Legal Services Law Firm Data Form Questionnaire.docx

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R498-- Patent Legal Services
Solicitation number
36C24E23R0009
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Legal Services Law Firm Data Form Questionnaire

Each Law Firm who will participate in providing services to VA must provide the following data:

1. Business Details

a. Please provide your business address, business form and the state of formation of your business.

b.Please indicate how long the firm has been in business providing patent prosecution services.
c.How many full and part time employees does your company currently engage? (No. full time_____No. part-time____)
d.How many full and part time attorneys does your company currently engage? (No. full time_____No. part-time____)
e.How many full and part time administrative staffers/paralegals/clerks will be allocated to fulfill the requirements of this contract? (No. full time_____No. part-time____)
d.How many contractors will/does your company engage and to perform what specific tasks for fulfillment of the obligations of this contract?

2. Domestic Practice Experience a

a. Is your firm currently prosecuting and/or managing patent portfolios for publicly traded biotechnology, pharmaceutical or medical device companies? What are the largest (by technology area and employee count) three companies your firm represents, length of engagement and number of patents filed in the past three years for each company?

b. Does your firm have experience prosecuting and/or managing patent portfolios for start-up biotechnology, pharmaceutical or medical device companies? How many start-up companies have you filed patent applications for in the past five years?

c. Is your firm currently prosecuting and/or managing patent portfolios for a U.S. federal agency? Which agencies and the lengths of engagement by each agency? How many applications filed for each agency in past five years? How many federal government portfolios is your firm currently managing? Have any federal government clients canceled a contract for patent legal services in the past three years?

d. Does your firm have experience prosecuting and/or managing patent portfolios for university/academic/non-profit clients? Please list top three organizations by number of patent applications filed by your firm within the past three years.

e. Has your firm directed or participated in patent litigation proceedings within the past three years? How many and what were the outcomes? Will attorneys assigned to work on VA projects under this solicitation have patent litigation experience?

3. Domestic Patent Filing Record

a. Number and percentage of total work within the firm for specific technical areas over past five years:

Technical Area
Number of domestic / PCT filings
Percentage of all filings
Number of Domestic Patents Issued

Chemistry

Biotechnology – (recombinant cells and organisms, recombinant nucleic acids, peptides, and proteins. Methods involving recombinant DNA technology.)

Pharmaceuticals (e.g., compounds, compositions and formulations intended for therapeutic use in humans; small molecule drugs, biologics, therapeutic peptides, proteins, and nucleic acids, therapeutic antibodies;)

Biomedical Engineering (e.g., bio-imaging devices, microscopes, laboratory automation; cell screening and sorting;)

Medical Diagnostics (e.g., genetic tests; immunoassays, metabolite screening, Medical Devices ( e.g., wheelchairs, beds, prostheses, assistive devices

Surgical Techniques and Devices

Biomedical software and hardware

Trademark

Foreign Prosecution Management Experience

a.In what foreign jurisdictions have you engaged a foreign associate for patent prosecution purposes in the past three years? (If none, please so indicate.)
i.How many patent filings have you managed in foreign jurisdictions in the past three years in the technical areas specified under 1.a. above?
ii.Have you participated in a patent grant opposition proceeding in a foreign jurisdiction?

Quality Control/ Employee Training Diligence

4. Has the firm or any of the attorneys who will be working on VA projects under this solicitation been disbarred or subject to a disciplinary action at the PTO in the past three years?

5. Have any attorneys who will be working on VA matters been disbarred or subject to a disciplinary action by a state bar association in the past three years?

6. Has the firm or any of the lawyers been found liable by a court for malpractice in a patent or trademark prosecution matter in the past three years?

7. Does your firm carry malpractice insurance for each attorney who will be engaged by the VA under this solicitation?

8. Does your firm carry malpractice insurance of the kind and in an amount commensurate with similarly situated law firms providing patent prosecution services?

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