20190102_AM_09.35_-_Q&As_for_Presolicitation_WG_JR_MTP_JT_comments_-_2018-12-21.pdf

Questions and Response for Presolicitation NIH-OD-OLAO-OA-(PLS)-2019

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 1 of 14

1. Does the Presolicitation posted as solicitation number NIHODOLAOOA(PLS)2019 on FBO contain requirements similar to an existing contract or will this be a new requirement?

Response: Yes, there are contracts in place that are expiring in late 2019. New awards will be issued for this recurring NIH requirement.

2. If possible, please provide the current contract number.

Response: Below is the list of law firms currently providing patent-legal services to the NIH technology transfer community under four NIH-wide Indefinite Delivery/Indefinite Quantity contracts:

Contract Number Contractor

Biotechnology HHSN263200900011I Klarquist Sparkman HHSN263200900007I Edwards Wildman Palmer HHSN263200900013I Sheridan Ross HHSN263200900006I Kilpatrick & Townsend HHSN263200900008I Leydig Voit & Mayer Chemistry HHSN263200900020I Klarquist Sparkman HHSN263200900021I Cantor Colburn HHSN263200900023I Leydig Voit & Mayer

MES

(Mechanical/Electrical/Software)

HHSN263200900026I Klarquist Sparkman HHSN263200900027I Polsinelli Shughart HHSN263200900028I Edwards Wildman Palmer Contested Proceedings HHSN263200900040I Foley and Lardner (Bio & MES)

HHSN263200900041I

Leydig Voit & Mayer (Bio and Chem)

HHSN263200900042I Kilpatrick Townsend (Bio and MES) HHSN263200900043I McAndrews Held & Malloy (Chem)

3. I think there may be some ambiguity in the Synopsis of the Pre-Solicitation Notice you posted on

November 15. The Synopsis seems to suggest that only small entities should respond to the Pre- Solicitation Notice. See the following text from the Synopsis:

Whether you are a small business, HUBZone small businesses; service-disabled, veteran-owned small businesses; 8(a) small businesses; veteran-owned small businesses; woman-owned small businesses; or small disadvantaged businesses.

Size classification relative to the North American Industry Classification System (NAICS) code for the proposed acquisition.

Your comments and questions to this special notice will assist the Government in determining the appropriate acquisition method, including whether a set-aside is possible. An organization

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 2 of 14

(law firm) that is not considered a small business under NAICS code 541110-Office of Lawyers should not submit a response to this notice.

I am confident that you want questions from firms that do not qualify as a small business, but you may want to clarify the Synopsis in that regard.

Response: It is the policy of the Government to provide maximum practicable opportunities in its acquisitions to small business, veteran-owned small business, service-disabled veteran-owned small business, HUBZone small business, small disadvantaged business, and women-owned small business concerns. Such concerns must also have the maximum practicable opportunity to participate as subcontractors in the contracts awarded by any executive agency, consistent with efficient contract performance. Therefore, while the notice was directed at small business concerns, regardless of law firm size, the Government will allow an opportunity for small and large firms to submit questions and comments when the final RFP is posted in FedBizOpps.

4. Are small businesses welcome to make an Offer to the NIH solicitation?

Response: Regardless of law firm size, the Government invites all capable law firms with expertise in patent prosecutions in the areas of Biotechnology, Chemistry, Mechanical Engineering, and Software to submit a proposal.

5. For national stage applications outside the US, we have preferred foreign law firms in each of the foreign jurisdictions, will we need approval for each foreign law firm?

Response: Yes, please provide a list of preferred foreign law firms with the Business Proposal.

The use of subcontracts and/or foreign law firms will be addressed at the task order level.

Are these considered our sub-contractors, and should they be listed in the Offer?

Response: Yes, see response above.

6. Is there a protocol or requirement regarding a firm’s data security procedures? For example, our network utilizes a Windows client-server domain model infrastructure, a hybrid backup with offsite storage, a Managed UTM Firewall and all remote users utilize 256bit encryption.

Symantec Antivirus Endpoint is installed on all workstations and servers locally and all systems are monitored remotely. Is this acceptable?

Response: There will be no direct connection between NIH systems and law firm systems, so there is no technical requirement. Law firms will submit documents through an NIH portal, which is not connected in any way to outside networks. The only thing we recommend is that they do not send us virus infected documents, since those will be rejected based on our server scans.

7. Would you be able to tell me if there is an incumbent contractor for this requirement? If so, could you please provide the contractor name and the contract number that was awarded?

Response: See response to question 2.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 3 of 14

8. A number of technical areas are mentioned in the pre-solicitation notice and were mentioned earlier. Should prospective bidders plan to focus on only one of these areas in their technical/management proposal?

Response: Capable law firms can propose to one or more technical areas. Capable laws firms shall submit a separate proposal for each of the one or more technical areas that match their competency.

9. The pre-solicitation notice states that NIH expects to file 200-300 patent applications per year and that an active prosecution docket of more than 2,500 cases exists. Will the award be for cases to be filed, or will it include prosecution of already-filed cases?

Response: The awards will be for both new cases to be filed and for ongoing prosecution of patent applications filed prior to the award.

10. Other than costs, on what criteria will perspective bidders be judged?

Response: Please review the Technical Evaluation Criteria in Section M of the RFP.

11. Will prospective bidders be judged based on a certain capacity to file a number of cases?

12. The Business Proposal Instructions (see page 66 of 76) require large business concerns to submit a small business subcontracting plan.

Response: Yes, large business concerns shall submit a small business utilization subcontracting plan. See the instructions on the template and FAR 19.704 -- Subcontracting Plan Requirements.

13. Are large entity contractors obligated to subcontract, or can they perform all work in-house?

Response: Not obligated but encouraged. Offerors are responsible for proposing a business strategy that optimizes the use of small business for work that is not done in-house.

14. Could you clarify whether small business subcontracting is only required for large entities if work is actually to be subcontracted?

Response: Yes, a small business subcontracting plan is required from large entities. See the instructions on the template and FAR 19.704 -- Subcontracting Plan Requirements.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 4 of 14

15. Must the plan be submitted as part of the Business Proposal in response to the RFP, or is it to be submitted and negotiated with the selected contractors after the contract is awarded and the dollar amounts of the contract award are known?

Response: The Small Business Subcontracting Plan Template is submitted with the Business Proposal.

16. And since the amount of work to be awarded to successful contractors under the Indefinite Delivery/Indefinite Quantity contract cannot be known, it does not seem possible to set specific dollar amounts to be awarded to each of the designated types of small business concerns (see page 67 or 76 under d.2).

Response: The Government’s intent is to negotiate a schedule of fixed hourly rates per year to be utilized by the Contracting Officers issuing task order awards. There will be an overall ordering minimum and maximum for each category. The minimum and maximum are addressed under Article B.3. PRICES/COSTS.

17. Section L.2.c.3 (page 63 of 76) states: “The Offeror shall provide statistics for the past (3) years on the number of provisional and non-provisional domestic and foreign patent applications drafted, including PCT applications, and prosecuted by the proposed Personnel in the relevant Technology Category as well as the approximate percentage of cases allowed from those non-provisional patent applications drafted by each of the proposed Personnel.”

The life cycle of a patent application (filing to issuance) in the relevant Technology Category is typically more than three years. Therefore, the number of patent applications that were both drafted and prosecuted to allowance in the past three years will be much lower than the number of patent applications drafted and ultimately prosecuted to allowance. It may be more relevant to ask for the number of patent applications drafted by the proposed Personnel in the relevant Technology Category in the past three years, and the number of patent applications prosecuted to allowance by the proposed Personnel in the relevant Technology Category in the past three years. For example, “The Offeror shall provide statistics for the past (3) years on the number of provisional and non-provisional domestic and foreign patent applications, including PCT applications, drafted by the proposed Personnel in the relevant Technology Category, as well as the number of non-provisional domestic and foreign patent applications prosecuted to allowance by the proposed Personnel in the relevant Technology Category.” Alternatively, if you want statistics for a meaningful allowance rate, it would be best to exclude patent applications filed in the last three years because a very large percentage of patent applications filed within the last three years will not yet have reached allowance and issuance.

Response: The RFP will be revised to read as follows:

“The Offeror shall provide statistics for the past (3) years on the number of provisional and non-provisional domestic and foreign patent applications, including PCT applications, prosecuted by the proposed Personnel in the relevant Technology Category. Of those prosecuted foreign and domestic applications, the Offeror shall indicate how many of them were prosecuted to allowance. Of those allowed applications, the Offeror shall indicate how many of those patent applications were drafted by the proposed Personnel.”

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 5 of 14

18. Section L.2.b.1.b.1(i) (page 62 of 76) requests the “number of first office action interviews with

Examiners and number of subsequent interviews with”

Are you asking for statistics on the number of interviews with an examiner after a first non-Final Office action in the prosecution of a patent application, as well as the number of subsequent interviews with the examiner in the course of that patent application, or does the text ask for something more specific, such as statistics on the number of patent applications filed with a request under the USPTO’s “First Action Interview (FIA) Pilot Program” as well as the number of number of subsequent interviews with the examiner in the course of that patent application?

“(i) total number of interviews with examiners and the number of these interviews to discuss the first substantive office action (including interviews under the USPTO’s “First Action Interview (FIA) Pilot Program) with the examiner.”

19. Section L.2.b.1.b.1(j) (page 62 of 76) requests: “number of petitions granted for accelerated examination by the USPTO”

There are many different “accelerated examination” procedures offered by the USPTO, not all of which require a petition. Please clarify the particular type (or types) of accelerated examination procedure that this text refers to. For example, “the number of Requests for Track I Prioritized Examination granted by the USPTO.”

“(j) number of U.S. patent applications prosecuted under a USPTO accelerated prosecution program”

20. Page 57 of 76 states that the Technical Proposal may be a maximum of 60 pages. Pages 62-65 provide details regarding the page limits for each section of the Technical Proposal: a.

Introduction (2 pages), b. Statement of Work (30 pages), c. Personnel (15 pages), d. Corporate Experience (5 pages), e. Appendices (no page limit designated). The sum of the page limits of each section is 52 pages (2+30+15+5). Are the Appendices included in the 60-page limit? If so, it does not seem possible to submit the voluminous documents requested for the Appendix in 8 pages. If you do not intend to include the Appendices in the 60-page limit, why is there a discrepancy of 8 pages between the 60-page overall page limit and the 52 page-limit of the sections that comprise the Technical Proposal? Does the extra eight pages include the cover page and table of contents? You may want to clarify what the additional 8 pages should be.

Response: The page maximum is 60. Limitations for each section will be removed. The table of contents and Appendices are not included in the count.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 6 of 14

21. Page 61 of the draft RFP requests past performance information, specifically three contracts completed during the past 5 years and three contracts currently being performed. Does “three contracts completed” include a contract that expired/ended during the last 5 years, even if a new contract was subsequently awarded to us by the same client? Also, if a contract with our firm expired in 2016 and a new contract was awarded to us by the same client, could both contracts be cited in our response to your RFP (the expired contract for past performance and the new contract for current performance)?

Response: Yes, you should list three (3) completed contracts and three (3) new contracts.

22. In Article B.6, Option Pricing Table, there are two rows for the billing rates of Junior Associates, two rows for Patent Agents and two rows for Case Managers. We recognize that the number of rows in the pricing table corresponds to the minimum number of personnel required under the contract. However, the format of the Table suggests that there will be different rates for different Junior Associates, Patent Agent and Case Managers. Is that what you intend? If not, would it be clearer to list just a single row each for the billing rates of Junior Associates, Patent Agents and Case Managers? In other words, six rows of rates would be condensed to three rows of rates.

Response: The Government understands that law firm employees may be earning at a different rate. The purpose of the table is to further emphasize the minimum need of the Government.

23. The description of the Appendices spanning pages 64-65 of 76 states that no more than 2 exemplary patents or published applications, not more than 3 Office action responses, not more than 2 filings from contentious proceedings, not more than 3 opinions (optional), not more than two examples of market analyses, and three references from former clients can be submitted in the Appendices.

Are these number limits intended to apply to each of the Essential Personnel, or are they overall limits of numbers of each types of sample that can be submitted for the entire firm? We suggest the RFP clarify whether these limits apply to each individual or the overall proposal.

Since some of these documents may be voluminous and not accessible by hyperlink, you may want to clarify that the Appendix is not counted in the overall page count of the Technical Proposal (if that is what you intend).

Response: The material requested in the Appendices of the Technical Proposal are firm-wide limits, but the material must have been prepared by Personnel listed in the proposal. The Appendices do not count towards the overall page counts. Offerors are encouraged to provide examples that reflect the writing and legal argument skills of as many Essential Personnel as possible.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 7 of 14

24. Although, we do not qualify for the first phase of the project (since we are a larger law firm), I wanted to touch base with you to see if we can receive the formal RFP once it is issued. If so, when will it be posted?

Response: The Government intends to post the final RFP in www.fbo.gov before the end of December 2018. Regardless of law firm size, the Government invites capable law firms with expertise in patent prosecutions in the areas of Biotechnology, Chemistry, Mechanical Engineering, and Software to submit a proposal.

25. In the past, NIH RFPs have included requirement for a most favored nation type clause. Is this still a requirement and if so, would it be problematic if not met?

Response: Thank you. The most favored nation type clause will not be incorporated.

26. What do you consider a Junior Associate versus a Senior Associate?

Response: This is defined under Labor Mix in the Statement of Work.

27. At pages 7-10 and Attachment 1, page 17 of the DRAFT RFP, a specified minimum labor mix for a specified Technology Area is provided. For instance, at page 7 of the DRAFT RFP, for Biotechnology, a minimum labor mix is specified of a total of nine persons that includes two Partners, one Senior Associate, two Junior Associates, two Patent Agents and two Case Managers.

We have additional well-qualified practitioners in each of those labor categories, for instance, more than two of each of Partners, Junior Associates and Patent Agents and more than one Senior Associate. In our response to the RFP, should we include descriptions (including resumes and other information) of those additional well-qualified persons so that our total labor mix in a particular Technology Category would exceed the minimum labor mix? Or should we limit our proposed Personnel to the specified minimum labor mix of a given Technology Category?

Response: All individuals that will be involved in satisfying the requirements under the SOW should be listed as Personnel.

28. Is it acceptable to have the same person from our organization be listed as a member of the labor mix in the proposals for more than one Technology Category? For instance, can a same one person be listed in the labor mix as a Partner for both the proposal for Biotechnology and Chemistry Technology Areas, and same one person be listed in the labor mix as a Patent Agent for both the proposal for Biotechnology and Chemistry Technology Areas?

Response: Yes, individuals may be listed as Personnel in proposals for more than one Technical Category. In each case the proposal should indicate what education/experience the person has that is relevant to the technology area addressed in each proposal.

29. At page 61 of the DRAFT RFP, Past Performance Information is requested. We ask that you confirm that a total of six (6) contracts are requested to be disclosed for such Past Performance Information, i.e. three contact that were completed during the past five years and an additional and distinct three contracts that are currently being performed.

http://www.fbo.gov/

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 8 of 14

Response: Confirmed.

30. Again, with respect to the Past Performance Information at page 61 of the DRAFT RFP, we ask what would constitute “completion” of a contract within the past five years. In particular, a number of practitioners worked on a relevant contract while associated with another organization prior to joining.

Response: Contracts completed by Personnel at organizations other than the Offeror should not be submitted as Past Performance Information.

31. Would work on such contract at another organization preceding current organization constitute a “completed contract” for those people that have joined our organization and thus be appropriately identified under the requested Past Performance Information?

Response: See answer to question 30.

32. Again, with respect to the Past Performance Information at page 61 of the DRAFT RFP, we ask what would constitute “completion” of a contract within the past five years. In particular, many relevant client relationships are ongoing (in many cases for many years) without an established endpoint or completion date.

In such common circumstances, what would be properly considered a “completed contract” to be listed as a response?

Response: For the purposes of this requirement, a “completed contract” is a completed period of performance in which there is a performance period assessment at completion. Please refer to FAR Subpart 42.1501.

33. Again, with respect to the Past Performance Information at page 61 of the DRAFT RFP, it is stated to “[i]nclude the following information of each contract or subcontract listed: …2.

Contract Number … 4. Total Contract Value …. For contracts with commercial concerns (which we understand “commercial concerns” would include non-governmental companies and/or academic institutions), such information as Contract Type, Total Contract Value and the like typically does not exist.

Please advise how we can be fully responsive upon listing such a non-governmental corporate or academic institution contract where various information such as Contract Number and Contract Value does not exist.

Response: For contracts in which a Contract Number or Contract Value does not exist, please indicate “Not Applicable” or include identifying information.

34. Again, with respect to the Past Performance Information at page 61 of the DRAFT RFP, it is stated that “Contracts listed may include those entered in by …commercial concerns.” Please confirm that such reference to “commercial concerns” would include non-governmental companies and/or academic institutions.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 9 of 14

Response: Yes.

35. At page 64 of the DRAFT RFP, Appendices are discussed, particularly to provide “Not more than two (2) exemplary issued patents or published patent applications….” At page 63 of the DRAFT RFP, it is stated: “The Offeror shall provide … writing samples for each of their proposed Personnel for the various labor categories.”

As an Appendix, should we provide two (2) exemplary issued patents or published applications for each proposed Personnel of the proposed labor mix for a Technology Area (i.e. 2 for each Partner, Senior Associate, Junior Associate, Patent Agents, a total of 14 for Biotechnology)? We understand the other requested items such as 3 exemplary substantive filing office action responses, 2 exemplary substantive filing related to contentious proceeding are the total number of the entire labor mix team, not per person, please let us know if that understanding is not correct. Or should full copies of hyperlinks to copies of one or two or more “writing samples” accompany or be part of the resume of each proposed Personnel separate and in addition to from what is provided in the Appendices?

Response: See response to question 23. The writing samples for each of the proposed Personnel should be included as part of the resume for each proposed personnel.

36. At page 65 of the DRAFT RFP, Appendices are discussed, including to provide “d. Not more than three opinions (optional” …. and …. e. Two (2) examples of market analyses …” These two items – opinions and market analyses – in substantially all instances are confidential, non-public documents. We thus ask if these two items – opinions and market analyses – are properly not requested even on an optional basis for inclusion as Appendix materials.

Response: The respondents are encouraged but not required to submit examples of opinions and market analyses. The identity of the client for which the opinion or market analysis was prepared can be redacted.

37. We noticed that the labor mix requirements do not include roles for technical specialist.

Technical specialist is a growing trend in the industry and allow law firms to reduce the average billing rate for the client. For example, our firm uses many PhDs to assist attorneys in our work.

We have had great success with this model and have performed independent quality analysis of our work which demonstrates the quality of the model. Is there a particular reason why the NIH does not account for technical specialist in the labor mix?

Response: It is the responsibility of each offeror to submit a proposal that demonstrates the law firm’s capability and overall strategy for fulfilling the requirement. The labor mix provided in the RFP is a suggested labor mix based on historical information.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 10 of 14

38. Similarly, we noticed that the labor mix requirements do not include any patent personnel with less than three years of USPTO experience. Does the NIH allow for junior personnel to work on its patent matters so that they may develop the requisite expertise?

Response: See response to 37.

39. Does the term “Contractor” in the draft proposal refer to a single law firm or can more than one law firm join forces to submit a response to the proposal?

Response: Contractor is a single law firm. If more than one law form joins forces, then one would be the primary contractor and the others would be “subcontractors”. The primary contractor shall be ultimately responsible for fulfilling the statement of work.

40. Will any exceptions to the Minimum Labor Mix be made for a Contractor who satisfies all of the other criteria?

Response: See response to 37.

41. If approved for a particular technology group, how many applications/projects can a Contractor expect to receive during the contract period?

Response: The Government cannot guarantee work for contractor.

42. Regarding the technology categories for patent-related legal services, we recommend that offerors be required to submit issued patent samples with evidence that the patent attorneys of the offeror law firm prepared and prosecuted the patents to issuance. Such evidence may be in the form of a signed transmittal, response, or other document from the US PTO file wrapper.

Response: Thank you for your comment.

43. We recommend that offerors be required to submit data to substantiate their workload capacity in the form of issued patent or published application data that is publicly available.

Response: Thank you for your comment. It is the responsibly of potential offerors to demonstrate capability.

44. Regarding the small business classification, for a law firm, the 500 employees and $11 million marks generally indicate a larger operation. We recommend consideration of law firms on the smaller end of the scale who can provide evidence of the required workload capacity. Such evidence can be in the form of issued patents drafted by the law firm, by year, with an average number of full-time equivalent patent attorneys in the same years. Or another measure of efficiency and workflow management.

Response: Thank you for your comment. The requirement will be posted Full and Open to all business concerns. Therefore, regardless of law firm size, it is the responsibly of potential offerors to propose a business strategy and demonstrate capability.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 11 of 14

45. We recommend that offerors be requested to provide at least three distinctives about their approach to invention review, patent preparation and prosecution.

Response: Thank you for your comment. It is the responsibly of potential offerors to demonstrate capability.

46. Regarding Article B.2 of the Draft RFP, we understand that each technology category is essentially treated as a separate proposal. We will have patent attorneys who are able to be named and identified for more than one technology category, please confirm that one attorney may be named in more than one proposal.

Response: See response to 28.

47. What is the rubric used to determine an appropriate technology background for each category?

48. Will offerors have the opportunity to be interviewed in person, by telephone or video conference by the contracting officer?

Response: The Government intends to schedule a pre-proposal conference after a round of written questions and answers. The date and time will be posted in FedBizOpps via an official amendment to the final RFP.

49. Page 4 of the draft RFP indicates approximately nine (9) contracts will be awarded for Biotechnology, seven (7) contracts for Chemistry, four (4) contracts for Mechanical Engineering, and two (2) contracts for Software, for a total of twenty-two (22) contracts.

Our question is, is it possible for there to be overlap in the firms awarded contracts in different fields, or will twenty-two (22) separate firms be awarded twenty-two (22) distinct contracts?

Response: Yes, a capable law firm may be selected to compete for services under multiple categories. The language in the RFP will be revised to further clarify the Government’s intent.

“In response to this RFP, The Government intends to award four (4) master ID/IQ contracts for patent level services; one (1) for Biotechnology; one (1) for Chemistry; one (1) for Mechanical Engineering, and; one (1) for Software. Capable law firms (contractors) selected to provide patent-legal services under any of the four technology categories and via this RFP, will compete for task order awards under the designated category or categories. The Government intends to select approximately nine (9) capable law firms in the area of Biotechnology; approximately seven (7) capable law firms in the area of Chemistry;

approximately four (4) capable law firms in the area of Mechanical Engineering, and;

approximately two (2) capable law firms in the area of Software to compete for task order awards within the designated technology category.”

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 12 of 14

50. Page 5 of the draft RFP lists the minimum and maximum amounts to be awarded for successful performance of the contract in each of the four (4) designated technical areas.

Are these minimum and maximum amounts annual minimum and maximum amounts, or are they the minimum and maximum amounts to be awarded over the lifespan of each contract?

Response: The minimum and maximum amounts are over the lifespan of each contract.

51. In the "Labor Categories" mentioned in the tables appearing at pages 7-9 of the draft RFP, to be awarded a contract, is it necessary to have personnel in each listed Labor Category?

Response: Yes.

Similarly, should foreign associates used to assist with foreign filings be considered for the "Subcontracts" category?

52. At page 17 of the draft RFP, for the "Requesting Task Order Quotations" section, is there a minimum or maximum number of Contractors that will receive each Task Order Request for Quotation (TORFQ)?

Response: No.

Will each TORFQ be issued to every Contractor?

Response: The Government will follow ordering procedures pursuant to FAR 16.505(b).

53. As part of the "Competitive Ordering Process" detailed at pages 17-18 of the draft RFP, will

Contractors be given the opportunity to ask questions regarding each proposed Task Order requirement before submitting their responses?

Response: The Contracting Officer at the Task Order level will make that determination.

54. Regarding the "Letters of Intent to Propose" listed on page 57 of the draft RFP, is this a required submission to be considered for an award and, if so, does submission of such a Letter of Intent bind the firm to submit a formal Proposal?

Response: No, to both questions.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 13 of 14

55. For the "Past Performance Information" discussed at page 61 of the draft RFP, it is indicated a "list of 3 contracts completed during the past Five (5) years and the three (3) contracts currently being performed" should be listed. Is it required for Offeror to list six (6) total contracts to be considered for an award, even if there are fewer than six (6) total contracts meeting the listed requirements?

Response: For Past Performance Information, please refer to FAR Subpart 42.15. A “complete” contract can be a “complete” period of performance in which a contractor’s assessment performance report is available for that period of performance.

In addition, can contracts with foreign entities and/or universities be included in this list and meet the documented requirements?

56. In the "Statement of Work" section enumerated at page 62 of the draft RFP, for the number of "contentious proceedings" making up point (n), should Offeror include proceedings where all documents were prepared but were never submitted due to a settlement, or any contentious proceedings that did not reach a final resolution due to a settlement?

Response: The Offeror should only include contentious proceedings where all of the documents were submitted to a patent office.

57. In the "Resumes" section enumerated at page 63 of the draft RFP, do Original Certificates of

Good Standing need to be provided? Do such Certificates need to be provided from every bar for which each listed individual is a member?

Response: Yes, a formal Certificate of Good Standing is required.

58. At page 71 of the draft RFP, it is mentioned that a "copy of the organization's most recent annual report must be submitted as part of the business proposal." Does this requirement apply to private companies and, if so, does the annual report need to be an audited annual report?

Response: Yes, the Government is requiring audited annual report.

59. Does the contract have 1-year terms, extendable up to 10 years at Government option?

Response: Yes, please review Article F.1. of the draft RFP.

20190102 AM 09.35 - Q&As for Presolicitation WG JR MTP JT comments - 2018-12-21.docx Page 14 of 14

60. Could an approximate breakdown/technology grouping for the 200-300 application per year be given?

Response: No.

61. Can contractor obtain third party services for any required patent searches?

Response: No

62. How were the minimum labor mixes for Chemistry, Mechanical Engineering, and

Software obtained?

Response: Based on historical information.

63. Historically, what have been the approximate annual travels costs for similar NIH contracts?

Response: Travel associated with similar NIH contracts is rare and expenses are typically minimal. Travel expenses will be addressed and negotiated by the Contracting Officer(s) at the task order level.

64. Will contractor be responsible for foreign patent filings?

Response: Yes

65. If the answer to question above is “yes”, may contractor designate foreign patent counsel?

66. Has any NIH outside patent counsel been involved in AIA proceedings, such as inter partes review or post-grant review?

Response: NIH has had one post-grant AIA proceeding.

67. What entity or department of NIH processes invoices under the contract?

Response: Office of Financial Management.

68. Will contactor have access to an NIH USPTO Deposit Account in order to pay U.S.

Government Fees?

Response: No