Patent_Services_RFI_1.pdf

UNITED STATES GEOLOGICAL SURVEY (USGS)

REQUEST FOR INFORMATION/SOURCES SOUGHT FOR PATENT SERVICES

General Information

Solicitation Number: DOIGFBO240066

Release of RFI Date: 08/01/2024 Required Responses Due Date: 08/08/2024

Set Aside: TBD

NAICS Code: 541199 – All Other Legal Services

This is a Request for Information (RFI) (Sources Sought) only and is not a solicitation for a contract or grant award. This RFI notice is for information purposes only, is not a request for proposals, and does not obligate the Government in any way. A request for proposals may or may not result from this request. The Government will not reimburse the respondents for any costs associated with the information submitted in response to this request. The Government will treat each submission in confidence.

SOURCES SOUGHT: Responses from large and small businesses are encouraged, however, in accordance with FAR 19.5, set asides for small business; the government will review the information in this announcement to determine the type of set aside (if any) for this requirement.

Provide the size status and socioeconomic designation (e.g. hubzone, 8(a), WOSB, SDVOSB) of your company based on NAICS 541199. Please identify your socioeconomic business status and if you are on the GSA schedule.

All questions about the RFI shall be directed by email to the point of contact listed below.

Responses shall be sent via electronic mail (email) to:

Patrick Anderson Contract Specialist panderson@usgs.gov

Background

The US Geological Survey (USGS) has the need for the services of patent attorneys with knowledge and experience of Federal statutes and regulations governing Federal Technology Transfer, the evaluation of invention disclosures, and the preparation, prosecution and maintenance of patents. A key technology transfer function is the assessment of the patentability and commercial viability of USGS owned employee inventions and the utility of the inventions to the Federal Government and the American public. If an invention has potential commercial viability mailto:panderson@usgs.gov and utility to the Federal Government or American public, a patent is pursued.

Purpose and Objectives

The USGS is seeking information from companies who can responsively address all the following anticipated requirements. USGS has ownership interest in inventions discovered by USGS employees. These inventions require professional expertise to file and prosecute patent applications. Patent protection is critical for intellectual property protection, and for the subsequent licensing of technology. This contract would provide the USGS with the patent legal services necessary to protect USGS owned intellectual property through patent filing and prosecution.

These services will assist the USGS in developing and commercializing products that will ultimately be made available to the Federal Government and the public. All patent prosecution services will be conducted on a task order basis.

Information Requested

Interested parties should submit a written response which addresses the following topics:

1. Organization information: Organization name and address, point of contact, email address, phone number, size of organization.

2. Capabilities: Provide a brief description of your capabilities and prior experience relevant to this RFI to provide the required technical services.

3. Price Estimate: Provide a rough order of magnitude (ROM) estimate of the time required, and subsequent cost, for a patent application with twenty claims and one embodiment.

Technical services (tasks) listed below.

a) Technical Requirements.

Practitioners who are allowed to represent clients in the United States must demonstrate their competence by passing a licensing examination. In the United States, patent agents and attorneys, in addition to meeting competency requirements are subject to ethical standards established by the USPTO. CONTRACTOR attorneys shall have a thorough understanding of U.S. patent prosecution and be in good standing with their respective bar licensing organization. The following list of tasks is provided as a minimum, non-exhaustive, description of the kinds of patent prosecution tasks that will be required of CONTRACTOR attorneys. If CONTARCTOR attorneys represent clients adverse to the USGS, there may be a potential for professional conflict of interest.

b) Tasks.

Filing Patent Applications.

Perform all necessary and appropriate services in connection with the prosecution of patent applications filed in the US Patent and Trademark Office (USPTO) as well as Patent Cooperation Treaty (PCT applications). Domestic patent matters shall be handled in compliance with Title 35, US Code and with Volume 37, Code of Federal Regulation and any other applicable laws and legal authorities. The preparation and filing of provisional or utility patent applications shall be based on invention disclosures in light of prior art and any contemplated prosecution strategy. The development of prosecution and claim drafting strategies shall ensure claims are directed to the aspects of the invention that provide the most commercially valuable patent results. Through issued Task Orders the CONTRACTOR shall:

1 File US Design Applications.

• Draft design patent applications by reviewing invention disclosure materials, discussions with USGS, and speaking with USGS investigators as appropriate

• Provide USGS with a draft application;

• File the US design application with the USPTO prior to any public disclosures;

• Provide USGS with the final application.

2 File US Provisional Applications.

• Prepare draft provisional patent applications Including a specification, draft claims and applicable drawings, based upon invention disclosure, manuscripts, drawing, discussions with USGS and conduct inventor interview(s) as necessary;

• Provide USGS with a draft application in advance of filing;

• File US provisional applications with the USPTO, as directed by USGS, in advance of any public disclosure;

• Provide USGS with the final application;

• “Cover Sheet” provisional applications consisting ofan unedited or slightly edited inventor’s disclosure or draft manuscript requires written authorization by USGS, and should be avoided unless there is a clear necessity based on imminent public disclosure of the invention.

• Provide written updates to USGS at 6 months, 3 months and 1 month prior to any patent application deadlines.

3 File US Non-Provisional Utility Patent Applications.

• Prepare draft non-provisional patent applications, for USGS review, prior to filing applications. The specifications, drawings and claims for all patent applications shall be in accordance with Title 35, United States Code; Volume 37, Code of Federal Regulations, and other applicable U.S. legal authorities.

• Review pending provisional application(s), invention disclosure materials, known and disclosed prior art, manuscripts, consult with USGS and as necessary interview USGS investigators when preparing non-provisional application.

• Provide USGS with a copy of draft patent application. Such draft shall be provided to USGS at least thirty (30) days prior to any filing deadline The CONTRACTOR shall provide, if requested by USGS, a written or oral explanation of its proposed claim strategy and discuss proposed claim scope in the draft patent application in view of the inventor’s disclosure and any prior art known to the CONTRACTOR.

• File the US non-provisional application with the USPTO, so the application contains claims that cover a range of inventions including the broadest appropriate coverage reasonably permitted in view of the available prior art.

• File the US non-provisional application with the USPTO, so the application is filed prior to:

o the one (1) year anniversary of a provisional application to which the non-provisional application will claim priority;

o any investigator public disclosures; and/or, o the one year anniversary of any public disclosures.

• Request expedited prosecution as directed by USGS;

• Provide USGS with a copy of the final patent application

4 File International Applications under the Patent Cooperation Treaty (PCT).

• Draft, for USGS review, international applications under the PCT thirty (30) days prior to any filing deadline.

• Utilize the invention disclosure materials, known and disclosed prior art, prior filed parent applications, such as provisional applications or non-provisional application, and information provided by investigators.

• File PCT applications in a PCT designated receiving office in order to protect international patent rights. Such filings shall be during the pendency of the parent application so as to obtain the benefit of the claimed priority dates in parent applications.

• 5 File US National Stage Application under PCT. Provide written updates to USGS at 6 months, 3 months and 1 month prior to U.S. Utility deadlines.

• Correspond with USGS Technology Specialist handling the management of the intellectual property covered under a PCT application at 6 months, 3 months and 1 month prior to U.S. national stage filing deadlines notifying of the filing deadline.

• Draft for USGS review a US National Stage Applications under the PCT based on the International PCT application thirty (30) days prior to any filing deadline.

• File US National Stage Applications based the PCT Application within U.S.

and international filing deadline requirements in order to maintain the earliest claimed priority date for the subject matter disclosed in parent application(s).

• File supplemental information necessary to perfect the national stage filing.

Formal Documents and Application Parts

6 Prepare and File Powers of Attorney

• CONTRACTOR will use USPTO power of attorney forms.

• For foreign prosecution, CONTRACTOR will ensure foreign associates provide and file jurisdictionally valid Powers of Attorney.

• CONTRACTOR will correspond with appropriate parties and USGS and acquire all necessary authorizing signatures on Powers of Attorney.

7 Evaluate Inventorship, Ownership and Prepare Inventor Declaration or Supplemental Statement.

• CONTRACTOR will diligently investigate and determine inventorship based on proposed claims and USGS input and, as directed by USGS, inventor interviews or statements.

• Prepare the inventor declarations or, as necessary, a supplemental statement, and have appropriate parties sign all documents. All inventor declarations or supplemental statements shall include the patent application number, if available.

8 Application Data Sheets (ADS) and Application Filing Receipts

• CONTRACTOR preferentially will use the USPTO Electronic Filing System

(EFS) system for filing US applications and utilize USPTO Application Data Sheets (ADS). The ADS must correctly claim priority, identify all inventors, name DOI as applicant where appropriate and otherwise comply with USPTO ADS requirements.

• As necessary and directed by USGS CONTRACTOR will file corrected ADSs

• CONTRACTOR will review application Filing Receipts for accuracy and file for corrections as necessary.

• CONTRACTOR will provide copies of ADS and application Filing Receipts as part of the filing package required; CONTRACTOR will provide copies of corrected ADS and corrected Filing Receipts within two weeks of confirmatory correspondence from the USPTO.

9 File Drawings

• Where necessitated by the subject matter of an application, CONTRACTOR will prepare and file accurate drawings compliant with USPTO or foreign filing office requirements.

10 File Inventor Declaration/ Correct Inventorship during Prosecution

• Where all inventors are named on the USPTO ADS, CONTRACTOR may file inventor declarations prior to a Notice of Allowance or in response to Notice of Allowability.

• Where inventors are not named in the ADS, CONTRACTOR will file executed inventor declaration or corrected ADS forms with the USPTO as early in prosecution of the application as possible, within statutorily required periods and in any event prior to publication of the application.

• CONTRACTOR is obligated to review and update inventorship during the course of prosecution. CONTRACTOR will promptly notify USGS if inventorship changes. Such notification will include the patent application number

• Where inventorship changes during the course of prosecution, CONTRACTOR will obtain necessary signatures and file all required documentation in order to reflect the change of inventorship. Inventorship should be confirmed and corrections should be completed prior to paying issuance fees.

11 Prepare and File Assignments.

• CONTRACTOR will prepare legally valid domestic assignment documents;

obtain signatures of all requisite parties (Assignments requiring DOI signatories should be directed to the USGS and must include the patent application number and inventor name; file for recordation executed assignments with the USPTO, preferably, at the time of patent application filing, but in any event within 60 days of receipt of the assignment document.

• Correspond and consult with foreign associates regarding foreign assignment requirements. Ensure jurisdictionally valid and correct foreign assignment documents are filed within required national periods.

• CONTRACTOR shall review for accuracy and promptly report to USGS notices of assignment recordation.

The CONTRACTOR shall prepare appropriate corrective assignments as directed by USGS.

12 Missing Parts and Missing Requirements Notices.

• CONTRACTOR will file fully responsive responses to Notices of Missing Parts or Notices of Missing Requirements.

• CONTRACTOR will use reasonable efforts to file within shortened statutory periods.

13 Review and Report Notice of 371 Acceptance. The CONTRACTOR shall review and report the Notice that the 35 USC 371 applications were accepted.

14 Review and Report New or Revised Publication Date. The CONTRACTOR shall review and report the notice of a new or revised publication date.

15 Review and Report Publication of Application. The CONTRACTOR shall review and report to USGS the notice of publication of the patent application.

16 Payment of Patent Filing Fees. The CONTRACTOR shall pay all patent filing fees in accordance with the patent and trademark office fee schedule effective on the date of payment. The CONTRACTOR, upon request by USGS, shall be responsible for timely handling and filing of submissions to the USPTO and other patent authorities in order to minimize additional costs or late fees. In the event that it is determined by the COR that additional claimed costs are due to a delay, lack of action or inappropriate action by the CONTRACTOR, the CONTRACTOR agrees that it, and not USGS, shall be liable for all fees, expenses related to professional services and other costs necessary to revive or otherwise extend the period for response.

Substantive Prosecution 17 File Information Disclosure Statement. The CONTRACTOR shall file Information

Disclosure Statements, as needed per the USPTO requirements. Relevant prior art known to the CONTRACTOR shall be identified and discussed in the background section of the patent application. The law firm will take all reasonable steps to ensure that an Information Disclosure Statements containing the known relevant prior art is filed prior to a first office action on the merits. The law firm will have an ongoing obligation to file new art as it becomes aware of the art, including art cited in corresponding international or foreign prosecution. The inventor(s) shall be notified in writing of their duty of disclosure during the prosecution of the patent application.

18 File Preliminary Amendments. The CONTRACTOR shall file a Preliminary

Amendment in an application, when needed and when instructed to do so by USGS:

• At the time a 35 USC 371 U.S. Patent application is filed, and

• Prior to issuance of the first Office Action.

19 Review and Report Office Actions. The CONTRACTOR shall review and report to

USGS an Office Action no later than one week after the CONTRACTOR receives it from the office of the patent examining authority.

20 File Office Action Response . The CONTRACTOR shall:

• Prepare a draft response to the Office Action, for USGS review within two (2) weeks, unless a filing deadline requires a shorter response time, prior to filing the Office Action.

• Review Office Action, the specification, prior art, and, as necessary, speak with the USGS investigators when preparing the response.

• Timely file the response to the Office Action with the USPTO; extensions may be taken to shortened response periods only when authorized by USGS.

22 Report International Search Reports (PCT) When requested by USGS, review ISR’s and prepares informal comments and provided to USGS for review.

23 File PCT Article 19 Amendment. The CONTRACTOR shall file a PCT Article 19

Amendment only when authorized by USGS (amendment to claims following issuance of ISR, must be filed two months after transmittal or 16 months from the priority date or prior to technical office evaluation for publication)

24 File Demand for International Preliminary Examination Report. The CONTRACTOR will prepare and file demands for International Preliminary Examination when, and as directed by, USGS.

25 File PCT Article 34 Amendment. The CONTRACTOR shall file a PCT Article 34

Amendment only when authorized by USGS.

26 File Inventors’ Declarations/Affidavits. When necessitated by prosecution, consult and confer with inventors to draft declarations appropriate to the prosecution strategy formulated with USGS.

27 File Petitions. The CONTRACTOR shall only file a petition when expressly authorized by USGS.

28 File Notice of Appeal. The CONTRACTOR shall only file a Notice of Appeal when expressly authorized by USGS.

29 Interference Proceedings.

• As necessitated by the filing date (pre-AIA) and posture of prosecution, CONTRACTOR will represent USGS before the Patent Trials and Appeal Board in response to interference proceedings.

• CONTRACTOR will diligently consult and confer with inventors to establish invention conception dates, inventor diligence and reduction to practice dates.

30 Derivation Proceedings.

• As necessitated by the filing date (post-AIA) and posture of prosecution, CONTRACTOR will represent USGS before Patent Trials and Appeal Board in derivations proceedings.

• CONTRACTOR will diligently consult and confer with inventors to evaluate derivation of the claimed invention

31 File Request for Continued Examination. The CONTRACTOR shall file a Request for

Continued Examination only when expressly authorized by USGS.

32 File Continuing and Divisional Patent Applications

• CONTRACTOR will prepare and file continuing and divisional applications when and as directed by USGS; CONTRACTOR will ensure that any divisional or continuing applications are filed prior to paying issue fee in the parent application.

33 Abandonment – Voluntary. No patent application may be voluntarily abandoned without written authorization from USGS. Written confirmation may be through email communication.

34 Notices of Abandonment and Revival.

• The CONTRACTOR will be presumptively responsible for any unavoidably or unintentionally abandoned patent applications and will solely bear the costs of revival.

• CONTRACTOR will provide notices of abandonment to USGS within 5 days of receiving the notice.

• In consultation with USGS, CONTRACTOR will take all steps necessary to effect revival of unintentionally or unavoidably abandoned application

Issuance and Post Issuance

37 Review and Report Notice of Allowance/Issue Fee Due.

The CONTRACTOR shall review and report to USGS the Notice of

Allowance/Issue Fee within a week from when the CONTRACTOR receives the Notice.

Prior to paying any issue fee:

• Review and confirm that inventorship is accurate.

• Confirm that priority is accurately claimed.

• To the best of CONTRACTOR’s ability, ensure that all relevant art has been cited in an IDS signed off on by the examiner.

• Review examiner’s amendments (If any) and communicate amendments to USGS.

• Prepare and file necessary corrections to the application.

38 Pay Issue Fee. The CONTRACTOR shall timely pay the Issue Fee when directed by

USGS.

39 Review and Report Issue Notification. The CONTRACTOR shall review and report the notification that the patent issued within a week from when the CONTRACTOR receives the Notice.

40 Review and Report Letters Patent. The CONTRACTOR shall review and report the letters patent.

41 Report Maintenance and annuity Fee Deadline. The CONTRACTOR shall report all

Maintenance Fee due dates and deadlines, and send USGS reminders of upcoming Maintenance Fee due dates.

42 Pay Maintenance and annuity Fee. The CONTRACTOR shall timely pay the

Maintenance Fees unless USGS expressly indicates that CONTRACTOR should not pay Maintenance Fees.

43 File Petition to Correct issued patent. CONTRACTOR will prepare and file post-issuance corrections as necessary and after consultation with USGS.

44 Supplemental Examination Requests. When and as directed by USGS, request

Supplemental Examination.

45 Request for Reexam. When and as directed by USGS, request re-examination of issued

U.S. Patent applications and otherwise.

46 Ex Parte Reexamination. CONTRACTOR will represent client and assist in the prosecution of Ex Parte Reexaminations.

47 Post Grant and Inter Partes Review. When and as directed by USGS file for Post Grant

Review or Inter-Partes Review.

Miscellaneous 48 Prepare and Submit Preissuance Submissions. Where requested by USGS, consult with

USGS and prepare preissuance submissions to the USPTO

49 Advise and Consult on Intellectual Property (IP) Matters. When specifically instructed by USGS, the CONTRACTOR shall advise and consult with USGS:

• On patent prosecution strategy and portfolio management.

• On other IP issues not directly related to pending patent applications.