Statement_of_Work_Final.docx

Enclosure 1 Statement of Work Intellectual Property Software Solution

1.0 Background

The Office of Naval Research (ONR) has maintained operations of the intellectual property docketing system requirements for the Department of Navy (DON) Office of General Counsel (OGC) attorneys and support staff since approximately 1985 with an Oracle-based software solution developed in-house at ONR that provides basic docketing and case tracking functions for patents, trademarks, and agreements. For some time, this software solution has been in an out-of-cycle maintenance posture, operating without any application updates or software upgrades. In addition, DON’s requirements for intellectual property (IP) docketing and agreement tracking have evolved over the years and with them, the need for an IP software solution with greater functionality than currently available with the current software. The current software will be retired in the future and ONR requires a replacement for patent docketing, trademark docketing, and agreement tracking. The replacement software solution shall initially be used by approximately eighty-eight (88) DON OGC personnel comprising of IP attorneys (58), legal assistants (25), analysts/staff (5), and implemented by approximately 7 Information Technology (IT) staff, including support contractors, across twenty-four (24) locations.

Existing records information:

The following table reflects the estimated number of active records by record type. Existing records will be manually entered into the new software solution.

New records information:

The following table reflects the estimated number of new records by record type that will be created annually.

2.0 Objective

The objective of this requirement is to obtain, successfully deploy, and maintain a fully developed, commercially available software solution that addresses DON OGC’s patent docketing, trademark docketing, and agreement tracking requirements discussed in this SOW.

3.0 System Compatibility and Software Functionality Requirements

3.1 System Compatibility Requirements:

The replacement patent docketing, trademark docketing, and agreement tracking software solution shall be a fully developed and commercially available software solution that:

a. Is capable of being hosted and operated on client system running Windows Server 2012 and above and SQL Server 2012 and above. There is no support for Linux/Unix and Oracle at projected DON hosting facilities.

b. Is compatible with Navy Next Generation Enterprise Network (NGEN) end point client requirements including interoperability with Internet Explorer (IE) 11 without system plug-ins or add-ons.

c. Supports Active Directory Federation Services (ADFS) and is compatible with the Department of Defense (DOD) Common Access Card (CAC) for authentication, authorization, and access (i.e. single sign-on with PKI certificates).

d. Contains a web-based Application Programming Interface able to run in a virtualized environment, capable of running without installation of an associated client on the desktop, and meets the applicable accessibility standards at 36 CFR Part 1194, U.S. Architectural and Transportation Barriers Compliance Board (Access Board) under the authority of Section 508 of the Rehabilitation Act Amendment of 1998.

e. Supports TLS 1.1 and TLS 1.2.

3.2 Patent Docketing Functionality Requirements:

a. Software solution must perform patent docketing based upon country laws to include, at a minimum, the USPTO rules and the international stage of the Patent Cooperation Treaty (PCT). Country law updates are to be provided on a regular basis.

b. Software must provide an electronic (emailed or other) copy of any USPTO Correspondence to an attorney and/or staff member. The input of the office action into the system shall automatically generate an action due for the attorney in the system, including, but not limited to, due dates.

c. Software must generate dockets at the individual attorney level. Generated dockets must be viewable at the attorney level and at an office-wide level. The system must permit a customizable date range for viewing due dates.

d. Software must generate docket actions with appropriate advance reminders, so that response due dates appear on the responsible attorney’s docket report well in advance of the due date. Advance reminders shall include editable ‘standard’ timeline reminders with the ability to add custom date ranges per action/case.

e. Software must generate new distinct case/matter numbers sequentially for patent matters upon initial intake.

f. Software must organize and display patent cases in groupings permitting users to view relationships for related applications.

g. Software must identify discrepancies between data manually entered into the system and the USPTO records, at a minimum.

h. Software must include an upload document function and permit viewing of uploaded documents by users of the system.

i. Software must include a report function that facilitates the creation of standard and customized reports on data entered into the system by attorney, by office, by command, and overall DON.

j. Data fields must be searchable and include wildcard search functionality.

k. Software must possess a variety of user roles and permission levels.

l. Software must permit and support a local backup of data entered into the system to support differing office location requirements for the data in the system. Each OGC office must be able to download a data backup for their respective records. Administrators/reporting personnel must be able to do the same for the entire DON.

m. Software must identify the particular OGC office that is the custodian of the case.

n. Software must identify the particular OGC attorney that is responsible for the case.

o. Software must identify each inventor for every invention disclosure as well as the specific employer of each inventor.

p. Software must identify the primary technical branch within the command that generated the invention and the research division/group to which the inventor is assigned.

q. Software must permit customizable permission levels to limit access to matters to certain users, user groups, or all users/user groups by location. Permission levels must include a “no-delete” type, allowing users with this permissions level to create and edit (but not delete) records.

r. Software must have the flexibility for an administrator to add in-house rules to reflect DON OGC-specific workflow.

s. Software must include a separate (additional) case number field which will contain unique local historical case numbers for archival and cross referencing purposes of cases in existence prior to the new system implementation. This field must also be searchable using wildcards.

3.3 Agreements Tracking Requirements:

a. Software must track patent and trademark license agreements, and contractor reports of inventions.

b. Software must track agreement renewal dates, royalty due dates, proof of insurance renewals, payables and receivable expenses, at a minimum.

c. Software must permit financial information contained within the system to be exported to a spreadsheet to facilitate budgeting, reporting, and auditing.

d. Software must track royalty distributions.

e. Software must include a report function that facilitates the creation of standard and customized reports on data entered into the system by office, by command, and overall DON.

3.4 Trademark Docketing Requirements:

a. Software must perform trademark docketing based upon country laws to include, at a minimum, the USPTO rules and the Madrid Protocol. Country law and Madrid Protocol updates are to be provided on a regular basis.

b. Software must provide an electronic (emailed or other) copy of any USPTO Correspondence to an attorney and/or docketing staff member. The input of the office action into the system shall automatically generate an action due for the attorney in the system, including, but not limited to, due dates.

c. Software must support both ex parte and inter partes proceedings before the USPTO (e.g., oppositions and cancellations.) For inter partes matters, the system must generate all Trademark Trial and Appeal Board (TTAB) and statutory deadlines automatically. The system must also generate actions for party-driven actions, such as motions, pleadings, discovery requests, and the like.

d. Software must automatically generate a Statement of Use Action when a Notice of Allowance is received in Intent to Use applications, with appropriate reminders.

e. Software must generate registration maintenance due dates, with reminders, automatically on registration entry, including at least Section 8 and Section 15 requirements.

f. Software must generate a docket by attorney. Generated dockets must be viewable at the attorney level and at an office-wide level. The software must permit a customizable date range for viewing due dates.

g. Software must generate due diligence reminders automatically, including status checks after responses are filed.

h. Software must generate docket actions with appropriate advance reminders, so that response due dates appear on the responsible attorney’s docket report well in advance of the due date. Advance reminders shall include editable ‘standard’ timeline reminders with the ability to add custom date ranges per action/case.

i. Software must generate distinct docket/matter numbers sequentially for all OGC offices for trademark registration requests as they are received.

j. Software must include an upload document function (including images) and permit viewing of uploaded documents by users of the system.

k. Software must include a report function that facilitates the creation of standard and customized reports on trademark data entered into the system by attorney, by office, by command, and overall DON.

l. Software data fields must be searchable and include wildcard search functionality.

m. Software must possess a variety of user roles and permission levels. Permission levels must include a “no-delete” type, allowing users with this permissions level to create and edit (but not delete) records.

n. Software must permit and support a local backup of data entered into the system to support differing office location requirements for the data in the system. Each OGC office must be able to download a data backup for their respective office. Administrators/reporting personnel must be able to do the same for the entire DON.

4.0 Tasks, Activities, Deliverables, and Milestones (Work Breakdown Structure)

4.1 Phase I

a. The following Tasks, Activities, Deliverable, and/or Milestones are applicable to the Phase I.

1. Software, Software Documentation, and Software Maintenance

The contractor shall provide the Information Technology (IT) representative of the DON OGC the following:

(a) Most current and up to date software version of the executable software for the initial installation, configuration, and customization of the patent docketing and agreement tracking software (CDRL A001).

(b) All required software patches and country law updates to ensure the software solution is current and up to date upon final implementation of the patent docketing and agreement tracking software (CDRL A002).

(c) Most current and up to date software version of the software for the initial installation, configuration, and customization of the trademark docketing software (CDRL A003).

(d) All required software patches and country law updates to ensure the software solution is current and up to date upon final implementation of the trademark docketing software (CDRL A004).

(e) All applicable installation, operational, and maintenance manuals (CDRL A005) required to facilitate the base period tasks and activities.

2. Proof of Concept Testing

The Contractor shall advise and assist the IT representative of the DON OGC during the proof of concept testing.

3. Establishing Business Rules and Customization

The Contractor shall advise and assist the DON implementation team in selecting standard rules, customizing DON-specific rules, and creating both standard and customized report templates. The Contractor shall advise and assist in the configuration of user groups, user roles, and permissions.

4. Initial Installation, Configuration, and Customization

The Contractor shall advise and assist the IT representative of the DON OGC in the initial installation, configuration, and customization of the software solution. This includes advising and assisting with the single sign on with a Common Access Card (CAC) set up.

5. Final Testing and Final Software Configuration/Implementation

The Contractor shall advise and assist the IT representative of the DON OGC during the final testing and final configuration/implementation of the software solution.

6. Software and Seat Licenses

Software and Seat licenses required during the base period shall be the responsibility of the Contractor.

7. Training

The Contractor shall provide training and training materials (CDRL A006) for a minimum of eighty-eight (88) end users across at least twenty-four (24) locations upon the final configuration and implementation of the software solution.

8. Milestone Schedule

The Contractor shall provide a written plan within 10 business days after award (CDRL A007) which details the Contractor’s processes and plan for meeting the execution (go-live) timeline established below. The government shall have five (5) business days to review and approve the plan.

· Proof of concept testing shall be completed no later than PoP start plus 45 days.

· Establishment of business rules and customization shall be completed no later than PoP start plus 75 days.

· Installation, configuration, and customization of software shall be completed no later than PoP start plus 75 days.

· Final testing and Certification (as required) shall be completed no later than PoP start plus 110 days.

· Deployment of software to end users shall be completed no later than PoP start plus 120 days.

· End user training shall be completed no later than PoP start plus 30 days after award.

9. Place of Performance

Base period tasks and activities will be accomplished from within DON facilities located at Quantico, Virginia; Washington Navy Yard, Washington, DC; and Office of Naval Research, Arlington, VA. Due to security requirements, the Contractor and its personnel shall not be permitted remote access to the DON Network, Systems or Software in support of this SOW. Furthermore, the Contractor and its personnel shall not be permitted remote access to the IP System/Software or provided copies of DON’s IP Databases under this SOW.

· Software Installation shall be accomplished at Quantico, VA.

· All remaining base period tasks shall be accomplished at the Washington Navy Yard and the Office of Naval Research.

4.2 Phase II

a. The following Tasks, Activities, Deliverables, and/or Milestones are applicable to Phase II. The contractor shall provide continued maintenance, updates, and support of the delivered software solution and its interfaces to ensure full performance of the system.

1. Software Maintenance

The contractor shall provide the IT representative of the DON OGC the following:

a) Software updates as they are released to ensure the software remains current and up to date after the system goes live. (CDRL A008)

b) Periodic software patches required to ensure the system remains current and up to date after the system goes live. (CDRL A009)

c) Periodic country law updates required to ensure the system remains current and up to date after the system goes live. (CDRL A010)

d) Periodic updates to related operational manuals, user guides, training materials, and/or equivalent software related documentation to ensure system administrators’ and users’ knowledge and understanding of the systems functionality remain current and up to date after the system goes live (CDRL A011). The Contractor shall provide, at a minimum, periodic updates to related operational manuals, user guides, training materials, and/or other applicable software related documentation equivalent to that which is provided to its commercial customers.

2. Reviewing/Editing Business Rules and Customization

The Contractor shall advise and assist the DON maintenance team in reviewing/editing standard rules, customizing DON-specific rules, and creating both standard and customized report templates, upon request.

3. Help Desk Support

The contractor shall provide, at a minimum, “Help Desk” support for issues pertaining to normal system operations and functionality particularly in respect to installation, updates, and troubleshooting matters.

4. Department Wide License

The Contractor shall license the DON to utilize the final software configuration delivered. This Department-wide license provides flexibility to ONR in the number of DON geographic sites and the number of DON OGC professional users directly accessing and using the software. Also included in this Department-wide license arrangement is the use of the IT Management Software and/or its reporting features by any other DON OGC user or approved entity that might need to access the software solution for reporting, analysis, and/or any other purpose as required by law or regulation. (CDRL A012)

5. Place of Performance

Phase II tasks and activities will be accomplished from within DON facilities located at the Washington Navy Yard, Washington, DC, and Office of Naval Research, Arlington, VA. Due to security requirements, the Contractor and its personnel shall not be permitted remote access to the DON Network, Systems, or software in support of this SOW. Furthermore, the Contractor and its personnel shall not be permitted remote access to the software system or provided copies of DON’s databases under this SOW.

5.0 Post Award Planning, Execution, and Kick-Off Meeting

The Contractor shall participate in a Contract Kick-Off Meeting with ONR personnel and other Government representatives within twenty (20) business days after award to review and discuss contract administrative matters, security requirements, the milestone schedule, invoicing, and other applicable matters. The Government will hold this meeting at ONR Headquarters and coordinate an agenda with the Contractor.