8. DRAFT SOW.pdf

STATEMENT OF WORK

PATENT APPLICATION SUPPORT FOR NSWC CORONA

1.0 SCOPE

The objective of this Statement of Work (SOW) sets forth requirements for Provisional and Non- Provisional patent application package drafting support to Naval Surface Warfare Center Corona Strategic Initiatives Office.

1.1 General Requirements

Work to be performed and required data deliverables will be described in greater detail via BPA Call. The Contractor shall furnish all labor, facilities, equipment to support this effort.

2.0 APPLICABLE DOCUMENTS

Federal Law / Regulations compliance is required for successful performance. This Statement of Work (SOW) shall require the contractor (as applicable) to provide best commercial standards and practices to meet the overall performance objectives.

2.1 SPECIFICATIONS/ Guidance

• US Patent and Trademark Office Manual for Patent Examination

• Provisions within US Code Title 35

• Provisions within US Code Title 37

• Code of Federal Regulations

• International Trafficking in Arms (ITAR) Regulation

• Arms Export Control Act

• Export Administration Act

• Export Administration Regulation (EAR)

• Commerce Control List (CCL).

• Supreme Court decision on KSR Int'l. Co., v. Teleflex, Inc.

• Automotive Technologies International v. BMW, et al. (Fed. Cir. 2007)

• NSWC Crane Office of Counsel Patent Attorney Best Practices for Successful United States Patent and Trademark Office (USPTO) Patent Application Filing and Invention Litigation Defense.

3.0 CONTRACT REQUIREMENTS

The Contractor shall furnish all material, equipment, facilities, and labor by qualified personnel except as specified herein to provide technology domain shifting analysis, including marketing analysis and full spectrum engineering analysis across all engineering areas at NSWC Corona or other commands supported by NSWC Corona’s patent program, as well as preparation of patent related deliverables for provided invention disclosures. Specifically, the contractor shall provide research and development for domain shifting of defense technology into commercial application and patent application preparation support for provisional and non-provisional patent applications, formal drawings, information disclosure statements, prior art searches, patentability analyses, and preparation of filing papers in support of inventions disclosures resulting from government engineering efforts under NSWC Corona’s Engineering and Technology Support Focus Areas. In No Way shall the Contractor provide for in a representational capacity on behalf of the Federal Government. This BPA is to provide Patent drafting suitable for submission to the USPTO. Any additional rework for modification to a preexisting BPA call will be submitted in writing and performed by the original awardee.

Final due dates will be identified via technical instructions in the BPA Call. Delivery of draft applications to inventor shall be submitted no later than 30 calendar days from date of technical instructions issuance and sufficient technical data related to each disclosure; final draft is due not later than 60 calendar days of the same date; (Delays by the Government of more than five business days in responding to a request for review of information shall not be counted against the 60 day delivery date).

3.1 PATENT APPLICATION SUPPORT FOR NAVY AND NSWC CORONA

ENGINEERING ACTIVITIES AND TECHNOLOGY

3.1.1 Defense to Commercial Technology Domain Shifting Analysis and Patent package Preparation for Inventions.

NSWC Corona Division’s mission driven innovation resulting from research and development within the technical capabilities of Corona Division. Provides full spectrum of patent preparation that covers all invention disclosures. NSWC Corona’s developmental and/or support efforts in life cycle management functions to provide safe, reliable and effective hardware for, Warfare Systems Performance Assessment, Quality and Mission Assurance Assessment, Metrology, Test, and Monitoring Systems Assessment, Naval Surface & Air Range Systems Engineering, Weapons Systems Interface Assessment, Naval Systems Material Readiness Assessment, Strategic Systems Testing and Analysis, and Surveillance Assessment.

Provides design, development, test and evaluation, logistics management, and sustainment of mechanical, electrical, and power systems to enhance or sustain the overall performance of the weapons system throughout its life cycle. Provides design and development, technology insertion, modeling and simulation, acquisition support, obsolescence management, test and evaluation of high reliability products, quality evaluation, failure analysis, logistics support, demilitarization /disposal and sustainment functions for strategic mission electronics and weapons systems.

3.2 Technology Domain Shifting Analysis / Patent Application Package Deliverables:

1. Patent Application Preparation:

The documents comprising a specified patent application type under 37 CFR §1.53.

a. Provisional Patent Application:

The documents comprising a provisional patent application under 37 CFR §1.53(c), including each of the following:

Provisional Patent Application Specification: A specification suitable for filing as a provisional patent application under 37 CFR §1.53(c)

Provisional Patent Application Drawings: Formal or Informal drawings (per technical instruction) for a provisional patent application to be filed under 37 CFR §1.53(c)

Provisional Patent Application Transmittal Papers: Formal transmittal documents to be filed with a provisional patent application under 37 CFR §1.53(c)

Inventor Assignment for a Provisional Patent Application: Formal inventor assignment documents to be executed and recorded in conjunction with a provisional patent application filed under 37 CFR §1.53(c).

b. Non-provisional Patent Application:

The documents comprising a non-provisional patent application under 37 CFR §1.53(b), including each of the following:

U.S. Non-provisional Patent Application: A specification including all parts and claim set suitable for filing as a non-provisional patent application under 37 CFR §1.53(b) selected from one of the options below as specified by the Requestor:

a. New U.S. Non-Provisional Patent Application:

A new specification including all parts and claim set suitable for filing as a non-provisional patent application under 35 USC §112 and if applicable 35 USC §119.

b. U.S. Continuation Non-Provisional Application:

A specification including all parts and claim set suitable for filing as a continuation non-provisional patent application under 35 USC §120.

c. U.S. Divisional Non-Provisional Application:

A specification including all parts and claim set suitable for filing as a divisional non-provisional patent application under 35 USC §121.

d. U.S. National Stage Conversion Application:

A specification including all parts and claim set suitable for filing as a U.S. national stage conversion non-provisional patent application under 35 USC §365(c) or §386(c).

International Non-provisional Patent Application: The documents comprising a non-provisional patent application under 37 CFR §1.431.

Non-provisional Patent Application Drawings: Formal drawings for a non-provisional patent application to be filed under 37 CFR §1.53(b) or 37 CFR §1.431.

Non-provisional Patent Application Transmittal Papers: Formal transmittal documents to be filed with a non-provisional patent application under 37 CFR §1.53(b) or 37 CFR §1.431.

Inventor Oath or Declaration for a U.S. Non-provisional Patent Application: Formal inventor oath or declaration documents to be executed and filed with the PTO in conjunction with a non-provisional patent application filed under 37 CFR §1.53(b).

Inventor Assignment for a Non-provisional Patent Application: Formal inventor assignment documents to be executed and recorded in conjunction with a non-provisional patent application filed under 37 CFR §1.53(b) or 37

CFR §1.431.

2. Formal drawings:

Preparation of formal drawing sets for submission in a specified application in compliance with relevant code and regulation.

a. Drawings for U.S. patent filing:

A set of formal drawings for filing with a US patent application meeting the requirements of 37 CFR §§1.81 to 1.85.

b. Drawings for PCT patent filing:

A set of formal drawings for filing with a US patent application meeting the requirements of 37 CFR §1.437.

3. Information Disclosure Statements:

Preparing all documentation necessary to ensure applicant compliance with duty of disclosure requirements under U.S. law and code.

a. Information Disclosure Statement filing:

A set of documents suitable for submission of information under Applicant’s duty of disclosure in compliance with 37 CFR §§1.97 to 1.98.

b. Reference Obtention:

The obtention of all necessary references as identified by Requestor for submission under an Information Disclosure Statement.

4. Prior art searches:

Search suitable prior art databases in accordance with provided search criteria to identify and obtain references relevant to Requestor.

a. U.S. Patent Only Search:

Work with Requestor to develop search criteria and search relevant databases of U.S. patents and published U.S. patent applications based on search criteria to identify, obtain and deliver U.S. patents and patent publications relevant to Requestor.

b. U.S. Non-Patent Literature Search:

Work with Requestor to develop search criteria and search relevant databases of U.S. non-patent literature (NPL) based on search criteria to identify, obtain and deliver NPL references published in the U.S. relevant to Requestor.

c. International Patent Literature Search:

Work with Requestor to develop search criteria and search relevant databases of international patents and published international patent applications based on search criteria to identify, obtain and deliver international patents and patent publications relevant to Requestor.

d. International Non-Patent Literature Search:

Work with Requestor to develop search criteria and search relevant databases of international non-patent literature (NPL) based on search criteria to identify, obtain and deliver NPL references published internationally relevant to Requestor

5. Patentability Analyses:

Review and provide analysis of a set of provided references to determine relevance to the patentability of Requestor’s application. A patentability analysis shall be undertaken after receipt of a prior art search results analyzing prior art identified and its impact on patentability of inventions suggested by the invention disclosure provided to Contractor and potential claims suggested by an invention disclosure.

a. Oral Report:

Review provided set of references and provide oral summary of possible patentability issues with respect to identified application(s) based on analysis.

b. Written Report:

Review provided set of reference and provide written summary of possible patentability issues with respect to identified application(s) based on analysis.

6. Preparation of filing:

Preparation of indicated formal documents to allow for submission of Requestor patent application with suitable agency.

a. Provisional Patent Application Transmittal Papers:

Formal transmittal documents to be filed with a provisional patent application under 37 CFR §1.53(c)

b. Inventor Assignment for a Provisional Patent Application:

Formal inventor assignment documents to be executed and recorded in conjunction with a provisional patent application filed under 37 CFR §1.53(c).

c. Non-provisional Patent Application Transmittal Papers:

Formal transmittal documents to be filed with a non-provisional patent application under 37 CFR §1.53(b) or 37 CFR §1.431.

d. Inventor Oath or Declaration for a U.S. Non-provisional Patent Application:

Formal inventor oath or declaration documents to be executed and filed with the PTO in conjunction with a non-provisional patent application filed under 37 CFR §1.53(b).

e. Inventor Assignment for a Non-provisional Patent Application:

Formal inventor assignment documents to be executed and recorded in conjunction with a non-provisional patent application filed under 37 CFR §1.53(b) or 37 CFR §1.431.

7. Preparation of Patent Application Response:

Preparation of papers suitable for response to an action specified by Requestor.

a. Formalities response:

Draft a formal response to an objection or rejection to the formalities of an initial patent filing prior to substantive examination of the patent application.

b. Restriction Requirement response:

Draft a formal response to a Restriction Requirement issued by the U.S. Patent and Trademark Office.

c. Substantive Office action response:

Draft a formal response to a substantive Office action issued by an Examiner during a review of the patentability of a submitted patent application.

d. Patent appeal:

Assist Navy Patent Attorneys with formal appeal of a rejection issued by an Examiner to the Patent Trial and Appeals Board.

8. Filing Patents and Responses:

Taking the necessary steps to assist with submittal of a provided patent application or response package to an agency indicated by Requestor.

a. Filing a patent with the U.S. Patent and Trademark Office (USPTO):

Take necessary steps to assist with submittal of a provided patent application package to the USPTO and reporting details of the filing to Requestor.

b. Filing a patent with the World Intellectual Property Organization (WIPO) Take necessary steps to assist with submittal of a provided patent application package to the USPTO as Receiving Office for WIPO under the Patent Cooperation Treaty and reporting details of the filing to Requestor.

c. Filing a response with the U.S. Patent and Trademark Office (USPTO):

Take necessary steps to assist with submittal of a provided response package to the USPTO and reporting details of the filing to Requestor.

d. Filing a response with the World Intellectual Property Organization (WIPO) Take necessary steps to assist with submittal of a provided response package to the USPTO as Receiving Office for WIPO under the Patent Cooperation Treaty and reporting details of the filing to Requestor.

9. Training sessions:

Informational and educational meetings, trainings and seminars on subjects determined by the Requestor.

a. Seminars:

Preparing and delivering a seminar to personnel with the Naval Surface Warfare Center Corona Division upon subjects relating to intellectual property on request.

b. Conferences:

Preparing for and attending conferences with the Naval Surface Warfare Center Corona Division upon request.

3.2.6 Patent Filing Support

The contractor shall assist in preparation of filing papers for patent application to include declaration, Power of Attorney and other papers required by the US Patent and Trademark Office to satisfy filing requirements under the USPTO Manual for Patent Examination Procedures (MPEP) in addition to the application and drawings necessary to avoid a missing parts notice.

All papers, files and associated papers relative to the invention disclosure and files, including patent file wrappers, are US Government property. The Contractor shall ensure that patent file wrappers have non-final drafts removed. All references and copies of prior art found by the Contractor shall be provided to the Government along with the completed patent application. All non-prior art, notes, old draft drawings, non-final patent application drafts and superseded papers and notes shall be purged from Contractor’s files for work done under this work statement at the completion of work called for under this work statement. Contractor shall send its original files to TPOC 60 days after completion of work under this work statement unless otherwise directed.

The Contractor shall ensure that mailing of such files are accomplished with shipment tracking and delivered not later than the above referenced period of performance. This contract is for patent-related document drafting only. There will be NO representational capacity by the Contractor whatsoever.