Requests for Clarifications.pdf

Requests for Clarifications:

1) Does the Agency have an incumbent?

Response: No

2) If so, can the Agency please provide the contract number?

Response: N/A

3) Does the Agency have a backlog? If so, can the Agency please provide the amount of matters in the queue?

Response: The BPA addresses new invention disclosures approved for patent filing, not mitigate existing backlogs. It is possible that the BPA may at some point be used for this purpose if organizational changes dictate such a pivot.

4) Should the price quoted for preparation of the application include the USPTO filing fee and drawings?

Response: The quote should include drawings since the drawings are part of the application and expressly mentioned in the SOW. The quote does NOT include USPTO filing fee, since the Warfare Centers will do the filing. We simply need to receive the finished product and will file/pay filing fee ourselves.

5) Section 2.1 Related Art Search Report

5.1. What is the expected volume of Related Art Search Report requests monthly?

Response: There is no monthly forecast of volume. The number of Related Art Search Reports will be commensurate with the number of applications drafted. A single report for a single application. Patent application drafting requests will be provided as needed by NAVSEA and/or the Patent Counsel.

5.2. Can NAVSEA provide an estimated annual forecast of Related Art Search Report request volume, including the approximate number of requests expected per year?

Response: There is no annual forecast. Patent application drafting requests will be provided as needed by NAVSEA and/or the Patent Counsel. The number of Related Art Search Reports will be commensurate with the number of applications drafted. A single report for a single application. Patent application drafting requests will be provided as needed by NAVSEA and/or the Patent Counsel.

5.3. What information will be included in each invention disclosure?

Response: Each invention disclosure will include a description of the invention. The invention disclosure may also include drawings, specifications, schematics, slide decks, etc.

5.4. Will Patent Counsel and/or inventors be available to answer questions that may arise based on relevant prior art references returned in the search?

Response: Patent Counsel will be available to answer any questions. Inventors may be available as needed, on a case-by-case basis, and at the discretion of the Patent Counsel.

5.5. Are searches of specific databases required or recommended for patent and non-patent literature?

Response: There is no required database to search prior art. Recommend use of the USPTO's patent public search. Other publicly accessible (e.g., Google Patents) or private databases are acceptable as long as there is no tracking or recording of the search history by a third party.

5.6. Will the Contractor be required to search prior art references in foreign languages and provide translations?

Response: The Contractor should search foreign prior art references to the extent practicable. A machine language translation will suffice. An official translation is not required.

5.7. Is the 10 to 14 business day performance timeline extendable in the event the search results are complex, such as a crowded art space or a large patent family?

Response: The 10-14 business day of performance to conduct a search for a single application is not extendable.

6) Section 2.2 Patent Application

6.1. Will the Contractor have prepared a Related Art Search Report for each patent application that Patent Counsel requests Contractor's drafting services?

Response: Yes.

6.2. Will additional information be provided to the Contractor at the time of the request for patent application drafting?

Response: No. The invention disclosure will be the basis for both the Related Art Search Report and the Patent Application. At the discretion of the Patent Counsel, additional information may be provided, on a case-by-case basis, and only to clarify or further explain the contents of the invention disclosure.

6.3. What is the expected volume of patent application draft requests monthly?

Response: There is no monthly forecast of volume. Patent application drafting requests will be provided as needed by NAVSEA and/or the Patent Counsel.

6.4. Can NAVSEA provide an annual forecast of patent application drafting requests, including the approximate number expected per year?

Response: There is no annual forecast. Patent application drafting requests will be provided as needed by NAVSEA and/or the Patent Counsel.

6.5. Will requests and other communications from NAVSEA be provided utilizing a particular communication platform that the law firm must obtain or license?

Response: Communications will be via email. All email communications must be encrypted. If necessary, files may be exchanged using a DOW compliant tool, such as DOD SAFE.

6.6. In what file format will drawings for each invention disclosure be provided in?

Response: There is no specific format for drawings.

6.7. What is the expected number of figures to be included in each draft patent application?

Response: There is no specific number of figures to be provided with an invention disclosure.

This will be at the discretion of the inventor(s).

6.8. Will drafting requests be made electronically, or will there be any physical files provided?

Response: Communications and any documentation will be provided electronically.

6.9. If Patent Counsel decides to proceed with drafting a patent application, what is the expected completion time for the first draft of the application?

Response: The expected completion for a first draft is three (3) weeks. This may be extended by the Patent Counsel based on an articulated need, which may include complexity of the technology.

6.10. After receiving comments on the first draft of the patent application, what is the expected completion time for preparing the revised draft patent application?

Response: After completion of the first draft, the expected completion time for the revised draft is two (2) weeks. This may be extended by the Patent Counsel based on an articulated need, which may include nature of the requested changes to the first draft.

6.11. If issues related to the contents of the patent application arise during drafting, such as inventorship, will Contractor or Patent Counsel handle such issues?

Response: Any issues pertaining to inventorship and any other similar topics will be handled internally by Patent Counsel and any other relevant staff.

7) Section 2.3.b Additional Instructions

7.1. Does NAVSEA have specific patent practices that can be provided?

Response: Patent Counsel will provide any insights on specific patent practices. This may include the exact language in the "Statement of Government Interest" of the patent application.

8) Pricing

8.1. Can the Government clarify the pricing for this BPA? On page 3 of the solicitation, the pricing structure only provides two items (CLINS: 0001 and 0002); however, this would be a 5-year contract.

Response: The Solicitation is requesting pricing on CLIN 0001 and CLIN 0002 in order to evaluate quotes/offers using LPTA (Lowest Price Technically Acceptable) evaluation factors, but the awarded BPAs will be unpriced. During the 5-year BPA Ordering period, when an Order/service (BPA Call) is required, the BPA holders (awardees) will quote on the required service(s) specified on the provided Statement of Work (SOW). Whoever provides the lowest price technically acceptable quote will be awarded the BPA Call.

8.2. Can the Government provide a pricing sheet?

Response: The government does not have pricing sheet for these services. Please see response to Question 8.1.

8.3. Can this be priced hourly?

Response: The quotes we will require will be for the entire cost of service, not for the hourly cost.

9) Regarding Statement of Work section 2.1 (Related Art Search Report) - is the use of U.S.

third-party search agents to perform the substantive searching acceptable? We typically hire a U.S.-based search firm as they can perform a thorough confidential search for a fraction of what an attorney would charge and the results are superior. My plan would be to engage a search agent for the searches and then digest the search results and prepare the required "Related Art Search Reports."

Response: A contractor may obtain the services of a subcontractor to perform search functions only if the subcontractor meets the same Department of War (DoW) security requirements as the contractor as outlined in the BPA in providing said services - particularly with the handling of DoW technical data. The identity of the subcontractor must be communicated to Patent Counsel.

The subcontractor must be a U.S. entity.

10) Is the use of a closed-system AI model permitted in connection with Section 2.2 (Patent Application)? We also routinely use a closed-model AI system to prepare certain patent application language, review patent application drafts for errors, confirm claim scopes, etc. This not only saves time but also results in better patent applications.

Response: Uploading Navy technical data into a private AI-model, even if in a closed environment, implicates additional IT requirements and safeguards that are beyond the scope of this BPA. At this time, AI-models cannot be used to prepare patent applications. This may be revisited in the future.

11) In the short budget table there are items 0001 and 0002, with Quantity listed as "1" and Unit listed as "Lot." I assume "Unit Price" is the individual cost for the tasks to be performed in Sections 2.1 and 2.2 (please let me know if I am incorrect there), but how do we calculate the "Amount" column without knowing how many tasks will be performed?

Response: CLIN 0001 is for the cost of a 'Standard" Related Art Search Report" as outlined in

2.1 of the SOW. CLIN 0002 is for the cost of a "standard" patent service as outlined in the SOW

2.2. The quote should include drawings since the drawings are part of the application and expressly mentioned in the SOW. The quote does NOT include USPTO filing fee, since the Warfare Centers will do the filing. We simply need to receive the finished product and will file/pay filing fee ourselves. I understand that some applications are complex, but those are the exception to the rule. Please see response to 8.1.