PWS (Patent drafting Services).pdf

Performance Work Statement (PWS) Patent Drafting Application Support Services

12 January 2021

C.1 SCOPE

C.1.1 Objective. The objective of this effort is to obtain patent drafting application related services including the preparation of unclassified U.S. and Patent Cooperation Treaty (PCT) patent applications, formal drawings, prior art, patentability researches, and patent prosecution. The patent related services are for inventions created by inventors working for the U.S. Army Combat Capabilities Development Command (DEVCOM), and its subordinate organization, the U.S. Army Research Laboratory located at the Adelphi Laboratory Center, Adelphi, MD, Aberdeen Proving Ground (Edgewood Area), MD, and White Sands Missile Range, NM.

C.1.2 Diverse Technologies. DEVCOM and subordinate installations work with these diverse technologies: (1) Directed Energy and Power Generation (i.e. batteries/fuel cells/ power switching/converter/inverter); (2) Radar Frequency and Electronics (i.e. micro-electro mechanical systems/radio frequency (RF) electronics/ millimeter wave);

(3) Signal and Image Processing; (4) Electro-Optics and Photonics; (5) Ballistics, Weapons and Armor; (6) Electronic Warfare; (7) Organic and inorganic chemical compounds and electroluminescent devices; (8) Materials technology including polymers and ceramics; and (9) Nanotechnology.

C.1.3 Technical Areas. In light of these mission requirements, the Government is seeking patent services in the following scientific disciplines: Mechanical, Chemical and Electrical Engineering all of which are pursuant to the Federal Technology Transfer Act (FTTA), where DEVCOM has a significant program in patenting and licensing inventions with commercial potential.

C.1.4 General. The effort shall include performing prior art searches, preparing draft and final patent applications and all associated documentation including preparing responses to the U.S. Patent & Trademark Office (USPTO) examiner actions for Government filing.

C.2 APPLICABLE DOCUMENTS

C.2.1 The Contractor shall utilize and be in compliance with the following documents in the overall contract work effort: Title 35, United States Code (U.S.C.), Title 37 Code of Federal Regulations (CFR), and any other applicable laws and legal authorities including the U.S. Patent & Trademark Office Manuel of Patent Examining Procedures.

C.3 REQUIREMENTS AND SPECIFICATIONS

The following paragraphs outline the efforts for accomplishing the scope as stated in C.1. Under this contract, the Government may issue task orders for the efforts provided below.

C.3.1 Draft Patent Application. The Contractor shall prepare and complete a draft unclassified, non-provisional patent application based upon the invention disclosure provided as Government Furnished Information upon task award. The draft application shall include the specification, the claims, the abstract, information disclosure statement (IDS) and drawings and shall be written in accordance with C.2.1.

C.3.1.1 Specification. The Contractor shall provide a completed specification to include the following: Title, Cross Reference to Related Applications, Government Interest, Field of the Invention, Background of the Invention, Summary of the Invention, Brief description of the Invention, and Detailed Description of the Invention.

C.3.1.2 Invention Format. The Contractor shall ensure that the title shall appear as the heading on the first page of the invention. The Contractor shall use up to 500 characters; the title should be short and concise.

C.3.1.3 Cross-Reference to Related Applications. The Contractor shall ensure any non-provisional application claiming the benefit of one (1) or more prior filed co-pending non-provisional applications must contain in the first sentence of the specification following the title, a reference to each prior application. The Contractor shall ensure all Cross–references to other related patent applications are included in the application.

C.3.1.4 Government Interest. The Contractor shall ensure that the Government Interest paragraph shall state the following: “Governmental Interest – The invention described herein may be manufactured, used and licensed by or for the U.S. Government.”

C.3.1.5 Field of the Invention. The Contractor shall ensure that there is a short statement of the field of endeavor to which the invention pertains. The Contractor shall ensure the section includes paraphrasing of the applicable U.S. patent Classification Definitions or the subject matter of the claimed invention.

C.3.1.6 Background of the Invention. The Contractor shall ensure that the application contains a description of the information including references to specific documents related to the invention.

C.3.1.7 Brief Summary of the Invention. The Contractor shall provide the substance of the claim invention in summary form. The Contractor shall ensure the summary states the object of the invention and articulates advantages of the inventions.

C.3.1.8 Brief Description of the Drawings. The Contractor shall provide a written description of the drawings, a listing of all figures by numbers and corresponding statements explaining what each figure depicts.

C.3.1.9 Detailed Description of the Invention. The Contractor shall provide a detailed description of making and using the invention. The Contractor shall ensure that the description is in full, clear, concise, and exact terms. The Contractor shall ensure any references used shall be cited in this section.

C.3.1.10 Specification Format. The Contractor shall ensure the specification is typed double-spaced, on paper meeting the requirements of 37 CFR 1.52; which shall be on 8 1/2 x 11 inch size paper or approximately 21.6 centimeters (cm) x 27.9 (cm) and having a ruled left margin of at least 2.5 cm (1 inch). The top of each page of the application including claims must have a margin of 2.5 cm and a right and bottom margin of at least 2.0 cm (.75 inch).

The pages of the entire draft application shall be numbered consecutively, starting with one (1) on the first page, the numbers being centrally located below the text. Every fifth line of each page of the specification shall be numbered, the numbering to start anew on each page, and no page shall contain more than thirty lines. Paragraph numbers shall be placed at the left margin beginning with [0001] (in bold print) followed by at least four (4) spaces and shall be sequential to the end of the Specification.

C.3.1.11 Specification Docket Format. The Contractor shall ensure the DEVCOM Docket Number is placed in the upper right hand corner of each page of the Specification as specified in the awarded Task Order.

C.3.2 Claims. The Contractor shall ensure all claims are identified and “particularly point out and distinctly state the subject matter of the invention; the claim defines the scope of the invention”, in accordance with the United States Patent and Trademark Office (USPTO) requirements. The Contractor shall ensure that all claims cover a range of inventions including the broadest specification coverage of an independent claim permitted in view of the available prior art to the narrowest specification coverage of an independent claim to ensure all patentable aspects of the invention are protected. The Contractor shall explain its proposed Claim strategy and discuss proposed Claim scope in view of the inventor’s disclosure to ensure US Patent acceptability. The Contractor shall not use multiple dependent claims unless authorized by the Contracting Officer’s Representative (COR). The Contractor shall ensure each claim beginning with the number “5” on the fifth line shall have line numbers placed in the left margin every five (5) lines within each Claim and shall be a single sentence.

C.3.3 Information Disclosure Statement (IDS). The Contractor shall ensure relevant art provided by the COR, the inventor, or otherwise known to the Contractor shall be identified by the IDS. The Contractor shall prepare an information disclosure statement in compliance with 37 CFR 1.97 and 1.98.

C.3.4 Patent Drawings. The Contractor shall provide one (1) set of formal drawings to include the following:

C.3.4.1 The drawings shall be prepared on 8.5 inch by 11 inch paper in compliance with the requirements set forth in 37 CFR 1.84; The Contractor shall ensure the COR provided DEVCOM docket number is placed on the drawing in accordance with 37 CFR 1.84. The Contractor shall provide Formal Drawings upon final COR acceptance of the draft application. The Contractor may complete the Drawings by sub-contractual efforts without obtaining prior written approval from the COR.

C.3.4.2 The Contractor shall include a key to the numbering of the Drawings by reference number and item name to be provided to the COR in a separate attachment accompanying any draft patent application(s) that contains at least one Drawing.

C.3.5 Interview with Inventor. The Contractor shall interview the inventor via phone or in person to confirm information in the invention disclosure is up to date and/or obtain additional technical information in the preparation of the draft patent application. The Contractor shall update the draft application to include all findings disclosed during the interview with the inventor. The Contractor shall submit in writing all in-person interviews for COR approval. Upon approval, the COR will arrange for personal interviews of the inventor on unclassified draft patent applications within two (2) working days and no later than ten (10) days after request. The Contractor shall obtain written approval by the COR prior to processing any new material/drawings added by the inventor during the application process which materially exceeds the original scope of the task that would result in increased cost to the Government. The Contractor will not be reimbursed by the Government for expanded work not specifically authorized by a Contracting Officer (KO).

C.3.6 Submission of Draft Application to COR. The Contractor shall notify the COR of the status of the draft application no later than 25 calendar days after date of task order award. The Contractor shall deliver the draft application documents in C.3.1, C3.2, C3.3 and C3.4 to the COR within 45 calendar days after date of task order award. The COR will review the draft for technical accuracy and provide any required changes and/or corrections no later than 30 calendar days after receipt of the draft.

C.3.7 Final Draft Patent Application. The Contractor, upon receipt of the COR reviewed and approved draft application, shall complete all corrections and concerns as identified for a proposed Final Draft. The proposed Final Draft of the patent application shall be submitted to the COR no later than (NLT) ten (10) business days from the date the COR requests final changes in accordance with the task order. The Final Draft shall be in compliance with C.2.1 and submitted in hard copies to include two (2) copies on electronic media as either 3.5 inch diskettes or computer disks read only memory as appropriate for the size of the file, electronic mail submissions also acceptable. The electronic media shall contain the Specification in Microsoft Word® software format and the Drawings in Portable Document Format (PDF) format.

C.3.8 Patent Prosecution (USPTO Office Actions). The Contractor shall provide draft responses to USPTO Office Actions as provided by the COR as required under 35 U.S.C., 37 CFR, and the Manual of Patent Examining Procedures. The Contractor shall address each and every Rejection and Objection noted by the Patent Examiner and comment on the applicability or inapplicability of any cases cited by the USPTO Patent Examiner. The Contractor shall also identify and address all issues associated with file wrapper estoppel. The contractor shall ensure that all case citations for domestic patent prosecution shall cite U.S. Court of Appeals for the Federal Circuit and the USPTO Board of Patent Appeals and Interferences and other sources. The Contractor shall submit draft responses to the COR. The COR shall review and provide approval or comments to the response. The Contractor shall make all corrections and comments as cited by the COR. The Contractor shall submit the final responses to the COR, in accordance with C.4.3.

C.4 DELIVERABLES

C.4.1 Status and Delivery of Draft Application. The Contractor shall notify the COR of the status of the draft application no later than 25 calendar days after date of task order award. The Contractor shall deliver the draft application documents in C.3.1, C3.2, C3.3 and C3.4 to the COR within 45 calendar days after date of task order award. The COR will review the draft for technical accuracy and provide any required changes and/or corrections no later than 30 calendar days after receipt of the draft.

C.4.2 Delivery of the Final Application Original and Copies. The Contractor shall make the final corrections to the application as provided in C.4.1, to include any applicable drawings, both in hard copy form and on specified computer readable media in Microsoft Word compatible software format. The Contractor shall prepare copies equal to the number of inventors of each document (specification, claims and drawings) and furnish them to the COR upon completion. The Contractor shall furnish the patent application specification and claims in Word format and drawings in PDF format to the COR. The Contractor shall ensure that other applicable documents are furnished in Word or USPTO form fillable format, as specified in the individual task order PWS.

C.4.3 Patent Prosecution for USPTO. The Contractor shall prepare responses to the Office Actions 15 days from the task order award, using the format specified in C.2.1 and furnish them to the COR upon completion for review.

The Contractor shall furnish the draft responses in Word format to the COR. The Contractor shall ensure that other applicable documents are furnished in Word as specified in the individual task order PWS.

C.4.4 Mailing Address. The mailing address for all correspondence will be Office of Chief Counsel, U.S. Army Research Laboratory, 2800 Powder Mill Road, ATTN: RDRL-LOC-I, Adelphi, MD 20783-1197, unless the COR otherwise notifies the Contractor .

C.4.5 Acceptance of Work Product. The Contractor shall identify the preparer of the work and shall indicate whether that person is an associate attorney/patent agent/scientific or technical advisor, senior associate or partner.

If a work product is found to be unacceptable by the COR by virtue of not conforming to the standards defined in this section, Title 37 CFR, Title 35 U.S.C. and this PWS, it will be returned to the Contractor and corrected without any additional cost to the Government. The Contractor agrees that COR may communicate directly with the preparer concerning questions about the preparation of a specific deliverable such as a draft patent application or draft response to an Office Action.

C.5 GENERAL PROVISIONS

C.5.1 Required Patent Work Experience. The preparer of the work must have at least three (3) years of experience preparing patent applications on highly complex technologies.

C.5.2 Patent Certification. The person responsible for the patent work must be a patent attorney or patent agent registered to practice before USPTO.

C.5.3 Subcontractors. The Contractor shall not enter into a subcontract for performance of services under this Contract except with the prior written approval of the Contracting Officer. However, prior written approval is not needed for Patent Application Drawings which may be accomplished by sub-contractual efforts as specified in C.3.4.1.

C.5.4 Citizenship Requirements. All Contractor employees must be United States citizens. Cases of dual, or multiple, citizenships may be disqualifying and will be reviewed by Army Research Laboratory (ARL) security personnel for determination

C.5.5 Non-Disclosure Statement. The Contractor shall provide a non-disclosure statement for all employees who work on this contract to include subcontractors. The Contractor shall contact the COR upon contract task award to obtain the form. The Contractor shall provide the completed and signed form back to the COR within three (3) days of receipt.

C.5.6 Organizational Conflict of Interest. The term "organizational conflict of interest" means that the Contractor (which term hereinafter is deemed to include its chief executives, directors, any consultants, or subcontractors utilized under this contract other than a vendor selling incidental material) has interests which (i) may diminish its capacity to give impartial, technically sound, objective assistance and advice in performing this contract, (ii) may otherwise result in a biased work product under this contract, or (iii) may result in an unfair competitive advantage to itself or others.

The Contractor's attention is directed to FAR Subpart 9.5, Organizational Conflicts of Interest. In the execution of certain contract tasks, it is anticipated that assigned Contractor personnel will require access to confidential or proprietary business, technical and financial information belonging to the Government or other companies. The information may include but is not limited to pre-decisional budget and acquisition sensitive information, preparation of specifications or work statements, and evaluation services. After receipt thereof, the Contractor and affected individuals shall treat such information as confidential and agree not to appropriate such information to its own use or to disclose such information to third parties unless specifically authorized by the contracting officer in writing. The foregoing obligations, however, shall not apply to:

(a) Information, which at the time of receipt by the Contractor, is in the public domain;

(b) Information, which is published after receipt thereof by the Contractor or otherwise becomes part of the public domain through no fault of the Contractor;

(c) Information, which the Contractor can demonstrate was in his possession at the time of receipt thereof and was not acquired directly or indirectly from the Government or other companies;

(d) Information, which the Contractor can demonstrate, was received by it from a third party that did not require the Contractor to hold it in confidence.

The Contractor shall obtain written agreement, in a form satisfactory to the contracting officer, of each employee permitted access, whereby the employee agrees that he will not discuss, divulge or disclose any such information or data to any person or entity except those persons within the Contractor's organization directly concerned with the performance of the contract.

The Contractor agrees, if requested by the Government, to sign an agreement identical, in all material respects, to the provisions of this clause, with each company supplying information to the Contractor under this contract, and to supply a copy of such agreement to the Contracting Officer. Upon request of the Contracting Officer, the Contractor shall supply the Government with reports itemizing information received as confidential, proprietary, pre-decisional budget information, or acquisition sensitive information, and setting forth the company or companies from which the Contractor received such information. The Contractor agrees that upon request by the Contracting Officer it will execute a Contracting Officer approved agreement with any party whose facilities or proprietary data it is given access to or is furnished, restricting use and disclosure of the data or the information obtained from the facilities.

Upon request by the contracting officer, Contractor personnel shall also sign such an agreement.

If after award, the Contractor discovers an organizational conflict of interest, with respect to this contract, it shall make an immediate and full disclosure in writing to the Contracting Officer. The disclosure shall include identification of the conflict, the manner in which it arose, and a description of the action the Contractor has taken or proposes to take to avoid, eliminate or neutralize the conflict. The Government may, however, terminate the contract.

In the event that the Contractor was aware of an organizational conflict of interest prior to award of this contract and did not disclose the conflict to the Contracting Officer or becomes aware of an organizational conflict of interest after award of this contract and does not disclose the conflict of interest within ten (10) working days of becoming aware of such conflict, the Government may terminate the contract and the Contractor shall not be entitled to reimbursement of any cost incurred in performing this contract or payment of any fee there under. Further, such costs shall not be allocable or chargeable, directly or indirectly, to any other contract with the Government.

The rights and remedies of the Government provided in this clause shall not be exclusive and are in addition to any other rights and remedies of the Government provided by law or under this contract.

The Contractor agrees that during performance of the contract and for a period of three (3) years after the completion of performance of this contract, the Contractor, including all divisions thereof, and any affiliate of the Contractor, any joint venture involving the Contractor, any entity into or with which it may subsequently merge or affiliate, or any other successor or assign of the Contractor, shall not:

(a) Supply information or material received from this contract, to any firm participating in or having a known prospective interest in the subject matter areas for which the sensitive information described in paragraph 1 above was initially submitted, nor enter into any contractual relationship which would affect or appear to affect the equity and integrity of its recommendations.

(b) Furnish to the United States Government, either as a prime Contractor or as a subcontractor, any component of any system for which the sensitive information described in paragraph 1 above was initially submitted, that it is not currently obligated to deliver for defense purposes.

This provision shall flow down to all subcontracts and teaming agreements.

C.6 DISTRIBUTION STATEMENT

C.6.1 Both the PWS and all information generated under this contract shall be distributed in accordance with Distribution Statement B:

Distribution authorized to U.S. Government Agencies only (Proprietary Information)(07 January 2021). Other requests for this document shall be referred to (ADLO).

Contracting Officer:

1/12/2021

X Ariel M. Amey

Contracting Officer (KO) Signed by: AMEY.ARIEL.M.1469952971

Legal Advisor:

1/12/2021

X Rebecca Clark

Legal Advisor Signed by: CLARK.REBECCA.FRANTZ.1228895039