Attachment 1 Performance Work Statement and QASP.pdf

ATTACHMENT 1 PERFORMANCE WORK STATEMENT AND QASP

Legal Support for Foreign Patent Services

U.S. Department of Agriculture

Agricultural Research Service, Office of Technology Transfer

1.0 GENERAL INFORMATION

1.1. Scope of Work

1.1.1 The prime contractor shall provide all personnel, equipment, tools, materials, supervision, and other items and services necessary to provide legal support services as defined in this Performance Work Statement.

1.1.2 This is a performance-based requirement, the contractor shall perform to the requirements and standards as established by this PWS. The labor mix of employees to perform this requirement remains the discretion of the Contractor for all services.

1.1.3 All in scope requirements are Firm Fixed Price. This is not a Time and Materials requirement.

1.1.4 The contractor shall perform all work described in this Performance Work Statement in accordance with all applicable Federal, State, and local laws, regulations, and codes.

1.2. Background

The U.S. Department of Agriculture’s Agricultural Research Service (ARS) require patent-related legal services from firms that provide patent services, (i.e. filing, prosecution and ancillary services including the payment of foreign filing, prosecution, and issue fees) attendant to filing and prosecuting patents and plant breeders rights in countries other than the United

States. ARS will be the facilitator for this contract.

The USDA has the authority pursuant to 35 U.S.C. 207 and 15 U.S.C. 3710 to obtain and maintain patents or other forms of protection in the United States and foreign countries and to grant licenses in accordance with the regulations set forth in 37 C.F.R. Chapter IV as amended, there under to received fees, royalties or other revenues therefore, and to take all other suitable and necessary steps to protect and administer such rights.

The efforts of the contractor are vital to protect USDA intellectual property that supports national security and mission critical research developed by USDA scientists in order to protect and improve the lives of Americans and American farmers and ranchers. These patents and applications help achieve the USDA’s goal of protecting America’s farmers and ranchers from invasive pests and diseases, including IP directed towards managing Highly Pathogenic Avian

Influenza (HPAI), New World Screwworm, Foot and Mouth Disease Virus (FMDV), African

Swine Fever Virus (ASFV), and Citrus Greening Disease (Huanglongbing).

Pursuant to the Federal Technology Transfer Act of 1986 (FTTA), ARS has implemented a technology transfer program that includes collaborative research agreements covering a wide variety of agricultural technologies that have high commercial potential to industry.

Applications could arise under these Cooperative Research and Development Agreements

(CRADAs) or other such research agreements, which may be selected for foreign patent filing and prosecution. Over 250 CRADAs under the FTTA have been signed to date with over 2000 patent applications filed since 1987. Applications that did not arise under a CRADA could also have been selected for foreign patent filing and prosecution.

In 2025, 16 patent cooperation treaty (PCT) applications were filed. Between 2024-2025, 31 national stage applications were filed corresponding to 12 different U.S. serial numbers. Similar activity is anticipated in 2026.

1.3 Invoicing and payment:

1.3.1 The "Submit Invoice-to" address for USDA orders is the Department of Treasury's

Invoice Processing Platform (IPP).

1.3.2 All invoices shall be submitted via the electronic Invoice Processing Platform. This is a mandatory requirement initiated by the U.S. Department of Treasury. More information is available at https://www.ipp.gov. The Department of Treasury is the point of contact for all

IPP Collector account inquiries.

1.3.3. Payment is in arrears pursuant to the clause at FAR 52.212-4. Note FAR 52.212-4 (i)(1)

Items accepted.

1.3.4. Payment will not be made for service in advance of delivery.

1.3.5. The invoice cycle shall be no less than monthly.

1.3.6. Advance invoice approval is not required, as required approval tiers exist in IPP.

1.4 Period of Performance: The period of performance (PoP) shall be for one (1) Base Year of

12 months and four (4) 12-month option years.

1.5 Place of Performance: Location determined by the Prime Contractor not outside of the

United States.

2.0 DEFINITIONS

2.1 Patent Cooperation Treaty (PCT) – An international application resulting in the retention of foreign patent rights in all PCT contracting states for a period of 30-31 months from the priority date. 6.1. CLIN – Contract Line Item, numbered. Established in the solicitation schedule, will start with “0001.”

2.2. Contracting Officer’s Representative (COR)– USDA Employee Technical representative appointed by the Contracting Officer to monitor, evaluate, and communicate to the CO the

Contractor’s performance in complying with contract requirements in an efficient and timely manner.

2.3. Privity of Contract - Contract service providers shall be accountable solely to the Prime

Contractor, who, in turn, is responsible to the Government. For the purposes of this requirement, any reference to “contractor” is referring to the Prime Contractor.

2.4. Calendar Days- Every single day on the calendar (12 AM to 11:59 PM), including weekends, holidays, and non-working days.

2.5. ‘Business Days’ – Standard business days 9AM to 4:30PM Eastern with holiday exceptions as noted:

Listed below are official Government holidays:

New Year’s Day January 1*

Martin L. King Birthday Third Monday in January

President's Day Third Monday in February

Memorial Day Last Monday in May

Juneteenth As Indicated

Independence Day July 4*

Labor Day First Monday in September

Columbus Day Second Monday in October

Veterans Day November 11*

Thanksgiving Day Fourth Thursday in November

Christmas Day December 25*

Or when the USDA-ARS facility is closed due to local or national emergencies, administrative closings, or similar government-directed facility closings

*In accordance with Federal regulations, if these holidays fall on a Saturday, the holiday will be observed on Friday, if Sunday, holiday will be observed on Monday.

3.0 TECHNICAL REQUIREMENTS

The contractor shall provide legal support services in connection with Patent Cooperation Treaty

(PCT) filings and the prosecution of national stage application filed in foreign patent offices and other foreign patent authorities including payment of filing, prosecution and issue fees. Foreign patent matters shall be handled in compliance with applicable laws and legal authorities of the country in which the application is filed.

The contractor shall:

3.1 Provide Patent Legal Services

3.1.1. Prepare all necessary documentation and filing procedures for patent cooperation treaty

(PCT) and foreign patent applications to counterpart U.S. patent applications, to include reviewing and reporting of the search report and written opinion to the COR. This includes but not limited to, responses to lack of unity of invention, amendments, and other required responses.

3.1.2. Coordinate all filing and prosecution of foreign patent properties with associate foreign counsel and COR.

3.1.3. Prepare drafts of documents for submission to the foreign patent authorities sufficiently in advance of the relevant response or filing deadlines so that the COR will have a reasonable time to review and provide substantive comments in advance of such deadlines and before extension fees might need to be paid. Submission of all responses of actions and notices from the foreign patent authorities, including responses to restriction requirements, amendments, and other responses must be submitted to the Patent Advisor assigned to the case, with a copy to the COR 30 working days prior to the filing deadlines, providing the individual country

Patent Office or Foreign Associate has not imposed a shorter deadline.

3.1.4. Prepare, file and monitor Plant Breeders Rights (PBR) applications as necessary.

3.2. Maintain Case Dockets

3.2.1. Provide a printout and electronic copy of dockets to the COR on a quarterly basis for monitoring of workload and case status.

3.2.2. At the beginning of each month, provide a list of actions due within 90 days of the report date. These actions include National Stage Entry, PCT Requests, Demands, and

Requests for Examination.

3.2.3. Docket PCT filings for national stage entry when instructed to do so by the COR.

3.3 Other Related Services

3.3.1 Provide professional services such as, but not limited to, preparing responses to miscellaneous or additional patent-related matters.

3.3.2 Prepare and file declarations, affidavits, notice of appeal and appeal briefs.

3.3.3 Provide copies of patents, file histories, or assignment records of filed patent applications on a timely basis.

3.3.4 Use, to the maximum extent practicable, the current U.S. file wrapper to prosecute foreign patent applications. Consult with the Patent Advisor when different arguments are to be used in foreign cases then were made in the US case.

3.3.5 Secure all copies and translations of cited art and drawings to the extent required by the foreign patent authority.

3.3.6 Deliver copies of papers and attachments from the foreign Patent and Trademark

Office(s), foreign associate counsel, and other patent authorities to the COR(s) within five working days after the receipt.

3.3.7 Confer with inventors and Office of Technology Transfer Staff, as they may be required to prosecute individual patent applications.

3.3.8 Obtain, as necessary, copies of patents, file histories, or assignment records to file patent applications on a timely basis.

3.3.9 Act as a Liaison between the ARS Patent Staff and the foreign associates, by providing interpretations of country law and suggestions for response to Official actions. Review each office action, cited art, or other document, and recommend the suggested best course of action along with any optional courses of action. Provide copies of all references to the COR.

3.3.10 Upon instruction for filing from COR, prepare documents or instructions to associates for application filing or patent prosecution in accordance therewith.

3.3.11 Notify the COR prior to filing or proceeding with prosecution of any case in which there are serious questions of patentability, based on the country law of the proposed filing.

3.3.12 Secure authorization from the COR prior to filing any continuing or divisional applications.

3.3.13 When requested by COR, keep exclusive Licensees and Co-owners informed on prosecution by sending copies of all correspondence, including enclosures. The Government will furnish contact information.

3.3.14 Keep COR informed of significant changes in International and foreign patent laws that would bear on strategies and procedures for future work conducted under the contract.

3.3.15 Serves as a resource for questions related to international and foreign patent law raised by COR or ARS Patent Staff.

3.3.16 Exhibit flexibility in carrying out instructions for filing PCT and foreign patent applications and prosecution responses, possibly with a very short turn-around time for filing.

3.3.17 Provide guidance on correcting inventorship issues in any foreign jurisdiction.

3.3.18 Reports references cited in any jurisdiction to other foreign jurisdictions. Sends copies of references cited.

4.0 THE GOVERNMENT SHALL PROVIDE THE FOLLOWING:

4.1 Information Disclosure Statements;

4.2 Copies of the U.S. Patent application; and

4.3 Copies of the U.S. Patent prosecution history with references, where appropriate

4.4 Contact Information of Licensees and Co-owners

5.0 DELIVERABLES/SCHEDULE

5.1 The Contractor will deliver copies of papers and attachments from foreign Patent and

Trademark Office(s), foreign associate counsel, and other patent authorities to the COR(s) within five working days after their receipt.

5.2 The Contractor will provide an electronic copy of dockets to the COR on a quarterly basis for monitoring of workload and case status.

5.3 At the beginning of each month, Contractor shall provide a list of actions due within 90 days of the report date. These actions include National Stage Entry, PCT Requests, Demands, and Requests for Examination.

6.0 CONTRACTOR’S KEY PERSONNEL

6.1 The contractor shall provide a project manager who will be responsible for the performance of the work.

6.2 The project manager or alternate(s) shall have full authority to act on all matters relating to daily operation of this contract.

6.3 The project manager and alternate(s) must be able to read, write, speak, and understand

English.

6.4 The contractor shall be available during normal duty hours either via phone or email to answer questions / concerns related to this contract. Normal duty hours are Monday – Friday 9:00am –

4:30pm ET.

7.0 SECURITY REQUIREMENTS

7.1 All personnel employed by the contractor in the performance of this contract, or any representative of the contractor shall abide by all US Federal Government security statues and regulations. Requirement specific security requirements are pursuant to the solicitation and any subsequent contract clauses.

7.2 All contractor personnel visiting USDA facilities shall schedule the visit with the COR, verify current site security requirements, and be escorted a USDA employee while on site at all times.

8.0 QUALITY ASSURANCE SURVEILLANCE PLAN (QASP): The Government shall establish a QASP as a means of evaluating whether the Contractor is meeting the performance standards/quality levels identified in the PWS to ensure that the government pays only for the level of services received.

Tasks Standards Acceptable Quality

Level (AQL)

Requirements and Tasks identified in Sections

3,4,5,6, and 7

Standards as established in T Sections 3,4,5,6, and 7

100%

Appendix – Estimated total hours by base and option periods. Section 1.1.2 addresses labor mix.

CLIN Period Estimated Hours

0001 Base Period Patent Legal Services 1080

1001 Option Period 1 Patent Legal Services 1080

2001 Option Period 2 Patent Legal Services 1080

3001 Option Period 3 Patent Legal Services 1080

4001 Option Period 4 Patent Legal Services 1080