22-0954 Legal News Subsc SOW 4March22 Rev. 1.pdf

United States Legal News Subscription Services Patent and Trademark Office Statement of Work

Form # USPTO-OP-020 (08/2020) Page 1 of 7

1. Requirement Title Legal News Subscription Services

2. Background

The United States Patent and Trademark Office (USPTO) is the federal agency for granting U.S. patents and registering trademarks. In doing this, the USPTO fulfills the mandate of Article I, Section 8, Clause 8, of the Constitution that the legislative branch shall "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The USPTO registers trademarks based on the commerce clause of the Constitution (Article I, Section 8, Clause 3).”

The USPTO carries out its mission to foster innovation, competitiveness and job growth in the United States by conducting high quality, timely patent and trademark examination and reviews proceedings in order to produce reliable and predictable intellectual property rights; guiding intellectual property policy and improving intellectual property rights protection; delivering intellectual property information and education worldwide; and encouraging a domestic and international climate in which intellectual property can flourish.

Research is required to support USPTO's mission to examine and grant valid patents and trademarks. The Code of Federal Regulations (37 C.F.R. 1. 104(a)) sets forth the requirement that upon taking up an application for examination, patent and trademark examiners “shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention,” and that “[a]n international-type search will be made in all national applications filed on and after June 1, 1978.”

The Scientific and Technical Information Center (STIC) is tasked to provide the USPTO patent examiners with resources to study and investigate available prior art and legal issues relevant to the subject matter of the patent application. A number of business units at USPTO review granted patents, adjudicate, and investigate legal questions of ownership, obviousness, and other legal matters related to intellectual property rules of practice.

3. Purpose

The United States Patent and Trademark Office (USPTO), Scientific and Technical Information Center (STIC) has a requirement for a subscription to Portfolio Media Inc.’s Legal services to provide the patent examiners and other USPTO business units with in-depth legal news and analysis in fulfillment of the STIC and USPTO missions as stated above.

4. Scope

4.1. Content

Contractor shall provide unlimited access to authorized USPTO users to view, search, retrieve, copy, print, e-mail, download, and store on media outside the platform, for legitimate business purposes, any and all information from the parts and sections specified below.

Form # USPTO-OP-020 (08/2020) Page 2 of 7

a. The subscription services shall provide the USPTO users with all the materials -latest and archival - in its “U.S. Sections” category, comprised, at minimum, of the following sections: Access to Justice, Aerospace & Defense, Appellate, Asset Management, Banking, Bankruptcy, Benefits, California, Cannabis, Capital Markets, Class Action, Commercial Contracts, Competition, Compliance, Construction, Consumer Protection, Corporate, Cybersecurity & Privacy, Delaware, Employment, Energy, Environmental, Fintech, Florida, Food & Beverage, Georgia, Government Contracts, Health, Hospitality, Illinois, Immigration, Insurance, Intellectual Property, International Arbitration, International Trade, Legal In-Depth, Legal Ethics, Legal Industry, Life Sciences, Massachusetts, Media & Entertainment, Mergers & Acquisitions, Native American, New Jersey, New York, Pennsylvania, Personal Injury & Medical Malpractice, Private Equity, Product Liability, Project Finance, Public Policy, Real Estate, Retail & E-Commerce, Securities, Sports & Betting, Tax, Technology, Telecommunications, Texas, Transportation, Trials, White Collar.

b. These sections shall contain, at minimum, the updated daily news and analysis;

regularly updated civil federal cases with activity since January 2011; regularly updated U.S. Patent Trial and Appeal Board (PTAB) cases and documents with activity since September 2012; and regularly updated U.S. Trademark Trial and Appeal Board (TTAB) cases and documents.

c. All authenticated users shall have the option to create an individual account in order to receive access to additional tools and services. USPTO users who choose to create personal accounts shall receive access to such additional services as unlimited daily newsletters, unlimited real-time and daily alerts, the Legal Briefcase (a research organization and sharing tool), and any other tools and conveniences available to the individually registered users at the time of this contract’s signing or that become available during this contract’s period of performance.

d. All USPTO authorized users shall be granted the same unlimited access to any sections added to the “U.S. Sections” category during this contract’s period of performance.

e. Any such additions, as well as any changes in the sections’ nomenclature shall be clearly announced to end users on the website’s front page and via e-mail to the USPTO Contracting Officer’s Representative (COR) and Point of Contact (POC).

4.2. User Authentication

USPTO users shall be authenticated by IP address. All authenticated users shall have an additional option to create an individual account in order to receive access to additional tools and services (see 4.1.c).

Form # USPTO-OP-020 (08/2020) Page 3 of 7

4.3. Search, Discovery, and Use

a. The website shall provide end-users with navigation and browsing tools, simple and advanced search options, saving and downloading of documents in multiple formats - including PDF - and printing tools.

b. The simple and advanced search systems shall yield consistent and predictable results. User guidance to search capabilities and symbols shall be clearly provided to end users.

4.4. Usage Reporting

a. In accordance with paragraph 4.4.b below, the Contractor shall provide monthly usage reports of the subscription services to the COR no later than (NLT) the fifth business day of the month.

b. If available, the USPTO’s strong preference is for COUNTER reports, either downloaded directly to the STIC’s Integrated Library System (ILS) via the SUSHI protocol, or downloaded by authorized USPTO users (COR and POC) from an administrative module, or delivered by contractor via email. If not downloaded via SUSHI, the usage reports shall be either in Excel or CSV format.

c. Non-COUNTER compliant usage statistics must be comprised of clearly defined metrics. At minimum, the following metrics should be included in the monthly reports: unique article views, page visits, and site visits.

d. The following data shall be available upon request: a list of the individually registered USPTO users and the newsletter sections each of those users subscribes to.

4.5 Communications

a. A project kick-off meeting between the USPTO STIC, Office of Procurement (OP) and Contractor’s representative will take place NLT five days after contract award via a mutually acceptable virtual communication platform or a phone conference.

b. The contractor shall keep the COR and POC informed of updates and changes to the platform in accordance with 4.6 below.

4.6. System Accessibility

a. The system shall be continuously accessible to end users, with the exception of scheduled outages, to accommodate necessary system maintenance and upgrades and unscheduled outages to restore the system.

Form # USPTO-OP-020 (08/2020) Page 4 of 7

b. End-users shall be informed of scheduled outages at least five business days in advance via an announcement on the front page of the website and to the USPTO COR and POC via e-mail.

Contractor shall minimize the scheduled outages during times marked as Do Not Deploy on the Quiet Time calendar, to be provided by USPTO. See 2022 Quiet Calendar at Appendix 1.

c. The USPTO COR and POC shall be notified via e-mail within one hour from the start of an unscheduled outage lasting more than one hour, and within one hour of the system’s resumption of normal function.

4.7. Technical Support

Live technical support shall be provided to end users during standard business hours (9:00 A.M. – 6:00 P.M. EST) in text-based and audio-based format.

5. Deliverables

SOW

Section Deliverable Due Date Delivery Method

4.1., 4.3.,4.6.

Content, search, and tools availability Upon contract award Legal platform

4.5. Kick-Off Meeting NLT five business days

after date of award Virtual/remote

4.5.

Meetings to communicate outages, etc.

As needed Virtual/remote

4.4. Usage Reporting NLT the fifth business

day of each month E-mail to the USPTO COR and POC

Form # USPTO-OP-020 (08/2020) Page 5 of 7

6. Period of Performance & Delivery

Base Period: 4/30/2022 - 4/29/2023 Option Period 1: 4/30/2023 - 4/29/2024 Option Period 2: 4/30/2024 – 4/29/2025 Option Period 3: 4/30/2025 – 4/29/2026 Option Period 4: 4/30/2026 – 4/29/2027

All deliverables under the contract are required are to be made to:

U.S. Patent and Trademark Office ATTN: Portia Jackson Scientific & Technical Information Center (STIC) Library Services Branch (LSB) -Technical Services 400 Dulany Street Remsen 1D58 Alexandria, VA 22314

7. Government Points of Contact

Contract Specialist:

Michelle D. Ellis (571)270-5019 Michelle.ellis@uspto.gov

Contracting Officer:

Kelly Gustafson

(571) 270-7463 Kelly.gustafson@uspto.gov

Contracting Officer’s Representative:

Portia Jackson

(571) 272-8681 Portia.jackson@uspto.gov mailto:Michelle.ellis@uspto.gov mailto:Portia.jackson@uspto.gov

Form # USPTO-OP-020 (08/2020) Page 6 of 7

8. Pricing Schedule

Period of Performance Cost Base Year: 4/30/2022 - 4/29/2023 $

OY 1: 4/30/2023 - 4/29/2024 $

OY2: 4/30/2024 - 4/29/2025 $

OY3: 4/30/2025 - 4/29/2026 $

OY4: 4/30/2026 - 4/29/2027 $

TOTAL: $

9. Additional Materials (Glossary)

COUNTER: An abbreviation for Counting Online Usage of Networked Electronic Resources (COUNTER).

An international initiative launched in March 2002 to serve librarians, publishers, and intermediaries by developing more consistent, reliable, and meaningful measures of online resource usage to facilitate the recording and exchange of e-usage statistics. COUNTER is a cooperative endeavor to develop international cross-platform standards for generating usage statistics for online resources.

SUSHI : An abbreviation for Standardized Usage Statistics Harvesting Initiative (SUSHI). An ANSI/NISO Standard that defines automated request and response model for harvesting e-resource usage data designed to work with COUNTER, the most frequently retrieved usage reports. It replaces the time-consuming user-mediated collection of usage data reports. The protocol is generalized and extensible, meaning it can be used to retrieve a variety of usage reports.

Form # USPTO-OP-020 (08/2020) Page 7 of 7

Appendix 1 Quiet Time Calendar per Paragraph 4.6b, Contractor shall minimize the scheduled outages during the USPTO’s Do Not Deploy dates (Quiet Time).