2. Patent Support_SOW_FINAL.docx

STATEMENT OF WORK

PATENT SUPPORT

1.0 INTRODUCTION

Naval Sea Systems Command (NAVSEA) is responsible for building and supporting the Navy's fleet of ships and combat systems. NAVSEA is the largest of the Navy's five systems commands. The NAVSEA enterprise comprises a headquarters and numerous field activities. The field activities include public shipyards and a Warfare Center Enterprise.

NAVSEA is the operating agent and the technical authority for all four public shipyards. The shipyards execute maintenance on submarines and aircraft carriers in order to provide combat-ready ships to the fleet. The shipyards are subject to optimization efforts, which is serving as a source of Navy innovation. The Navy's four shipyards include: Norfolk Naval Shipyard; Portsmouth Naval Shipyard; Puget Sound Naval Shipyard and Intermediate Maintenance Facility; and Pearl Harbor Naval Shipyard and Intermediate Maintenance Facility.

NAVSEA's Warfare Center Enterprise provides technical advice and solutions to a number of partners, including NAVSEA Program Executive Offices, the fleet, the Marine Corps, the Office of Naval Research, the Department of Defense, and the Defense Advanced Research Projects Agency. The technical advice and solutions provided by the Warfare Center Enterprise span the full spectrum and lifecycle of the Navy’s platforms and systems. NAVSEA's Warfare Center Enterprise comprises eight Naval Surface Warfare Centers (NSWC) and two Naval Undersea Warfare Centers (NUWC). The NSWC includes: Carderock Division, Corona Division, Crane Division, Dahlgren Division, Indian Head Division, Panama City Division, Philadelphia Division, and Port Hueneme Division. The NUWC includes: Keyport Division and Newport Division.

The NAVSEA enterprise serves as a vital source of innovation for the Navy. NAVSEA innovations may be subject to patent protection. NAVSEA procures patent protection in order to protect the interests of the Navy in procurement processes, encourage further innovation by NAVSEA staff, and/or facilitate commercialization and manufacturing by the maritime industrial base. This Statement of Work outlines how a Contractor providing patent services will work with a participating component of the NAVSEA enterprise.

2.0. REQUIREMENTS

The Contractor shall provide patent services, discussed in greater detail in the SOW sections that follow, using personnel with the necessary subject matter expertise, to perform the work. The Government will identify the specific patent services that fall within the scope of the services described in SOW Sections 2.1 through 2.3, via individual calls placed against the Blanket Purchase Agreement (BPA) over the period of five (5) years commencing on the effective date of the Master BPA agreement.

2.1. Related Art Search Report

The Contractor shall review the invention disclosure provided by the designated Warfare Center and discuss with Patent Counsel for the designated Warfare Center (“designated Patent Counsel”) any issues regarding the disclosure, including any statutory deadlines.

At the direction of the designated Patent Counsel, the Contractor shall perform a search and analysis of patents, patent application publications, and non-patent information that may be material to the technology described by the invention disclosure. The Contractor shall perform these tasks within a 10 to 14 business days, unless indicate otherwise by the Patent Counsel. The Contractor shall use precise and comprehensive methods in conducting the search – for example, key word and index searches. The search will encompass patents, patent application publications, and non-patent information from the United States and abroad (where applicable).

Based on the results of the search, the Contractor shall conduct the analysis, which shall make best efforts to identify any issues relevant to patentability, including 35 U.S.C. § 102 (novelty) and § 103 (obviousness). If needed based on the results of the search, the Contractor shall make best efforts to assess inventiveness and/or double patenting.

The Contractor shall provide the designated Patent Counsel a “Related Art Search Report” (Report) with the results of the above-described search and analysis. The Report shall include an analysis and a listing of identified patents, patent application publications, and non-patent information. As to the identified patents and patent applications publications, the listing shall be arranged to include: document number, publication date, and name of patentees or applicants. As to the non-patent information, the listing shall conform to patent practice before the U.S. Patent and Trademark Office (e.g., 37 C.F.R. 1.98(b)).

2.2. Patent Application

The designated Patent Counsel will decide whether to proceed with drafting a patent application. The designated Patent Counsel will communicate to the Contractor a decision to draft or not to draft a patent application.

If it is decided to draft a patent application, the Contractor shall prepare a first draft patent application, including drawings. The first draft application may include informal figures. The Contractor shall submit the first draft patent application to the designated Warfare Center, which includes inventor(s), for review and comments.

The Contractor shall subsequently prepare a revised draft. The revised draft shall incorporate any comments to the first draft patent application provided by the inventor(s) and/or the designated Patent Counsel. The revised draft shall include FORMAL figures. The Contractor shall submit the revised draft patent application to the designated Patent Counsel. The patent application shall be prepared in time to meet any identified statutory deadlines.

The Contractor shall make all efforts to contact the inventor(s) during preparation of the patent application, as needed. Should the Contractor experience or anticipate a delay in communicating with the inventor(s), then the Contractor shall notify the designated Patent Counsel in attempt to remedy the situation.

The contents of the patent application (first draft and revised draft) are: Statement of Government Interest, Field, Background, Summary, Brief Description of the Drawings, Detailed Description, Claims, Abstract, and Drawings. The patent application shall conform to patent practice before the U.S. Patent and Trademark, as articulated in Title 37 of the Code of Federal Regulations, the Manual of Patent Examining Procedure (MPEP), and best practices in the field.

2.3. Additional Instructions

a. The Statement of Government Interest, Field, Background, Summary, Brief Description of the Drawings, and Detailed Description shall include paragraphs that are individually and consecutively numbered using Arabic numerals, enclosed in square brackets, bolded, and appearing at the beginning of each paragraph. The numbering shall consist of at least four numerals and include leading zeros.

b. The designated Patent Counsel may provide additional drafting instructions to the Contractor in order to conform the patent application to NAVSEA practice and/or practice at a specific NAVSEA field office, if appropriate.

3.0 SPECIAL CONTRACTOR QUALIFICIATIONS

3.1 Registered to practice before the U.S. Patent and Trademark Office, with an active license and in good standing with the Office of Enrollment and Discipline.

3.2 Expert knowledge of patent practice before the U.S. Patent and Trademark Office.

3.3 High proficiency in drafting patent applications and associated documentation (e.g., drawings, diagrams, and sketches).

3.4 High proficiency in performing extensive research and analysis of patents, patent application publications, and non-patent information that may be material to the technology described in a given invention disclosure.

3.5 Technical background in a field relevant to invention disclosures. Technical background may be shown with evidence of a degree in electrical engineering, chemical engineering, mechanical engineering, marine engineering, aeronautical engineering, biotechnology engineering, for example.

4.0. POINT OF CONTACT AND DELIVERY LOCATION

The point of contact for the BPA identified below:

Contracting Officer’s Representative (COR) for the BPA: TBD

Patent Counsel will be identified in each individual BPA call.

Delivery location will be identified in each individual BPA call.

5.0 DELIVERABLES

The Government will identify deliverables in each individual BPA call.

6.0 SECURITY REQUIREMENTS: As required per the BPA and each individual BPA call.

7.0 TRAVEL: Travel will not required to support this effort. [All interactions with inventors or Patent Counsel will be by email, through an approved virtual platform, and/or by telephone.]