BETA SAM CONTINUATION 1449.pdf

RFP 1232SA21R0002

This document consists of the following sections:

PART DESCRIPTION

A

B Continuation of the SF 1449

C Contract Clauses

D Any Contract Documents, Exhibits or Attachments

E Solicitation Provisions and Instructions to Offeror(s)

B.1 - Continuation of Block 16-ADMINISTERED BY

B.1.1 - CONTRACTING OFFICER

The Contracting Officer (CO) has the overall responsibility for the administration of this contract. The CO alone, without delegation, is authorized to take actions on behalf of the

Government to amend, modify or deviate from the contract terms, conditions, requirements, specifications, details and/or delivery schedules; issue task orders against the contract; make final decisions on disputed deductions from contract payments for nonperformance, or unsatisfactory performance; terminate the contract for convenience or default; and issue final decisions regarding contract questions or matters under dispute. However, the CO may delegate certain other responsibilities to the Contracting Officer’s Representative (COR). All delegated duties will be specified in writing by a COR Appointment and Delegation Notice.

[End of Text]

B.2 - Continuation of Block 18b-INVOICES

Electronic Invoicing and Payment Requirements—Invoice Processing Platform (IPP)

Payment requests must be submitted electronically through the U.S. Department of the

Treasury’s Invoice Processing Platform (IPP).

“Payment Request” means any request for contract financing payment or invoice payment by the

Contractor. To constitute a proper invoice, the payment request must comply with the requirements identified in the applicable Prompt Payment clause included in the contract, or the clause 52.212-4 Contract Terms and Conditions—Commercial Items included in commercial item contracts. The IPP website address is: https://www.ipp.gov.

The Contractor must use the IPP website to register, access and use IPP for submitting requests for payment. Contractor assistance with enrollment, UserIDs and Passwords can be obtained by contacting the IPP Helpdesk via email at IPP Customer Support Desk at 1-866-973-3131 or

IPPCustomerSupport@fms.treas.gov . For all other IPP issues, please contact: COD Helpdesk at 1-877-243-3072 or COD.HELP@usda.gov.

(End of Text) https://www.ipp.gov/ mailto:IPPCustomerSupport@fms.treas.gov mailto:COD.HELP@usda.gov

B.3 - DESIGNATION OF CONTRACTING OFFICER’S REPRESENTATIVE

The Contracting Officer hereby designates as the Contracting Officer’s Representative (COR):

[TO BE DESIGNATED UPON AWARD]

The COR shall be responsible for administering the performance of work under this contract. In no event, however, will any understanding, agreement, modification, change order, or other matter deviating from the terms of this contract be effective or binding upon the Government unless formalized by proper contractual documents executed by the Contracting Officer prior to completion of the contract.

The Contracting Officer shall be informed as soon as possible of any actions or inactions by the

Contractor or the Government which will change the required delivery or completion times stated in the contract, and the contract shall be modified accordingly.

On all matters that pertain to the contract terms, the contractor shall communicate with the

Contracting Officer. Whenever, in the opinion of the Contractor, the COR requests effort outside the scope of the contract, the contractor shall so advise the COR. If the COR persists and there still exists a disagreement as to proper contractual coverage, the Contracting Officer shall be notified immediately, preferably in writing if time permits. Proceeding with work without proper contractual coverage may result in nonpayment or necessitate submittal of a contract claim.

The COR shall be responsible for initiating the Contractor Performance Assessment Report

(CPAR) for awards over the simplified acquisition threshold of $150K to document contractor’s performance during the period of performance 14 days after completion of services or delivery of goods.

B.4 - PRICING

Please provide detailed pricing for Patent Legal Services per the tasks required in the SOW and as it pertains as follows:

B.2.1 Base Period: March 1, 2021-February 28, 2022

(To include a 2-3 month Transition Period)

CLIN Description

Est.

Hours Unit Price

Extended

Amount

0001 Senior Attorney 120

0002 Associate/Agent (Jr Attorney) 240

0003 Paralegal 720

ODCs: PCT filing fees, Translations, Foreign filing fees & Associates Costs, Drawings

NOT TO

EXCEED

$366,000.00

Total estimated price/ceiling value

(Base Period)

B.2.2 Option Year 1: March 1, 2022-February 28, 2023

Hours Unit Price

Extended

Amount

1001 Senior Attorney 120

1002 Associate/Agent (Jr Attorney) 240

1003 Paralegal 720

ODCs: PCT filing fees, Translations, Foreign filing fees & Associates Costs, Drawings

NOT TO

$370,000

(Option Period 1)

B.2.3 Option Year 2: March 1, 2023-February 29, 2024

Hours Unit Price

Extended

Amount

2001 Senior Attorney 120

2002 Associate/Agent (Jr Attorney) 240

2003 Paralegal 720

ODCs: PCT filing fees, Translations, Foreign filing fees & Associates Costs, Drawings

NOT TO

$374,000

(Option Period 2)

B.2.4 Option Year 3: March 1, 2024-February 28, 2025

Hours Unit Price Extended Amount

3001 Senior Attorney 120

3002 Associate/Agent (Jr Attorney) 240

3003 Paralegal 720

ODCs: PCT filing fees, Translations, Foreign filing fees & Associates Costs, Drawings

NOT TO EXCEED

$376,000

(Option Period 3)

B.2.5 Option Year 4: March 1, 2025-February 28, 2026

Hours Unit Price

Extended

Amount

4001 Senior Attorney

4002 Associate/Agent (Jr Attorney)

4003 Paralegal

ODCs: PCT filing fees, Translations, Foreign filing fees & Associates Costs, Drawings

NOT TO

$380,000

(Option Period 4)

C - CONTRACT CLAUSES

C.1 – FEDERAL ACQUISITION REGULATIONS (FAR) CLAUSES

C.1.1 - FAR 52.252-2 CLAUSES INCORPORATED BY REFERENCE

This contract incorporates one or more clauses by reference, with the same force and effect as if they were given in full text. Upon request, the Contracting Officer will make their full text available. Also, the full text of a clause may be accessed electronically at this address:

http://www.acquisition.gov/far/

C.1.2 – FAR 52.204-2 SECURITY REQUIREMENTS

This clause is incorporated by reference.

C.1.3 – FAR 52.212-4 CONTRACT TERMS AND CONDITIONS -- COMMERCIAL

ITEMS

This clause are incorporated by reference.

C.1.4 - FAR 52.217-8 OPTION TO EXTEND SERVICES

FAR 52.217-9 OPTION TO EXTEND TERM OF CONTRACT

These clauses incorporated by reference.

C.2 – DEPT. OF AGRICULTURE ACQUISITION REGULATIONS (AGAR) CLAUSES

C.2.1 - AGAR 452.224-70 CONFIDENTIALITY OF INFORMATION

(a) Confidential information, as used in this clause, means --

(1) information or data of a personal nature, proprietary about an individual, or (2) information or data submitted by or pertaining to an organization.

(b) In addition to the types of confidential information described in (a)(1) and (2) above, information which might require special consideration with regard to the timing of its disclosure may derive from studies or research, during which public disclosure of primarily invalidated findings could create an erroneous conclusion which might threaten public health or safety if acted upon.

(c) The Contracting Officer and the Contractor may, by mutual consent, identify elsewhere in this contract specific information and/or categories of information which the Government will furnish to the Contractor or that the Contractor is expected to generate which is confidential.

Similarly, the contracting Officer and the Contractor may, by mutual consent, identify such confidential information from time to time during the performance of the contract. Failure to agree will be settled pursuant to the "Disputes" clause.

(d) If it is established that information to be utilized under this contract is subject to the Privacy

Act, the Contractor will follow the rules and procedures of disclosure set forth in the Privacy Act of 1974, 5 U.S.C. 552a, and implementing regulations and policies, with respect to systems of records determined to be subject to the Privacy Act.

(e) Confidential information, as defined in (a)(1) and (2) above, shall not be disclosed without the prior written consent of the individual, institution or organization.

(f) Written advance notice of at least 45 days will be provided to the Contracting Officer of the

Contractor's intent to release findings of studies or research, which have the possibility of adverse effects on the public or the Federal agency, as described in (b) above. If the Contracting

Officer does not pose any objections in writing within the 45 day period, the contractor may proceed with disclosure. Disagreements not resolved by the Contractor and Contracting Officer will be settled pursuant to the "Disputes" clause.

(g) Whenever the Contractor is uncertain with regard to the proper handling of material under the contract, or if the material in question is subject to the Privacy Act or is confidential information subject to the provisions of this clause, the Contractor shall obtain a written determination from the Contracting Officer prior to any release, disclosure, dissemination, or publication.

(h) The provisions of paragraph (e) of this clause shall not apply when the information is subject to conflicting or overlapping provisions in other Federal, State or local laws.

C.2.2 - AGAR 452.237-75 RESTRICTIONS AGAINST DISCLOSURE (FEB 1988)

(a) The Contractor agrees, in the performance of this contract, to keep all information contained in source documents or other media furnished by the Government in the strictest confidence. The

Contractor also agrees not to publish or otherwise divulge such information in whole or in part in any manner or form, or to authorize or permit others to do so, taking such reasonable measures as are necessary to restrict access to such information while in the Contractor's possession, to those employees needing such information to perform the work provided herein, i.e., on a "need to know" basis. The Contractor agrees to immediately notify in writing, the Contracting Officer, named herein, in the event that the Contractor determines or has reason to suspect a breach of this requirement.

(b) The Contractor agrees not to disclose any information concerning the work under this contract to any persons or individual unless prior written approval is obtained from the

Contracting Officer. The Contractor agrees to insert the substance of this clause in any consultant agreement or subcontract hereunder.

C.3 - PERIOD OF PERFORMANCE

The total period of performance shall not exceed a 12-month Base Period and four 12-month

Option Periods (if exercised). The period of performance is anticipated as follows:

Base Year: March 1, 2021 to February 28, 2022

Option Year 1: March 1, 2022 to February 28, 2023

Option Year 2: March 1, 2023 to February 28, 2024

Option Year 3: February 29, 2024 to February 27, 2025

Option Year 4: February 28, 2025 to March 1, 2026

[End of text]

C.4 - LEGAL HOLIDAYS

(a)The Federal Government observes the following days as holidays.

New Year’s Day January 1st*

Martin Luther King’s Birthday Third Monday in January

Presidents’ Day Third Monday in February

Memorial Day Last Monday in May

Independence Day July 4th*

Labor Day First Monday in September

Columbus Day Second Monday in October

Veterans’ Day November 11th

Thanksgiving Day Fourth Thursday in November

Christmas Day December 25th*

*If the date falls on a Saturday, the Government holiday is the preceding Friday. If the date falls on a Sunday, the Government holiday is the following Monday.

(b) In addition to the days designated above as holidays, the Government may observe additional days in accordance with 5 USC 6103.

C.5 - PLACE OF PERFORMANCE

The services specified by this contract shall be performed at the following locations: see

SOW/PWS.

No changes to the place of performance are authorized without written consent of the

Contracting Officer.

C.6 - REPRESENTATIONS, CERTIFICATIONS, AND OTHER STATEMENTS OF

OFFEROR

In accordance with FAR 15.204-1(b), the completed and submitted “Representations, Certifications, and Other Statements of Offeror”, are incorporated by reference in this contract.

C.7 - KEY PERSONNEL

This section shall describe the key personnel who will be assigned to perform the work under this contract. Demonstrate your understanding of this requirement by designating those positions which you consider to be “Key Personnel” and essential to the successful performance of any contract awarded as a result of this solicitation.

Discuss specific technical disciplines (Chemical, Electrical, Mechanical, Biotechnology, and sub-disciplines) in which your firm has competence for the purposes of preparation and prosecution of foreign patent applications. Identify, with appropriate background statements, the corresponding staff members who will perform services in those areas.

Discuss the general qualifications of each of your key personnel including any special abilities.

Highlight recent experience with similar projects or contracts. Resumes are required which will indicate education, background, recent experience, and specific pertinent accomplishments.

Identify supervisory personnel and key individuals who will personally work with Government representatives in the performance and coordination of the required services.

Describe additional key personnel, if any, who will be required for employment or subcontract basis as well as the technical area in which they will work and the amount of time they will devote to the project.

Submit resumes of the proposed key personnel. There is no required format, but the offeror should use the resume to demonstrate the qualifications of proposed key personnel for their positions and their ability to satisfy the USDA's requirements. Resumes shall include points of contact for all experience during the most recent four years, including the name and current phone number of clients or employers that can verify the performance of the proposed person.

D - DOCUMENTS, EXHIBITS OR ATTACHMENTS

ATTACHMENT

NUMBER

DESCRIPTION

01 STATEMENT OF WORK (5 PAGES)

02 QASP (1 PAGE)

E - SOLICITATION PROVISIONS AND INSTRUCTIONS TO OFFEROR(S)

E.1 – FAR 52.252-1 SOLICITATION PROVISIONS INCORPORATED BY

REFERENCE (FEB 1998)

This solicitation incorporates one or more solicitation provisions by reference, with the same force and effect as if they were given in full text. Upon request, the Contracting Officer will make their full text available. The offeror is cautioned that the listed provisions may include blocks that must be completed by the offeror and submitted with its quotation or offer. In lieu of submitting the full text of those provisions, the offeror may identify the provision by paragraph identifier and provide the appropriate information with its quotation or offer. Also, the full text of a solicitation provision may be accessed electronically at this/these address(es):

E.2 - FAR 52.212-1 INSTRUCTIONS TO OFFERORS-COMMERCIAL ITEMS (JAN

2017)

This provision is incorporated by reference.

E.3 - FAR 52.216-1 TYPE OF CONTRACT (APR 1984)

The Government contemplates award of a 12 month Base and a four 12 month Option Period contract at a firm fixed price.

E.4 COMMUNICATIONS REGARDING THIS SOLICITATION

Any questions or comments regarding this solicitation shall cite the solicitation number and be directed to the following Government representative:

Name: Christina Royle, Contract Specialist

Phone: (301) 504.1654 (collect calls not accepted)

E-Mail: Christina.Royle@usda.gov

Address: USDA, Agricultural Research Service

5601 Sunnyside Avenue

Beltsville, MD 20705-5230

E.4.1 PROPOSAL INSTRUCTIONS FOR OFFERORS

Proposals should be submitted in two (2) separate parts entitled “Technical Proposal” and “Price

Proposal”. All questions are due NLT 5:00PM EST on Wednesday, December 9, 2020. All proposals are due NLT 12:00PM EST on Monday, December 28, 2020.

Submit proposal via email only to Christina.Royle@usda.gov. No faxed proposals will be accepted.

Offerors are reminded that one signed copy of the SF 1449 must be completed and returned with your proposal.

Proposal Documents

Each offeror's proposal must contain the documents listed below.

1. Technical Proposal:

a. Technical Approach: Provide a technical proposal that describes how you will meet the requirements listed in Attachment 01, PWS It should present sufficient information to reflect a thorough understanding of the work requirements and a detailed practical approach to achieving the objectives of the PWS. The proposal should also include how the project will be organized and managed.

mailto:Christina.Royle@usda.gov

b. Key Personnel: This section shall describe the key personnel who will be assigned to perform the work under this contract. Demonstrate your understanding of this requirement by designating those positions which you consider to be “Key Personnel” and essential to the successful performance of any contract awarded as a result of this solicitation. At least two Senior Attorneys, one Junior Attorney/Agent and one Paralegal shall be required to implement this contract.

Discuss specific technical disciplines (Chemical, Electrical, Mechanical, Biotechnology, and sub-disciplines) in which your firm has competence for the purposes of preparation and prosecution of foreign patent applications. Identify, with appropriate background statements, the corresponding staff members who will perform services in those areas.

Discuss the general qualifications of each of your key personnel including any special abilities.

Highlight recent experience with similar projects or contracts. Resumes are required which will indicate education, background, recent experience, and specific pertinent accomplishments.

Identify supervisory personnel and key individuals who will personally work with Government representatives in the performance and coordination of the required services.

Describe additional key personnel, if any, who will be required for employment or subcontract basis as well as the technical area in which they will work and the amount of time they will devote to the project.

Submit resumes of the proposed key personnel. There is no required format, but the offeror should use the resume to demonstrate the qualifications of proposed key personnel for their positions and their ability to satisfy the USDA's requirements. Resumes shall include points of contact for all experience during the most recent four years, including the name and current phone number of clients or employers that can verify the performance of the proposed person.

The Government intends to check references by phone as time allows. The Government may not check references for all candidates.

c. Past Performance: List five examples of previous work that is similar to the nature, size, scope, and complexity of this requirement and why relevant.

Previous Government or University experience is preferred. Provide the following information for each:

1) A brief description of contract work, scope, responsibilities and how and why it relates to this requirement. Discuss any special problems encountered.

2) The contract number, type, dollar value and period of performance.

3) The names, addresses, telephone and fax numbers of the contracting organization, Government Project Officer(s) and Contracting Officer(s).

Indicate who should be contacted to discuss past performance.

4) Identify any contract similar to the proposed requirement which was terminated for default within the past five years.

d. Management and Staffing Plan: Offerors are required to submit a detailed work plan indicating how each aspect of the contractual requirements will be accomplished. The management plan should be in as much detail as necessary to fully explain the approach or method to be utilized.

Discuss your firm’s ability to perform patent services using full-time staff members and associates without the necessity for domestic subcontractors. Discuss your firm’s ability to perform services quickly when filing deadlines are critical. Address the minimum time required to revise specifications, prepare drawings, and secure translations. Discuss your facilities for obtaining the requisite translations.

Discuss how you intend to maintain a current case docket to ensure that actions are accomplished on a timely basis, and that filing, prosecution, and issue fees are paid on a timely basis. Discuss how you intend to report foreign transactions and monthly billings to the Government.

Discuss how you keep current on country law changes. Also discuss how you keep current on changes to PCT regulations. Discuss how you are prepared to implement such changes.

Indicate the availability to you of established and qualified foreign agents/associates and demonstrate their qualifications to represent the Government before the Patent Office in their country. Identify and indicate the length of your association with these agents. Discuss the extent and nature of services/items you propose to furnish through foreign associates and provide an explanation of why and how the proposed subcontractors were selected. An already-established network of foreign agents/associates shall be required.

Discuss how you maintain communications with foreign associates to whom English may be a secondary language.

Discuss your policy regarding direct communication with the client (i.e. scientist or patent staff) and attorney(s) charged with the case, paralegal, and other staff members. Discuss supervisory controls over the associates assigned to clients’ document. Describe your firm’s procedures for the following:

(1) Foreign filing;

(2) Precautions taken to avoid loss of individual patent rights as well as any unusual operating procedures to ensure efficient and timely accomplishment of patent actions;

(3) Docketing and assigning cases to staff;

(4) Obtaining formal drawings, sequence listings, document translations, etc.

when not received with the case.

(5) Monitoring U.S. prosecution, coordinating foreign prosecution with U.S.

prosecution, and reliance upon U.S. prosecution papers to prepare corresponding papers in foreign cases;

(6) Discuss how you will consult with the Patent Advisors when different arguments will be used in the foreign cases than in the US;

(7) Copying clients on all prosecution papers including actions and responses;

(8) Timely soliciting authorization from client to make responses and/or pay patent-related fees;

(9) Strategy for recommending streamlining of U.S. patent application documents for the purpose of reducing the cost of foreign filing; and

(10) Exhibiting flexibility in carrying out patent application filings and proposed responses, sometimes with a short turn around time; and

(11) Handling cases beyond the capabilities of your staff;

(12) Handling unusual/extraordinary prosecution procedures such as opposition appeals;

(13) Filing and monitoring Plant Breeders Rights (PBR) applications.

e. Conflict of Interest Plan and Policies: As indicated in the Statement of Work, Conflict of Interest Plans and Policies will be evaluated to determine whether a contract with an offeror is feasible, and if so whether the offeror has adequate procedures for recognizing professional conflicts of interest to adequately protect the Government’s interest.

The interests in which the Government seeks to protect are (1) the timely recognition by a

Contractor of a potential conflict of interest; and (2) the process by which the Contractor will decide which of the clients to represent or how he can represent them simultaneously. The process will be evaluated to determine whether the plan and policies adequately protects the interests of the Government.

f. Table of Manning

Indicate the manpower, administrative staff, and other resources of your firm which will be allocated to the required services. Detail the manner in which the work will be accounted, assigned, performed, and supervised. Address the manpower (by skill and hours) and other direct costs expected to be utilized in (1) filing an application for foreign patent and (2) prosecution of the patent and related services.

2. Price Proposal

Offerors need only submit Section B – Schedule of Items and Prices with their offer for the price proposal. However, the Government reserves the right to request cost and pricing information after submission of offers if the Contracting Officer determines it to be necessary to make a price reasonableness decision. The offeror shall be prepared to submit the following cost and pricing information, if requested, within five (5) working days.

Offerors are required to submit charges and rates for the services specified. The basic rates for foreign filing shall include all services necessary to prepare and revise specifications and claims prior to filing in the respective countries. The basic rates for foreign filing shall not include official filing fees but shall include all charges for recording assignments, declarations, powers of attorney and other papers. Except as noted below, the basic rates shall be all inclusive except with respect to filing fees, and the fees of the foreign associates which are expected to be filed at cost. It is expected the contractor will assume the cost of docketing actions of the transferred files as a cost of doing business, but if there is a proposed charge for initially receiving transferred files and docketing actions, offerors are to define it in their price proposal.

Estimated Quantities

DOMESTIC APPLICATIONS: It is anticipated that approximately 50 applications will be filed domestically during the base period of performance: biotechnology (30), chemistry (15) and

M/E/Misc. (5). The Government anticipates that these numbers will increase by 15 percent in the option periods. The Government will file these domestic applications using in-house resources.

PATENT COOPERATION TREATY (PCT): It is also anticipated that PCT filings during the base period of performance will number approximately 20 filing: 10 biotechnology, 7 chemistry and 3 M/E/Misc. The Contractor shall be required to perform the initial PCT filing and all further work necessary during the PCT process. For each option period of performance it is anticipated that PCT filings will number approximately 20 filing: 10 biotechnology, 7 chemistry and 3 M/E/Misc.

PLANT BREEDERS RIGHTS (PBR) APPLICATIONS: It is anticipated that PBR filings during the base period of performance will number 5-10 in various countries.

FOREIGN FILINGS AND PROSECUTIONS: During Fiscal Year 2019, 13 PCT’s were filed.

Fifty-four (54) national stage items were filed and pending corresponding to 7 different U.S.

serial numbers, and 18 national stage items were dropped. The Contractor shall handle at least

100 portfolios in all stages of prosecution. There could be as many as 21 numerous country filings as little as 1 country filing in association with a given U.S. serial number. An estimated workload for the base period and option period 5 would be 2 national stage filings with 3-5 country filings and 1 national stage cases with 12-15 country filings. An estimated workload for option period 2-4 would be 3-4 national stage cases with 3-5 country filings and 1-2 national stage cases with 12-15 country filings. There might be as many as 10-15 responses due to foreign patent offices for cases already in prosecution for option period 2-4.

At the discretion of the Agency, the contractor may be assigned foreign pending patent cases in various stages of prosecution. The pool from which these may be chosen are estimated at 100 pending cases and 30 new cases.

F. EVALUATION OF PROPOSALS

FAR PROVISION 52.252-1, Solicitation Provisions Incorporated by Reference (Feb

1998)

This solicitation incorporates one or more solicitation provisions by reference, with the same force and effect as if they were given in full text. Upon request, the Contracting Officer will make their full text available. The offeror is cautioned that the listed provisions may include blocks that must be completed by the offeror and submitted with its quotation or offer. In lieu of submitting the full text of those provisions, the offeror may identify the provision by paragraph identifier and provide the appropriate information with its quotation or offer. Also, the full text of a solicitation provision may be accessed electronically at this/these address(es):

http://www.arnet.gov/far/

(End of Provision)

I. FEDERAL ACQUISITION REGULATION (48 CFR CHAPTER 1) PROVISIONS

NUMBER TITLE DATE

52.217-5 EVALUATION OF OPTIONS JUL 1990

Business Evaluation

To be considered compliant, the offeror shall offer all items listed in Section B for the basic contract period and each separate option period.

Evaluation Methodology

1. Technical Approach

Offerors will be evaluated on their ability to demonstrate an accurate and thorough understanding of all project tasks, the overall technical solution and the degree to which it may achieve the expected outcomes.

2. Past Performance/Similar Experience

Offerors will be evaluated on their successful past performance on similar http://www.arnet.gov/far/ work. It includes but is not limited to timeliness, completion of deliverables, responsiveness to customers’ needs and ability to correct problems.

Basis for Award

Technical merit plays a significant role in determining award. All evaluation factors other than price, when combined, are more important than price. The Contracting Officer shall determine what trade-off between technical merit and price promises to be the best value to the

Government with price and other factors to be considered. As non-price factors become more equal, price may become the determining factor. The award will be made to the offeror that offers the greatest value and is most advantageous to the Government.

Statement of Work ATTACHMENT 1

Legal Support for Foreign Patent Services

U.S. Department of Agriculture

Agricultural Research Service

1.0 GENERAL INFORMATION

1.1 Introduction

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.

ARS sponsor research on new and useful products and processes which have potential application in the private and public sectors and may receive certain valuable patent or other forms of intellectual property rights in the United States covering such products and processes.

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.

ARS and FS have a long-standing history of research collaborations with industry and academia.

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 200 CRADAs under the FTTA have been signed to date with over 1800 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 2019, 16 patent cooperation treaty (PCT) applications were filed. There were 54 national stage filings corresponding to 7 different U.S. serial numbers. 18 National stage items were dropped. Similar activity is anticipated in 2020.

1.2 Scope of Work

The contractor shall provide all personnel, equipment, tools, materials, supervision, and other items and services necessary to provide legal support services as defined in this statement of work (SOW), except as specified in Paragraph 3, Government-Furnished Property and Services.

The estimated quantities of work are listed in Section L, Instructions, conditions, and notices to offerors or respondents.

1.3 Personnel

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

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

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

English.

1.3.4 Security Requirements. All personnel employed by the contractor in the performance of this contract, or any representative of the contractor shall abide by all government security regulations.

1.4 Hours of Operation:

1.4.1 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.

2.0 DEFINITIONS

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.

3.0 THE GOVERNMENT SHALL PROVIDE THE FOLLOWING:

• Information Disclosure Statements;

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

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

• Contact Information of Licensees and Co-owners

4.0 TASK 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:

4.1 Provide Patent Legal Services

4.1.1. 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.

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

4.1.3. 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.

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

4.2. Maintain Case Dockets

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

4.2.2. 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.

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

4.3 Other Related Services

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

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

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

4.3.4 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 the foreign cases then were made in the US case.

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

4.3.6 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.

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

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

4.3.9 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.

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

4.3.11 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.

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

4.3.13 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.

4.3.14 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.

4.3.15 Serves as a resource for questions related to international and foreign patent law raised by

COR or ARS Patent Staff.

4.3.16 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.

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

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

Quality Assurance Surveillance Plan ATTACHMENT 02

Quality Assurance Surveillance Plan (QASP)

1. Timely Filing - Upon being presented with an invoice significantly more expensive than usual for similar services, the COR will determine if this costly invoice contains a rush translation fee or surcharge. The COR will investigate the file and use other resources as necessary to determine if instructions were made by the Government in a timely manner. The COR will use all available information to determine if the rush charges resulted from a lack of timely instruction on the Government’s part, or poor management practices on the part of the Contractor. Extenuating circumstances will also be reviewed.

2. Loss of Patent Rights - Upon being notified, either by the Contractor, Foreign Associate, or individual Country Patent Office, that patent rights were lost either retrievably or irretrievably, the COR will investigate the file and use other resources as necessary to determine the cause of such a loss. The COR will investigate to determine if instruction was made by the Government and all necessary requested materials furnished. Extenuating circumstances will also be reviewed before making a determination.

3. Submission of Proposed Responses - Upon receiving complaints from Patent Advisor(s), specifically that they have not been provided with 30 days to review proposed responses, the COR will review the file and hold discussions with the Patent Advisor(s) and the Contractor to determine the cause of the delay. If a shorter deadline was imposed by the Country Patent Office, the Contractor will in no way be held responsible. If the delay was caused by lack of staff or office management practices on the part of the Contractor, the deduction penalty will be applicable.