PTS Draft Statement of Work - Attachment 4.pdf

Patent Technical Services- (PTS) – Statement of Work 10/16/2025

Patent Technical Services- October 16, 2025

Table of Contents Table of Contents 1 Objective 2 Background 3 Scope 4 Task Areas

4.1 Task Area 1: Copying

4.2 Task Area 2: Document Receipt and Mailing (DRAM)

4.3 Task Area 3: Incoming Mail Processing (Open/Sort)

4.3.1 Incoming Mail Portable Document Format (PDF) Scanning

4.3.2 Incoming Mail & Fax Exception Processing

4.4 Task Area 4: Fee Collection/New Applications

4.5 Task Area 5: Fee Collection, Other Applications

4.6 Task Area 6: Initial Formality Review of New Applications: Utility, Plant, Design, Hague, Industrial Design, And Provisional Applications

4.7 Task Area 7: Formalities Review (Follow-on Documents)

4.8 Task Area 8: PCT National Stage-

4.9 Task Area 9: PCT International

4.10 Task Area 10: Project Management Staff

4.11 Task Areas 11: Transition

1 Objective

The objective of this procurement is to obtain mission essential services in support of Patent application processing at the United States Patent and Trademark Office (USPTO) located in Alexandria, Virginia. Requirements include receiving and processing United States (U.S.) and international applications and application-related papers; collecting fees and updating electronic financial records; monitoring electronic mailboxes to include managing, forwarding, and closing messages; annotating messages and documents; mailing examiner office actions and other documents; conducting a review of newly admitted applications and follow on document content for compliance and completeness, recording or reviewing bibliographic data and preparing and mailing notices to applicants; and copying technical references.

2 Background

The USPTO is currently using automated systems for completing the Patent application process, wherein the application content consists of image and text documents and the associated application data.

Patent applications that are processed using the USPTO patent application systems are considered electronic patent applications in this Statement of Work (SOW). Some parts of the electronic patent application systems include drawings and text files that may be stored in the Automated Information System (AIS). Non electronic paper applications and follow-on documents are processed separately. Any paper or physical artifacts will be managed by a separate Contract. If a residual paper application needs to be converted to an electronic patent application system, some of the content may be placed in the Supplemental Content Loader

(SCL).

Patent Center will allow for patent application documents to be submitted in both image and text-based documents. Paper submissions are converted to electronic patent application images, and the processing is the same as an electronically submitted application filed via Patent Center.

Applications and follow-on documents received in paper may also have an artifact file/folder that contains items that are not permitted to be scanned into the USPTO patent application systems or loaded into AIS. The Contractor is required to follow the current process to check with Government Representative regarding the AIS content submission. Due to continued development and improvements of the USPTO Information Technology (IT) systems, during the life of the Contract, specific systems, the application format, software, and procedures are subject to change.

3 Scope

Legislative changes or major technological deployments during the course of performance may substantially affect the number of total units delivered or the nature and fundamental work processes described in this SOW. Note: General information and guidance reflect steps and practices that occur within USPTO-owned and operated AIS. The USPTO will provide all required tools, systems, and software to support this requirement; the vendor shall provide their own office supplies to perform this requirement.

During the life of the contract, several of USPTO’s AIS systems may be upgraded to include workflow, assignment, and tracking capabilities. The Government may require the Contractor to identify a small group of users/testers to assist with the functionality of the new AIS systems in addition to legacy systems. The Government will issue instructions to clarify or modify these instructions for a variety of reasons to include, but not limited to, implementation of new laws or rules, changes in automated systems, and/or changes in applicant filings.

4 Task Areas

4.1 Task Area 1: Copying

The Contractor shall support the Patent Legal Research Center (PLRC) through processing Patent Cooperation Treaty (PCT) National and International applications including search reports and written opinions when the USPTO is the designated search authority. Currently all PCT actions are mailed but during the life of the contract, the Office may implement electronic delivery for PCT application documents.

4.2 Task Area 2: Document Receipt and Mailing (DRAM)

The Contractor is required to staff the on-site mailroom and process incoming and outgoing mail. The Contractor is not responsible for postage. A separate USPTO Contractor will provide mail which shall be further sorted by the PTS contractor and delivered to designated locations within two (2) work hours of receipt in the mailroom. Once each morning and once each afternoon, the Contractor shall perform pick-up and delivery within the Technology Centers (TCs) and other designated areas within the USPTO Campus, unless otherwise specified in the Task Order.

The Contractor shall electronically perform quality control (QC) activities (i.e., document quality and electronic mailing) associated with all office actions generated from the Official Correspondence system (OC System) to a statistically significant sample. Sample will be dictated by USPTO, or 10% of all office actions generated from the OC system through the use of Government Furnished Equipment (GFE) and/or computers. Patent examiners have production requirements which are measured at the end of each bi-week, quarter, mid-year, and end-of-year. The Contractor must maintain processing time requirements of high volumes during these expected periods. Correct and timely processing of office actions is a USPTO high priority in reducing Patent pendency.

The Contractor will receive special ad-hoc requests on occasion for mailing stuffers from various Program Offices within the USPTO. The mailing stuffer will be included in outgoing office actions or outgoing correspondence to USPTO customers. A Contractor courier, on a separate USPTO Contract, will pick up boxes of the specified mailing stuffers from the printing location and deliver them to the USPTO mailroom.

On occasion the Contractor will receive requests to process special mailings. Special mailing

Requirements will be provided in the form of Statement of Work (SOW) addendums and or Standard Operating Procedures (SOPs).

4.3 Task Area 3: Incoming Mail Processing (Open/Sort)

The contractor shall receive new patent applications to include United States, National, and International applications and follow-on documents. These documents can be received in the mail, the Customer Service Window located at the USPTO Alexandria Campus, or any other approved delivery method at the USPTO Alexandria campus. Follow-on documents may also be received by fax. The Contractor shall periodically perform basic maintenance on the Government fax machines to include loading paper, changing toner cartridges, clearing paper jams, and other basic services to keep the Government fax machines operational. Mail includes new applications and follow-on papers. Contractor shall provide a weekly report via email of incoming priority documents received.

4.3.1 Incoming Mail Portable Document Format (PDF) Scanning

The Contractor will receive mail that requires scanning to a Government Representative for review or guidance on the next processing steps. The Contractor is required to scan incoming mail into a PDF using GFE and prepare documents for the Government Representative to review.

4.3.2 Incoming Mail & Fax Exception Processing

The Contractor will receive documents via incoming mail or Central Fax, occasionally with missing, incomplete, or erroneous information. The Contractor will work with Government Representatives to complete document processing. Contractor may receive documents via electronic media which will require downloading prior to sending to the Government Representative for guidance.

4.4 Task Area 4: Fee Collection/New Applications

The contractor shall utilize GFE to access financial systems to record various fees received in the USPTO and associated with the initial receipt and processing of a U.S., International, and National applications, Fees are received either by money order, check, credit card or authorization to deduct fees from specified deposit accounts. Contractor shall enter the fee code, fee amount, application serial number, and/or other data as required. Contractor shall receive and process incoming mail with associated fees for the Pro Se Assistance Center Office. Contractor shall encrypt any Pro Se mail containing sensitive information when sending email to Government representatives. Contractor may receive instructions from Government representatives to process fees related to Pro Se mail.

4.5 Task Area 5: Fee Collection, Other Applications

The contractor shall determine the number of claims contained in each application and shall calculate application fees accordingly. For received U.S. applications filed under the PCT, the Contractor shall collect submitted fees in accordance with applicant instructions. The Contractor shall utilize GFE to post application fees to financial systems. As appropriate, the Contractor shall back out previously paid fees and/or process refunds to applicants or their practitioners.

4.6 Task Area 6: Initial Formality Review of New Applications: Utility, Plant, Design, Hague, Industrial Design, And Provisional Applications

The contractor shall review newly received U.S. Patent Applications for completeness and compliance with all filing requirements and readiness for examination. Contractor shall enter bibliographic and other data into the USPTO provided automated formalities review system to produce filing receipts and other notices. The Contractor shall review the application documents for correct signature, title, application number, proper formatting and proper language. The Contractor shall review and process responses to notices and various other correspondence in completing the formality review process. During the life of the contract, the application format, software, and procedures are subject to change.

The Contractor shall create the official notice and filing receipt and the system will set the mail date and load a copy of the notice into patent application systems. If the application is not part of the electronic notification process, the Contractor shall print the final notice, insert it in an envelope, and deliver it to the designated pick-up location for mailing by the USPTO Mail Center.

For each newly received application, the Contractor shall complete formalities review processing. A small number of applications are subject to expedited processing by the USPTO.

The Contractor shall give priority processing to such applications when they are identified by the Contractor or notified by the Government.

In the performance of this task, the Contractor shall handle the following patents application types for formality review, or combinations thereof:

i. Utility Patent Applications

ii. Plant Patent Applications

iii. Design Patent Applications

iv. Direct Hague Industrial Design Applications

v. In-Direct Hague Industrial Design Applications

vi. Provisional Patent Applications

4.7 Task Area 7: Formalities Review (Follow-on Documents)

The Contractor shall process follow-on documents directed to them. When a response to a formalities notice is received in the Office of Patent Application Processing (OPAP), the Contractor shall take the appropriate actions to complete formalities review of that application, including adjustments to fee entries to ensure fee payment data is complete and accurate.

i. Abandonments Processing- The Contractor shall review applications listed on the potential abandonment report or as notified by the Government and verify whether a proper response was received. The Contractor could potentially process refunds for certain filings as part of abandonment processing. Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

ii. Missing Parts- The Contractor shall provide bibliographic data maintenance and customer service support as required by the Government. The Contractor shall receive requests to update bibliographic and other information documents related to a patent application to include Supplemental Complex Repository for Examiners SCL content.

Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

iii. Change Of Address- During the examining process, applicants could request for change of address. The Contractor shall process this change of address in the Official Correspondence PreExam (OC Prex system). Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

iv. Corrected Filing Receipt Request- Changes to bibliographic data may only be provided on an Application Data Sheet (ADS) or the inventor’s oath in a non-provisional application, or on a cover sheet or ADS in a provisional application. Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

v. Revocation/Power of Attorney- The Contractor shall process requests to revoke and replace the power of attorney in an application. The Contractor shall send an acceptance notice to the person that filed the request and send a notice of the revocation to the practitioner(s) being revoked. Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

vi. Priority Document Exchange (PDX) Request- The Contractor shall monitor selected patent application system mailboxes and process the retrieved priority documents to determine if the correct priority document was retrieved or to enter access codes and record the retrieval requests. Access codes may be provided after the application is filed on either form SB/38 or on a marked-up ADS. Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

vii. SB69/ADS Permission to Access European Patent Office (EPO) Search Results-

SB/69 Authorization or Rescission of Authorization to Permit Access to Search Results by the European Patent Office (EPO). SB/69 is used to grant or rescind permission to access search results by the European Patent Office (EPO). Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

viii. Formality Review Other Mailing-

Contractor shall perform mailing transactions for pre-examination notices created by the Government and other USPTO Contractors through the USPTO system. The Government may prepare paper mailings to be performed by the Contractor. The Government will send a list of paper mailings with application numbers and documents to a designated network printer. Specific details of this Formalities Review Task will be provided upon issuance of the Task Order.

4.8 Task Area 8: PCT National Stage-

In the performance of this task, the Contractor shall provide support in any of the following areas, or combinations thereof:

i. PCT National Stage Bibliographic Data- The Contractor shall key and verify bibliographic data for PCT 371 National Stage applications that are filed electronically or in paper. Most of the PCT 371 National Stage applications are filed electronically (99%) and most applications have bibliographic data that is automatically loaded into the appropriate AIS.

ii. PCT National Stage Bibliographic Data Entry-Contractor shall key and verify prescribed bibliographic data for PCT National Stage applications, which are filed electronically. The Contractor shall make updates to information which may automatically load some or all of the bibliographic data into the PCT Bib Data Entry System. The Contactor shall enter data not automatically loaded and data for paper filed applications.

iii. PCT 371 Correct Filing Receipts (CFILE)-The applicant will submit requests for corrected filing receipts (CFILES) via paper or electronically. Upon receipt of the CFILE into the PCT CFILE application image file mailbox, the Contractor shall review the request and process according to the Government furnished standard operating procedures (SOPs).

iv. PCT 371 Power of Attorney (POA)- The applicant can submit a request for Power of

Attorney (POA). The Contractor shall receive a request for a POA and process according to the Government furnished SOPs.

v. PCT National Stage Mailing- Contractor shall receive a message in the PCT Mailing application image file mailbox. The Contractor shall review the electronic correspondence and soft scan and/or mail the notice and any attachments as directed by the Government. The Contractor shall print the official notice and filing receipt. If the application is not part of the electronic notification process, the Contractor shall print the final notice, insert it in an envelope and deliver it to the designated pick-up location for mailing by the USPTO Mail Center.

4.9 Task Area 9: PCT International

The Contractor shall provide support in any of the following areas, or combinations thereof:

i. PCT International Bibliographic Data Entry: Contractor shall key and verify prescribed bibliographic data for PCT International applications, which are filed electronically, which may automatically load some or all of the bibliographic data into the OC PREX PCT system. The Contactor shall enter data not automatically loaded and data for paper filed applications.

ii. PCT Printing And Mailing: Contractor shall retrieve copy and mailing work from the designated OC_PREX_PCT system queues. The Contractor shall follow the instructions on the designated form to print and mail copies to the applicant and international organizations. After Government review, the Contractor shall email PCT Priority Documents to the applicant using the OC PREX PCT system, if applicable.

iii. PLRC Official Correspondence Mailing: Contractor shall retrieve copy and mailing work from the designated OC PREX PCT system queues. Currently all notices are mailed to the applicant for PCT applications, but this may be done by electronic delivery in the future. The USPTO electronically transmits the record copy of international applications to the International Bureau.

iv. PLRC Paper Mailing: Contractor shall retrieve PLRC paper mailing work from the designated pick-up locations and utilize OC PREX PCT system queues for processing.

Currently all notices are mailed to the applicant for PCT applications, in some cases these mailings may be mailed on paper. The USPTO electronically transmits the record copy of international applications to the International Bureau.

v. Foreign Origin Search Copies (FOSC) Mailings: Applications are received electronically in the AIS, under the FOSC tab for data entry. The Contractor shall perform data entry functions into the USPTO Bib Data Entry System. Once data entry has performed the information will be exported to the OC PREX PCT System and forms will be printed that will require mailing functions.

4.10 Task Area 10: Project Management Staff

The contractor shall manage the patent application processing services. The contractor shall develop all necessary documentation describing the program management and support services provided, to include qualitative metrics, graphs, and reports as detailed in the deliverables and ad hoc requests tied to individual tasks managed within this Contract from the Government. The documentation shall clearly describe all business processes and on-going contract management responsibilities performed by the Contractor. Additionally, the project management staff will work closely with the Government operations managers to address operational issues and challenges and to implement new processes and procedures. The Contractor may be required to attend status meetings as requested by the USPTO on an as needed basis, but usually no more than biweekly basis. These meetings may be conducted via teleconference, videoconference, or in person as appropriate. The Contractor is expected to keep the Government informed of any anticipated deviation from the delivery schedule and report problems in a timely fashion.

4.11 Task Areas 11: Transition

The Contractor shall provide transition activities in any of the following areas:

The Contractor is responsible for successful transition-in of each individual Task Order. The Contractor must develop and implement the detailed transition strategies and processes needed to enable an efficient transfer of products and services from the incumbent service provider to the level of service required for each Task Order without disruption to ongoing contract support levels. The Contractor must develop and implement detailed transition strategies and processes needed to maintain continuity of operations and quality of service during the transition-in period.

The Contractor must implement and manage the activities necessary to transition services from the existing service provider with no breaks in current service levels and no delay in support for new and ongoing projects. The Contractor must provide the ability to recruit, assign, and manage the staff and resources in a quick and efficient manner to meet the transition requirements, schedule, and milestones. The Contractor must identify an implementation strategy and perform critical tasks needed to obtain employee security clearances in the most expeditious manner possible during the transition period. Transition-in is anticipated to take 90 calendar days.

The Contractor is responsible for the successful transition-out of each Task Order. The Contractor must develop a Transition-Out plan for each Task Order that describes a transition-out strategy, and identifies transition data and information, systems, components, documentation, functionality, services, service dependencies, service interfaces, risks, transition work activities, schedule, staffing down approach, knowledge transfer, and any other information that needs to be considered to ensure smooth transition. The Contractor must provide an inventory of all operational, engineering, procedural, educational, and any other documentation and presentations produced as part of delivering services upon the USPTO request. The Contractor must not destroy, delete, or otherwise dispose of any files or data upon expiration or termination of the order, without prior permission from the COR. The Contractor must permit the successor contractor (and the successor contractor’s employees) to observe and become familiar with any and all operations specified in the order for a time period specified in each Task Order, prior to the expiration or termination of the existing order. The Contractor must fully cooperate with the successor contractor and the Government during transition-out so as not to interfere with their work or duties. The Contractor must fully support all USPTO request for information and data required to ensure a seamless transition of services to a new Contractor. Transition-out is anticipated to take 90 calendar days, with a 60-calendar day period being designated for security and background checks.

Attachments

Attachment 1: Definitions Attachment 2: USPTO Building Names and Addresses Attachment 3: USPTO Building Locations Attachment 4: Performance Metrics Attachment 5: Deliverables Attachment 6: Legacy Workflows

Attachments