office of Technology Transfer (OTT), USDA, ARS requires services to docket, track, and report quarterly on the status of foreign patents including the payment of annuities, taxes and maintenance fees to maintain existing patents in force. Currently, there are approximately 800 Patent Cooperation Treaty (PCT) applications/International Patents for which annuities, taxes, and maintenance fees may become due and payable.

United States Department of Agriculture (USDA), Agricultural Research Service (ARS) sponsors research on new and useful products and processes which have potential application in the private and public sectors, and may seek patent rights in various foreign countries covering products and processes derived from ARS research. ARS is the major research agency of the USDA and receives over 80 percent of the total patents. USDA has the authority, pursuant to 35 U.S.C. 207 and 15 U.S.C. 3710, to obtain and maintain patents in the United States and foreign countries. USDA can grant licenses in accordance with the regulations set forth in 37 C.F.R. Chapter IV, as amended, to receive fees, royalties, or other revenues there from, and to take all other suitable and necessary steps to protect and administer such rights.

ARS has a history of research collaborations with industry and academia. Pursuant to the Federal Technology Transfer Act of 1986, ARS has implemented a technology transfer program covering a variety of agricultural technologies that have high commercial potential for industry. Patent applications possessing licensable beneficial foreign rights are being filed and prosecuted in foreign countries.

To service public interest, the Government will ensure that the results of Federally-sponsored research be protected, marketed, and practiced so that maximum benefit is achieved in the form of enhanced US economic activity and competitiveness. The countries chosen for patent protection may include both member and non-member countries of the PCT.

ARS researchers currently report over 100 inventions annually. During Fiscal year 2004, 150 inventions were reported, 63 were filed for domestic patents and 59 patents were issued. During the same period, 24 PCT applications were filed. The Department has a total current patent portfolio of 2034, for which there are approximately 800 foreign filings corresponding to 99 different U.S. filings. The above information is for historical purposes only and comprises typical annual activity for ARS.

ARS currently contracts with the law firm of Nath Law Group for filing and prosecuting all international patents for which ARS is responsible.

GENERAL REQUIREMENTS

The Contractor shall docket, track, and report on the status of foreign patents including the payment of requisition annuities, maintenance fees and taxes. The contractor shall utilize country data to verify accuracy. The services to docket/track, and report annuities are services that will support the payment of annuities, maintenance fees and taxes under any resulting Purchase Order or Contract.

Attachment 3 - Request For Quote (RFQ) 1232SA26Q0092 - Services to Docket & Pay Annuities

Statement of Work (SOW)

SPECIFIC REQUIREMENTS

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 publically available records to effect the payment of annuities, taxes, and maintenance fees. The Contractor shall have a required already established computerized docketing, tracking, and payment database system with the capabilities to calculate and administer different country by country patent regulations in regards to 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 Contracting Officer’s Representative (COR), 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 COR:

(i) Monthly annuity confirmation of payments made.

(ii) 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 Contract 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 or Contract, the Contractor shall comply with applicable laws and legal authorities of the country in which the annuity payment or tax is being made.

DELIVERABLES

The contractor shall provide the following deliverables to the COR.

Attachment 3 - Request For Quote (RFQ)

(a) Tax Maintenance Report. The written report shall cover all cases with a payment due within the quarter. The report shall include the estimated payment cost of each case in US dollars, the filing, issue or publication dates, and shall be submitted to the COR 5 months prior to the start of each quarter.

(b) Monthly annuity confirmations; and receipts from each Patent Office as the Contractor receive them.

Place of Delivery

Virtually, supporting:

USDA ARS Office of Technology Transfer (OTT) 5601 Sunnyside Ave Beltsville, MD 20705

Contact: Technical Questions

Mark D. McNemar, Ph.D., J.D.

Patent Advisor, Life Sciences United States Department of Agriculture, Agricultural Research Service Office of Technology Transfer 301-504-1172 (phone) | 301-504-5060 (fax) | mark.mcnemar@usda.gov

Contact: Contract Concerns and Question

Tucker Davis, Contract Specialist, tucker.davis@usda.gov

Attachment 3 - Request For Quote (RFQ)