36C24E23R0009.docx

36C24E23R0009

PAGE 1 OF

1. REQUISITION NO.

2. CONTRACT NO.

3. AWARD/EFFECTIVE DATE

4. ORDER NO.

5. SOLICITATION NUMBER

6. SOLICITATION ISSUE DATE

a. NAME

b. TELEPHONE

NO.

(No Collect Calls)

8. OFFER DUE DATE/LOCAL

TIME

9. ISSUED BY

CODE

10. THIS ACQUISITION IS

UNRESTRICTED OR

SET ASIDE:

% FOR:

SMALL BUSINESS

HUBZONE SMALL

BUSINESS

SERVICE-DISABLED

VETERAN-OWNED

SMALL BUSINESS

WOMEN-OWNED SMALL BUSINESS

(WOSB) ELIGIBLE UNDER THE WOMEN-OWNED

SMALL BUSINESS PROGRAM

EDWOSB

8(A)

NAICS:

SIZE STANDARD:

11. DELIVERY FOR FOB DESTINA-

TION UNLESS BLOCK IS

MARKED

SEE SCHEDULE

12. DISCOUNT TERMS

a.

THIS CONTRACT IS A

RATED ORDER UNDER

DPAS (15 CFR 700)

13b. RATING

14. METHOD OF SOLICITATION

RFQ

IFB

RFP

15. DELIVER TO

CODE

16. ADMINISTERED BY

CODE

17a. CONTRACTOR/OFFEROR

CODE

FACILITY CODE

18a. PAYMENT WILL BE MADE BY

CODE

TELEPHONE NO.

UEI:

EFT:

PHONE:

FAX:

17b. CHECK IF REMITTANCE IS DIFFERENT AND PUT SUCH ADDRESS IN OFFER 18b. SUBMIT INVOICES TO ADDRESS SHOWN IN BLOCK 18a UNLESS BLOCK BELOW IS CHECKED

SEE ADDENDUM

19.

20.

21.

22.

23.

24.

ITEM NO.

SCHEDULE OF SUPPLIES/SERVICES

QUANTITY

UNIT

UNIT PRICE

AMOUNT

(Use Reverse and/or Attach Additional Sheets as Necessary)

25. ACCOUNTING AND APPROPRIATION DATA

26. TOTAL AWARD AMOUNT (For Govt. Use Only) 27a. SOLICITATION INCORPORATES BY REFERENCE FAR 52.212-1, 52.212-4. FAR 52.212-3 AND 52.212-5 ARE ATTACHED

ADDENDA

ARE

ARE NOT ATTACHED.

27b. CONTRACT/PURCHASE ORDER INCORPORATES BY REFERENCE FAR 52.212-4. FAR 52.212-5 IS ATTACHED

ADDENDA

ARE

ARE NOT ATTACHED

28. CONTRACTOR IS REQUIRED TO SIGN THIS DOCUMENT AND RETURN _______________

29. AWARD OF CONTRACT:

REF.

___________________________________ OFFER

COPIES TO ISSUING OFFICE

CONTRACTOR AGREES TO FURNISH AND

DATED ________________________________

YOUR OFFER ON SOLICITATION

DELIVER ALL ITEMS SET FORTH OR OTHERWISE IDENTIFIED ABOVE AND ON ANY

(BLOCK 5), INCLUDING ANY ADDITIONS OR CHANGES WHICH ARE

ADDITIONAL SHEETS SUBJECT TO THE TERMS AND CONDITIONS SPECIFIED

SET FORTH HEREIN IS ACCEPTED AS TO ITEMS:

30a. SIGNATURE OF OFFEROR/CONTRACTOR 31a. UNITED STATES OF AMERICA (SIGNATURE OF CONTRACTING OFFICER) 30b. NAME AND TITLE OF SIGNER (TYPE OR PRINT) 30c. DATE SIGNED 31b. NAME OF CONTRACTING OFFICER (TYPE OR PRINT) 31c. DATE SIGNED

AUTHORIZED FOR LOCAL REPRODUCTION

(REV. NOV 2021)

PREVIOUS EDITION IS NOT USABLE

Prescribed by GSA - FAR (48 CFR) 53.212

7. FOR SOLICITATION

INFORMATION CALL:

STANDARD FORM 1449

SOLICITATION/CONTRACT/ORDER FOR COMMERCIAL PRODUCTS AND COMMERCIAL SERVICES

OFFEROR TO COMPLETE BLOCKS 12, 17, 23, 24, & 30

240E 36C24E23R0009 04-0 -2023 Ann Marie Stewart 401-919-0878 05-0 -2023 15:00

EDT

00240E Veterans Health Administration Regional Procurement Office East Building 32 Suite 1A1111 1010 Delafield Road Pittsburgh PA 15215-1802 X 541110 $13.5 Million N/A X US Department of Veterans Affairs Office of Research & Development Technology Transfer Program (TTP) 810 Vermont Ave, N.W.

Washington DC 20420 00240E Veterans Health Administration Regional Procurement Office East Building 32 Suite 1A1111 1010 Delafield Road Pittsburgh PA 15215-1802

00240E US Department of Veterans Affairs Financial Services Center (FSC) http://www.fsc.va.gov/einvoice.asp P.O. Box 149971 Austin TX 78714-8971 See CONTINUATION Page This solicitation is to contract for services of qualified patent attorneys and agents to perform domestic and foreign patent prosecution and legal services for the Department of Veterans Affairs, Office of Research & Development Technology Transfer Program in accordance with the Statement of Work, Sec. B.2, pp. 5-29 of this solicitation.

The wage determination applies to this requirement and will based on the offeror’s location at time of award.

The contract resulting from this solicitation will be an Indefinite-Delivery Requirements type of contract.

Funding will be obligated on individual task orders.

Please see Instructions to Offerors in Section E.1 and the Evaluation criteria in sec. E.

Please respond NLT 05/08/2023, 3PM EDT by email only, to annmarie.stewart@va.gov.

See CONTINUATION Page X X X Ann Marie Stewart

VA-VHA-2021-9A527CD0

Table of Contents

SECTION B - CONTINUATION OF SF 1449 BLOCKS

B.1 CONTRACT ADMINISTRATION DATA

1. Contract Administration: All contract administration matters will be handled by the following individuals:

a. CONTRACTOR:

b. GOVERNMENT: Contracting Officer 36C24E Ann Marie Stewart Veterans Health Administration Regional Procurement Office East Building 32 Suite 1A1111 1010 Delafield Road Pittsburgh PA 15215-1802

2. CONTRACTOR REMITTANCE ADDRESS: All payments by the Government to the contractor will be made in accordance with:

3. INVOICES: Invoices shall be submitted in arrears:

4. GOVERNMENT INVOICE ADDRESS: All Invoices from the contractor shall be submitted electronically in accordance with VAAR Clause 852.232-72 Electronic Submission of Payment Requests.

Financial Services Center (FSC) http://www.fsc.va.gov/einvoice.asp

ACKNOWLEDGMENT OF AMENDMENTS: The offeror acknowledges receipt of amendments to the Solicitation numbered and dated as follows:

Page 1 of Page 1 of

B.2 STATEMENT OF WORK

1. INTRODUCTION AND OVERVIEW

Providing high quality healthcare to our nation's veterans is a crucial component of the Department of Veterans Affairs (VA) mission. The VA also conducts an array of research on some of the most difficult challenges facing medical science today. The VA Office of Research and Development (ORD) oversees thousands of research projects in such research areas as aging, women’s health, post-traumatic stress disorder, cancer, genomics, ischemic heart disease, diabetes, mental health, spinal cord injury, substance abuse disorders, obesity, and hypertension. More than 15,000 research projects are currently conducted at 115 VA medical centers in the areas of biomedical, clinical, rehabilitation and health services research. VA research has improved medical care for veterans and the nation, and VA contributions to medical knowledge have won VA scientists many prestigious awards, including the Nobel Prize.

ORD is the research arm of the Veterans Health Administration (VHA). The major emphasis of ORD is to advance VA medical research and development programs that address veterans’ needs, with an emphasis on service-connected injuries and illnesses and contribute to the nation’s knowledge of disease and disability. A secondary benefit of these research endeavors is the transfer to the healthcare delivery system of new and beneficial technologies resulting from research conducted throughout the VA medical centers. Through its Technology Transfer Program (TTP), ORD facilitates the translation of VA discoveries into practice.

1.1 BACKGROUND

Annually, VA researchers discover many inventions of potential benefit to veterans and the public. TTP received, more than 3000 employee invention disclosures within the past 5 years. VA wishes to facilitate the development of these technologies to the point that they may be a benefit to veterans and the general public. VA TTP manages external patent application prosecution efforts and negotiates licenses to the subject matter claimed in the applications.

1.2 OBJECTIVES

The objective of this solicitation is to contract for the services of qualified patent attorneys and agents to perform domestic and foreign patent prosecution and provide legal services useful for the management of VA patent portfolios. Patent attorneys and agents hired under this contract by VA will assist the Office of Research and Development’s Technology Transfer Program in obtaining patent rights for VA inventions and provide patent legal counseling services.

1.3 SCOPE OF WORK

As more fully discussed in Section 3 and 4, the scope of work under this sought by VA comprises the provision by Contractor of comprehensive patent legal counseling and patent prosecution services including the paralegal capacity to handle legal records and documents generated from hundreds of active patent families, . VA requires that the contract awardee have the legal capability, training, and resources necessary to prosecute domestic, international, foreign regional and foreign national patent applications. The work under this contract will require patent preparation and patent prosecution in specific scientific and technical areas of interest to VA. Therefore, Contractors must have scientific education or training in the scientific areas in which the Contractor will be performing legal services for VA.

1.4 PERIOD OF PERFORMANCE

This contract shall consist of one five-year base period and will include one five-year option period.

The period of performance:

Base Period: 07/24/2023 – 07/23/2028 Option Year 1: 07/24/2028 – 07/23/2033

Performance under this contract shall not be commenced at any government site on Federal Holidays. The Federal Government will not operate on the following holidays:

New Year’s Day

Birthday of Martin Luther King, Jr.

Washington’s Birthday

Memorial Day

Independence Day

Juneteenth

Labor Day

Columbus Day

Veterans Day

Thanksgiving Day

Christmas Day

2. CONTRACTOR REQUIREMENTS AND TASKS

Potential contracting firms responding to this Solicitation must demonstrate a thorough understanding and have significant experience in the practice of U.S. patent law. All firm attorneys or agents assigned to handle matters under this contract must be in good standing to practice before the United States Patent and Trademark Office (USPTO) and, if a firm practitioner is an attorney, be an active member in good standing with his or her respective state bar licensing organization. Contracting firms will be responsible for identifying competent attorneys in foreign jurisdictions for foreign national and foreign regional patent filings. Contractors shall be responsible for directing foreign associates subject to VA guidance and approval. The Contractor shall file, or ensure foreign associates file, patent applications which include all parts necessary to meet statutory requirements for obtaining a priority date as of the date of filing, or an earlier date, if earlier filed applications are claimed as priority documents. The following list of tasks is provided as a minimum, non-exhaustive, description of the kinds of US, international and foreign patent prosecution tasks that will be required of Contractors. The Contractor in submitting its offer for this requirement shall ensure that its proposed pricing is fully burdened and inclusive of all required tasks as outlined below, unless the Government has requested that a specific task be individually priced in the price/cost schedule of this solicitation.

Selection as a VA contracted law firm under this Solicitation will entail the transfer of all or a substantial fraction of VA’s currently existing legal docket of matters to the contracting firm.

The Contractor shall, as directed by TTP Contracting Officer, perform all necessary and appropriate services in connection with the filing and prosecution of U.S. national, international (PCT), foreign regional (e.g., European Patent Office) and foreign national patents. Domestic patent matters shall be handled in compliance with Title 35, US Code, and with Volume 37, Code of Federal Regulation and other applicable laws, regulations, and current case law. The preparation and filing of provisional, utility, plant, or design patent applications shall be based on invention disclosures in light of known prior art and any contemplated prosecution strategy. All foreign patent matters shall be handled by the Contractor or foreign associates under the direction of the Contractor, in accordance with the applicable statues, regulations, and case law of the particular foreign jurisdiction. The payment of all domestic, international, and foreign patent office fees will be billed as a pass-through cost with no additional markup. All required responses to U.S. and foreign patent office actions should be filed within foreign filing deadlines or shortened U.S. statutory periods such that extension of time or patent revival fees are avoided unless specifically authorized by TTP. For all applications claiming a priority date to an application filed prior to March 16, 2013, the law firm will provide notice to TTP when it believes new matter is being added to the claims of a new or existing application in a patent family.

All Tasks in this Section are keyed to Deliverables in Section 4. Section 4 provides a default schedule of Deliverables and associated times of performance for each Task in Section 4. The Deliverables and time of performance may be varied by VA from the schedule in Section 4 in a specific task order. VA reserves the right to specify staffing requirements and limit the amount of time for partner/senior attorney review in a specific task order.

· Search patent and/or non-patent literature databases, including ,where requested chemical structure databases, for disclosures relevant to subject matter identified by TTP.

· Provide freedom to operate searches of issued and pending patent claims. When requested, provide written summary and analysis of the search results.

· Provide prior art searches of patent and/or non-patent literature databases, including, where requested chemical structure databases to assist in patent application filing and prosecution decisions.

· Provide infringement/non-infringement and patent validity opinions.

2.1.2 File U.S. Design Patent Application and Corresponding International Design Registrations.

· When and as directed by TTP, draft design patent applications by reviewing invention disclosure materials, discuss with TTP Technology Transfer Specialist responsible for VA ID number, and speak with VA investigators as appropriate.

· File the U.S. design patent application with the USPTO prior to any known public disclosure dates;

· When specifically instructed by TTP, the Contractor shall direct foreign associate(s) to file corresponding international design registration applications per the requirements of the Hague Convention or the law of the foreign jurisdiction, as appropriate.

· Contractor will provide copies of all foreign associate and foreign Patent Office correspondence and reminders of prosecution deadlines per the schedule specified in Section 3.

2.1.3 File U.S. Provisional Application.

· When and as directed by TTP, prepare draft provisional patent applications including a specification, draft claim(s), and applicable drawings, based upon invention disclosure, manuscripts, drawing(s), discussions with TTP Technology Transfer Specialist responsible for VA ID number and conduct inventor interview(s) as necessary.

· File U.S. provisional applications with the USPTO by TTP’s requested deadline and/or prior to any known public disclosure dates.

2.1.3.1 Provide Notice of U.S. Provisional Application Conversion and Other Filing Deadlines to the TTP.

· Contractor will notify TTP of U.S. provisional application expiration and conversion deadline per the schedule specified in Section 3.

2.1.4 File U.S. Non-Provisional Utility Patent Application.

· When and as directed by TTP, prepare draft non-provisional patent applications, for TTP review, prior to filing applications.

· Review pending provisional application(s), invention disclosure materials, known and disclosed prior art, and manuscripts. Consult with TTP Technology Transfer Specialist responsible for application and, if approved by TTP in advance, interview VA inventors when preparing non-provisional application.

· File the U.S. non-provisional application with the USPTO, as directed by TTP, so the application is filed prior to:

· the one (1) year anniversary of a provisional application to which the non-provisional application will claim priority;

· any known investigator or third-party public disclosures dates; and/or

· the one (1) year anniversary of any known public disclosures.

· Request expedited prosecution (such as Prioritized Examination, Accelerated Examination) as directed by TTP.

2.1.5 File International Applications under the Patent Cooperation Treaty (PCT).

· When and as directed by TTP, draft international applications in compliance with the Patent Cooperation Treaty.

· Utilize the invention disclosure materials, known and disclosed prior art, filed parent patent applications, such as provisional applications or non-provisional application, design registrations and applications, and information provided by inventors.

· File PCT applications in a PCT designated receiving office. Unless otherwise directed by TTP, filings shall be during the pendency of any earlier filed application to which the PCT application may claim priority under foreign, domestic, or international law.

2.1.5.1 Provide TTP Notice of PCT Request, Response, and National Stage Conversion Filing Deadlines.

Contractor will notify TTP of PCT Requests, Written Opinion Response, and national stage conversion filing deadlines per the schedule specified in Section 3.

2.1.6 File U.S. National Stage Application under PCT.

· When and as directed by TTP, prepare for TTP review a U.S. national stage patent application based on a prior filed PCT application.

· File, as directed by TTP, the U.S. national stage application within U.S. and international filing deadline requirements in order to maintain the earliest claimed priority date for the subject matter disclosed in the parent application(s).

· File supplemental information necessary to perfect the national stage filing.

2.1.7 Provide Notice to TTP of Paris Convention Application Filing Deadlines.

· Contractor will notify TTP of Paris Convention application filing deadlines per the schedule specified in Section 3

2.1.7.1 File Patent Application under Paris Convention.

· When and as directed by TTP, prepare for TTP review English-language patent applications including proposed claim sets, meeting the legal requirements of the Paris Convention.

· Utilize invention disclosure materials, known and disclosed prior art, prior filed parent applications and information provided by investigators to prepare the Paris Convention application.

· As requested by TTP, provide translation cost estimates for each country in which the Paris Convention application may be filed. As requested by TTP, secure translation services to have the Paris Convention applications translated in the countries designated by TTP.

· File as directed by TTP, the Paris Convention application in specified foreign or regional Patent Offices.

2.1.9 File Foreign Regional or Foreign National Stage Application based on PCT filing.

· When and as directed by TTP, prepare for TTP review English-language patent applications including the proposed claims meeting the legal requirements for each foreign regional or foreign national jurisdiction.

· Utilize invention disclosure materials, known and disclosed prior art, prior filed parent applications and information provided by inventors to prepare the foreign regional or foreign national stage application(s).

· As requested by TTP, provide translation cost estimates for each country or region in which the foreign regional or foreign national patent application may be filed. Have translated the patent applications into languages requested by TTP.

· File foreign regional or national application(s) so as to maintain the benefit of the earliest claimed priority dates in parent application(s).

2.1.10 Instructions to Foreign Associate to file and prosecute National and/or Regional Applications.

· When specifically instructed by TTP, the Contractor shall direct foreign associate(s) to file foreign regional or foreign national applications.

· Contractor will provide copies of all foreign associate and foreign Patent Office correspondence and reminders of prosecution deadlines per the schedule specified in Section 3.

· When and as specifically instructed by TTP, the Contractor shall provide instructions to foreign associate(s) on national or regional patent prosecution matters being handled by the foreign associate.

2.1 TASK 2 – Formal Patent Documents and Application Parts

2.2.1 Prepare and File Power of Attorney/Revocation of Power of Attorney Forms.

· Contractor will use USPTO Power of Attorney forms.

· For foreign prosecution, Contractor will ensure that foreign associates provide and file jurisdictionally valid Powers of Attorney.

· Contractor will correspond with appropriate parties and TTP and acquire all necessary authorizing signatures on Power of Attorney documents. All Power of Attorney documents shall include the VA ID number, the Contractor’s docket number, and the patent application serial number, if available.

· For foreign prosecution, Contractor will ensure that foreign associates adhere to VA’s requirements and provide and file jurisdictionally valid Powers of Attorney.

· Contractor will provide VA with a packet of instructions on where to send executed Power of Attorney forms for apostile, any written requests that must be provided to the entity performing the apostile, a check to cover the fee, a pre-printed shipping form and any necessary supporting documents.

2.2.2 Evaluate Inventorship, Ownership and Prepare Inventor Declaration or Supplemental Statement.

· Contractor will investigate and determine inventorship based on proposed patent claims and TTP input and, as directed by TTP, inventor interviews or statements.

· Prepare the inventor declarations or, as necessary, a supplemental statement, and have appropriate parties sign all documents. Contractor will provide and complete all inventor declarations or supplemental statements include the VA ID number, the Contractor's docket number, the patent application serial number, reel, and frame number from the USTPO, and any necessary prosecution reference details.

2.2.3 File Inventor Declaration, Correct Inventorship during Prosecution, or File Supplemental Statement.

· Where all inventors are named on the USPTO Application Data Sheet (ADS), Contractor may file inventor declarations prior to a Notice of Allowance or in response to a Notice of Allowability.

· Where inventors are not named in the USPTO ADS, Contractor will file executed inventor declaration or corrected ADS forms with the USPTO as early in prosecution of the application as possible, within statutorily required periods and prior to publication of the application.

· Where inventorship changes during the course of prosecution, Contractor will obtain necessary signatures and file all required documentation in order to reflect the change of inventorship. Inventorship should be confirmed, and corrections should be completed prior to payment of the Issue Fee.

· When necessary and directed by TTP, Contractor will file corrected or revised ADS.

2.2.6 Prepare and File Amino Acid and/or Nucleic Acid Sequence Listings.

· Where necessitated by the subject matter of an application, Contractor will prepare and file amino acid and/or nucleic acid sequence listings compliant with USPTO or foreign Patent Office requirements.

2.2.7 Prepare and File Drawings.

· Where necessitated by the subject matter of an application, Contractor will prepare and file accurate drawings compliant with USPTO or foreign Patent Office requirements.

· Contractor will review application Filing Receipts for accuracy and file for corrections as necessary and as directed by TTP.

2.2.9 File Request for Corrected Filing Receipt.

· When necessary and directed by TTP, Contractor will file a Request for Corrected Filing Receipt.

2.2.10 Prepare and Record Domestic and Foreign Assignments.

· Contractor will prepare legally valid domestic assignment documents and obtain assignment document signatures of all requisite parties. Assignment document(s) requiring VA signatories should be directed to the Technology Transfer Specialist responsible for the application and must include the VA ID number, Contractor docket number, patent application serial number and inventor name(s).

· Contractor will file for recordation executed assignment document(s) with the USPTO, preferably at the time of patent application filing, but in any event within 60 days of receipt of the executed assignment document(s). All assignments will comply with VA requirements.

· Correspond and consult with foreign associates regarding foreign assignment requirements. Ensure jurisdictionally valid and correct foreign assignment documents are filed within required national periods. Assignment document(s) requiring VA signatories should be directed to the Technology Transfer Specialist responsible for the application must include the VA ID number, Contractor docket number, patent application serial number and inventor name(s).

2.2.11 Record Corrected Assignments.

· When necessary and directed by TTP, Contractor will prepare and file corrected assignment document(s), for domestic and foreign applications. All corrected assignment document(s) will be subject to the same requirements set forth in Section 2.2.10 above.

2.2.12 Report Notice to File Missing Parts/Missing Requirements and Prepare and File Responses to Notice to File Missing Parts/Missing Requirements.

· Contractor will notify TTP of the receipt of a Notice to File Missing Parts per the schedule specified in Section 3.

· The Contractor shall file a Preliminary Amendment in an application, when necessary or instructed to do so by TTP, at the time a 35 USC 371 U.S. Patent application is filed or prior to issuance of the first Office Action.

2.3.3 Report Office Actions (Domestic and Foreign).

· Report to TTP all Office Actions no later than five (5) days after the Contractor receives it from the office of the patent examining authority per the schedule specified in Section 3 at 3.3.3.

· Send reminders to TTP of upcoming Office Action response due dates per the schedule specified in Section 3 at 3.3.3.

2.3.4 Prepare and File Office Action Response for Domestic and Foreign Prosecution.

· When specifically directed by TTP, review Office Action and prepare draft response.

· Review Office Action, the specification, prior art, and, with prior notification to TTP, speak with the VA investigators when preparing the response.

· Office Action responses must address all rejections or objections raised by the Patent Office in the Office Action and must be drafted in view of applicable statutes, regulations, and current case law.

· Timely file the response to the Office Action with the USPTO or foreign Patent Office; extensions of time may be taken only when authorized by TTP.

· The Contractor shall provide TTP with a copy of any Notices of Interference of Derivation Proceedings per the schedule set forth in Section 3.

2.3.18 File Continuation and Divisional Patent Applications.

· The Contractor will prepare and file continuation and divisional applications when and as directed by TTP; the Contractor will ensure that any divisional or continuation applications are filed prior to the payment of issue fee in the parent application unless expressly instructed to do otherwise by TTP.

· The Contractor will be presumptively responsible for any unavoidably or unintentionally abandoned patent applications and will solely bear the costs of revival.

· Prior to paying any issue fee, the Contractor shall:

· Review and confirm that inventorship is accurate;

· Confirm that priority is accurately claimed;

· To the best of Contractor’s ability, ensure that all relevant art has been cited in an IDS initialed by the examiner;

· Review examiner’s amendments (if any) and communicate amendments to TTP; and

· Prepare and file necessary corrections to the application.

· The Contractor will promptly communicate the notice of opposition proceedings to TTP according to the schedule set forth in Section 3.

· The Contractor will coordinate meetings with TTP and the foreign associate(s) in order to formulate a strategy for responding to the opposition.

· The Contractor will arrange and manage representation before foreign opposition boards.

· On IP related issues dealing with possible patent litigation. Patent litigation matters are handled by Department of Justice in coordination with VA’s Office of General Counsel.

· On U.S. patent prosecution strategy and portfolio management.

· On patent valuation and licensing strategy.

· On international and foreign patent prosecution strategy and portfolio management.

· Filing and registration of other VA-owned intellectual property.

ALL DELIVERABLE CORRESPONDENCE MUST BE DIRECTED TO BOTH THE MANAGING TECHNOLOGY TRANSFER SPECIALIST, TO THE VA PATENT EMAIL BOX: vatechtp@va.gov. AND ANY OTHER PARTY EMAIL BOX AS REQUESTED BY VA. “DAYS” FOR PURPOSE OF THIS SOLICITATION MEANS CALENDAR DAYS.

(B) Provide TTP filing receipt and copy of the application as filed

(A) 30 days prior to filing due date

(B) Within 2 weeks of filing

Update on the US Provisional Application deadlines

(A) Provide TTP with draft application and, if requested, written or oral explanation of claim drafting strategy

(B) Filing receipt and copy of the application (A)30 days prior to filing due date

(B) Within 2 weeks of filing

(B) Provide TTP filing receipt and copy of the application (A)30 days prior to filing due date

(B) Within 2 weeks of filing

(A) Provide for TTP review, English-language patent applications meeting the legal application requirements of the Paris Convention (B)Provide foreign language patent document translation estimates as requested by TTP.

(C) Have application translated into languages required by TTP

(D) File Paris Convention application

(A) Provide TTP with patent application (B)Written cost estimate

(C) Copy of each translation

(D) Provide TTP with filing receipt and copy of the patent application as filed

(A) Forty-five (45) days prior to any filing deadline

(B) Within 5 business days of request

(C) Translated copy due one week prior to filing deadline

(D) Within 2 weeks of filing

(A) Provide for TTP review, English-language patent applications meeting the legal application requirements for the regional or national stage application (B)Provide foreign language patent document translation estimates as requested by TTP.

(C) Have application translated into languages required by TTP

(D) File foreign regional or foreign national Stage application based on PCT filing.

(E) Pay foreign attorney or agent fees for providing services in the country or region of filing.

(A) Provide TTP with patent application (B)Written cost estimate

(C) Copy of each translation

(D) Provide TTP with filing receipt and copy of the patent application as filed

(E) Provide TTP an itemized list of services provided by agent or attorney

(A) Forty-five (45) days prior to any filing deadline

(B) Within 5 business days of request

(C) Translated copy due one week prior to filing deadline

(D) Within 2 weeks of filing

(E) Must be included in regular invoices to TTP

(A) Direct foreign associate to file regional or national application

(B) Provide instructions to Foreign Associate(s)

(C)Provide copies of all Foreign Associate and Foreign Patent Office correspondence.

(D) Provide reminder notices of prosecution filing deadlines

(A)Email confirmation foreign associate has filed application (B)Email confirmation foreign associate has or will act as directed

(C) Provide copy of correspondence

(D) Provide Notice to TTP

(A)Within 2 business days of task assignment by TTP to Contractor

(B) Within 2 business days of task assignment by TTP to Contractor

(C) Within 10 days of Contractor receipt of communication.

(D) At 3 months, 1 month and 2 weeks prior to the prosecution deadline

(A). Report receipt of Office Action

(B). Provide response due date reminder during shortened statutory response periods

(C). Provide response due date reminder during extension periods for response

(A) Email Notice to TTP and Tech Transfer Specialist with Action attached

(B) Email Notice to TTP and Tech Transfer Specialist with Action attached

(C) Email Notice to TTP and Tech Transfer Specialist with Action attached

(A)Within 5 calendar days of receipt of Action by Contractor of Action

(B) Provide reminders using following schedule until response filed or extension period entered: Reminders sent at 30 days, two weeks and 1 week prior to shortened statutory response date.

(C) Provide reminders using following schedule: Reminders sent at 30 days, two weeks and 1 week prior to each 30-day extension period response due date until response is filed or application intentionally abandoned by TTP.