RFP-Trademark-FINAL-RFP No. 75N98023R00018.pdf

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NIH Trademark Legal Services Solicitation - RFP # 75N98023R000

Combined Synopsis/Solicitation

For

NIH Trademark Legal Services

I. General Information

Document Type: Combined Synopsis/ Solicitation for Commercial Products and Commercial Services

Solicitation Number: 75N98023R00018

Posted Date: 7/21/2023

Response Date: 8/08/2023, 11AM EST

Product or Service Code: R418 – Support- Professional: Legal

Set Aside: Full and Open Competition

NAICS Code: 541110 – Office of Lawyers

II. Contracting Office Address

NIH/OLAO/OA

6701 Rockledge Drive, Bethesda, MD, 20817

Point of Contact:

Oghogho Joy Ajao, Contracting Officer

E-mail: ajaooj@od.nih.gov

III. Description

This is a combined synopsis/solicitation for commercial products and commercial services prepared in accordance with Federal Acquisition Regulation (FAR) Part 12, Acquisition of Commercial Products and Commercial Services, Part 13, Simplified Acquisition Procedures, and Part 16.5, Indefinite

Delivery Contracts, as supplemented with additional information included in this notice. This announcement constitutes the only solicitation; proposals are being requested, and a written solicitation document will not be issued.

This solicitation is a request for proposal (RFP) under RFP Number 75N98023R00018. The solicitation documents and incorporated provisions and clauses are those in effect through Federal Acquisition

Circular (FAC) FAC 2023-04, dated 06/02/2023.

The associated North American Industrial Classification System (NAICS) code for this procurement is

541110 with a small business size standard of $15.5M.

mailto:ajaooj@od.nih.gov

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1. SERVICES AND PRICING

1.1 BRIEF DESCRIPTION OF SUPPLIES OR SERVICES

The Contractor shall provide trademark-related services that may be required by the NIH Branch of the

Office of General Counsel (“NIH-OGC”) in its role as the Department’s lead provider of intellectual property legal counseling.

1.2 GENERAL – CONTRACT TYPE

The Government contemplates award of a single source, multiple year, Firm Fixed Price, Indefinite

Delivery, Indefinite Quantity (IDIQ) contract in accordance with Federal Acquisition Regulation (FAR)

Part 12, Acquisition of Commercial Products and Commercial Services, Part 13, Simplified Acquisition

Procedures, and Part 16.5, Indefinite Delivery Contracts.

1.3 CONTRACT LINE ITEMS AND PRICING

The vendor shall provide price proposals based on the line items shown below.

BASE PERIOD

Base Period- (August 26, 2023 - August 25, 2024)

Description of Item Estimated Quantity

(Hours)

Rate Amount

Senior Partner II 180 Senior Partner 180 Partner 400 Senior Associate 400 Associate 350 Paralegal 200 Legal Assistant 100 Other Expenses: All other costs, including filing fees, drawings, faxing, telephone, courier, other delivery, foreign agents’ costs shall be billed at acquisition or production costs with no additional markup.

Not to Exceed

(NTE)

$20,000

Special Services (e.g., oppositions, cancellations, and other prosecution matters).

Not to Exceed

(NTE)

$30,000

Base Period Ceiling Amount:

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OPTION PERIOD ONE (1)

Option Period One (1) - (August 26, 2024 - August 25, 2025)

(Hours)

Rate Amount

Senior Partner II 180 Senior Partner 180 Partner 400 Senior Associate 400 Associate 350 Paralegal 200 Legal Assistant 100 Other Expenses: All other costs, including filing fees, drawings, faxing, telephone, courier, other delivery, foreign agents’ costs shall be billed at acquisition or production costs with no additional markup.

Not to Exceed

(NTE)

$20,000

Special Services (e.g., oppositions, cancellations, and other prosecution matters).

Not to Exceed

(NTE)

Option Period One Ceiling Amount:

OPTION PERIOD TWO (2)

Option Period Two (2) - (August 26, 2025 - August 25, 2026)

(Hours)

Rate Amount

Senior Partner II 180 Senior Partner 180 Partner 400 Senior Associate 400 Associate 350 Paralegal 200 Legal Assistant 100 Other Expenses: All other costs, including filing fees, drawings, faxing, telephone, courier, other delivery, foreign agents’ costs shall be billed at acquisition or production costs with no additional markup.

Not to Exceed

(NTE)

$20,000

Special Services (e.g., oppositions, cancellations, and other prosecution matters).

Not to Exceed

(NTE)

Option Period Two Ceiling Amount:

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OPTION PERIOD THREE (3)

Option Period Three (3) - (August 26, 2026 - August 25, 2027)

(Hours)

Rate Amount

Senior Partner II 180 Senior Partner 180 Partner 400 Senior Associate 400 Associate 350 Paralegal 200 Legal Assistant 100 Other Expenses: All other costs, including filing fees, drawings, faxing, telephone, courier, other delivery, foreign agents’ costs shall be billed at acquisition or production costs with no additional markup.

Not to Exceed

(NTE)

$20,000

Special Services (e.g., oppositions, cancellations, and other prosecution matters).

Not to Exceed

(NTE)

Option Period Three Ceiling Amount:

OPTION PERIOD FOUR (4)

Option Period Four (4) - (August 26, 2027 - August 25, 2028)

Description of Item Estimated

Quantity (Hours)

Rate Amount

Senior Partner II 180 Senior Partner 180 Partner 400 Senior Associate 400 Associate 350 Paralegal 200 Legal Assistant 100 Other Expenses: All other costs, including filing fees, drawings, faxing, telephone, courier, other delivery, foreign agents’ costs shall be billed at acquisition or production costs with no additional markup.

Not to Exceed

(NTE)

$20,000

Special Services (e.g., oppositions, cancellations, and other prosecution matters).

Not to Exceed

(NTE)

Option Period Four Ceiling Amount:

GRAND CEILING TOTAL (Base + 4 Option Periods):

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2. STATEMENT OF WORK

PROJECT TITLE: NIH Trademark Related Services

PURPOSE

This contract is for trademark-related services that may be required by the NIH Branch of the Office of

General Counsel (“NIH-OGC”) in its role as the Department’s lead provider of intellectual property legal counseling. Unless directed to do so by NIH-OGC, the Contractor shall not provide these services directly to any other component of the NIH or any other agency or organization on whose behalf the

NIH-OGC is working.

BACKGROUND

In October 2008, NIH-OGC assumed responsibility for providing trademark services to all of the HHS operational divisions. NIH-OGC provides a variety of trademark services, including trademark clearance and counseling; filing and prosecution of trademark applications with the U.S. Patent and

Trademark Office; international trademark procurement, prosecution, and enforcement; brand management and counseling on brand protection and enforcement strategies; domestic and international trademark licensing; and pre-litigation counseling and dispute resolution. Some of this work will be assigned to the Contractor.

WORKLOAD

Work Assignment

After considering the individual requirements, the work will be assigned through the issuance of a Task Order by NIH-OGC. No work may be undertaken by the Contractor without the receipt of a completed Task Order form that has been signed by the NIH-OGC Task Ordering Official and approved for funding as signified by the assignment of an NIH procurement order number.

In the event that a Contractor cannot accept work due either to time and/or resource constraints or a professional conflict of interest, the Contractor will timely notify NIH-OGC.

Conflict of Interest

Since contractors who submit proposals may also be involved in representing clients in the private sector on trademark matters, the Government anticipates that there may be potential for a professional conflict of interest. Accordingly, all contractors are required to prepare and submit Conflict of Interest Plans and Policies as part of their proposals. These plans are considered to be part of the contract.

However, because the basic purpose of the contract is to handle work as deemed appropriate by the NIH-OGC, it is imperative that the Contractor generally be able to perform the work assigned to it under the contract.

Following award of the contract, the Contractor will be required to certify on each Task Order that no conflict of interest exists regarding the work requirement.

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The Government is not obligated to issue an order on a contract if the Government believes that the Contractor may have a professional conflict of interest, and the Contractor may decline to accept any order based on a professional conflict of interest. Should any questions be raised as to whether or not a situation is considered to be a conflict, the Contracting Officer

Representative (COR) shall make the final determination.

SERVICES REQUIRED

The following trademark-related services shall be required:

Search Services

a. Domestic and international trademark searching and clearance of word marks and design marks (with written opinion and analysis).

b. Trademark infringement and validity searches of word marks and design marks (with written opinion and analysis).

Trademark Prosecution Services

The Contractor shall perform all necessary and appropriate services in connection with the preparation and filing of trademark applications. All foreign trademark matters shall be handled by the Contractor, or foreign associates under the direction of the Contractor, in accordance with the applicable statues, regulations, and case law of the particular foreign jurisdiction. The trademark prosecution services to be provided to NIH-OGC are generally to be considered equivalent to those of “In-House Counsel” and are not to be considered merely equivalent to

“Overflow Work.”

The Contractor shall perform other prosecution-related work including response to office actions, appeals of refusals, preparation and filing of letters of protest and petitions.

All trademark prosecution services will be conducted on a task order basis. The NIH-OGC Task

Ordering Official will originate a Task Order Request for Quote that will describe the specific task and scope of work to be performed. See the “Task Orders” section, below, for additional details relating to the task ordering procedures. Some specific examples of requirements related to trademark prosecution services or for particular tasks that will not be enumerated on a task order are:

a. Maintain a current case docket to ensure that actions are taken, and fees paid on a timely basis.

b. Generally, NIH-OGC will be responsible for the payment of all maintenance fees on

U.S. and foreign trademark registrations but may delegate this to the Contractor as NIH-

OGC deems necessary.

c. Sending electronic copies of all papers filed with the U.S. Patent and Trademark Office

(USPTO), foreign IP/trademark office, World Intellectual Property Organization

(WIPO), and other authorities (deliverables) to NIH-OGC and other recipients that are identified in the Task Order or have been otherwise identified in writing by the NIH-

OGC Task Ordering Official, within five (5) business days of the filing.

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d. If requested by NIH-OGC, mailing hardcopies of documents filed with the USPTO, foreign IP/trademark office, WIPO, and other authorities to NIH-OGC and other recipients that are identified in the Task Order or have been otherwise identified in writing by the NIH-OGC Task Ordering Official.

e. Mailing hardcopies of official papers and attachments, if any, from the USPTO, foreign

IP/trademark office, WIPO, other authorities, and foreign associate counsel

(deliverables) within five (5) business days of their receipt to the NIH-OGC and other specified recipients. An analysis of such official correspondence is not required, unless requested by NIH-OGC. If said official papers and any attachments are only issued in electronic form by the USPTO, foreign IP/trademark office, WIPO, or other authorities, then Contractor shall send the electronic copies to NIH-OGC and other specified recipients within five (5) business days of their receipt.

f. Preparing drafts of documents for submission to the USPTO, foreign IP/trademark office, WIPO, and other authorities sufficiently in advance of relevant response due date/deadline for NIH-OGC to review and/or to provide substantive comments in advance of such due dates/deadlines and before extension fees might need to be paid; a reasonable time is dependent upon the facts of the circumstances of particular cases, however, the Government believes a minimum of fourteen (14) working days will be required for review and preparation of comments.

g. Timely reporting of status updates, filings, actions taken, and communications from the

USPTO, foreign trademark/ IP offices, WIPO, and other authorities.

Oppositions and Cancellations

The Contractor shall, at the direction of NIH-OGC, file oppositions and cancellations (or file extensions of time for filing oppositions and cancellations) with the Trademark Trial and

Appeal Board (TTAB) and take necessary actions to represent NIH-OGC. The Contractor shall work closely with the attorneys and staff at NIH-OGC throughout opposition and cancellation proceedings.

The Contractor shall, upon request, work with NIH-OGC on negotiating consent and other settlement agreements.

Domain Name Dispute Resolution Actions

The Contractor shall, at the direction of NIH-OGC, file UDRP, URS, or other domain name dispute resolution actions with entities offering domain name dispute resolution outside of the federal or state court systems and take necessary actions to represent NIH-OGC. The

Contractor shall work closely with the attorneys and staff at NIH-OGC throughout the proceedings.

Licensing

The Contractor shall, upon request, provide counseling services to NIH-OGC pertaining to domestic and international licensing matters. The field of use of the license may vary.

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Anti-Counterfeiting

The Contractor shall, upon request, consult with NIH-OGC on U.S. anti-counterfeiting matters, which includes the development of anti-counterfeiting strategies. The Contractor may be asked to assist NIH-OGC with anti-counterfeiting matters before the U.S. Customs and Border

Protection (CBP), including the recordation of trademarks with CBP, brand monitoring, and preparation and submission of take-down notices and/or other correspondence to domestic and international e-platforms. If instructed by NIH-OGC, the Contractor, through an appropriate foreign associate, shall represent NIH-OGC in anti-counterfeiting matters outside of the United

States.

Ancillary Trademark Services and Other Work

a. Obtaining copies of trademark records, file histories, assignment records, as requested.

b. Obtaining signatures of designated authorities on legal papers and deliver to the USPTO and/or foreign offices, under very tight time constraints.

c. Routine matters such as filing applications to register works or filing recordations of assignments at the U.S. Copyright Office, or a copyright office located outside of the

United States.

d. Provide weekly trademark watch service to identify any conflicting third-party marks filed with the USPTO and provide written opinion and analysis on any such marks with proposed next steps.

e. Provide service or software for monitoring the status of third-party trademark applications and report on said status to NIH-OGC.

f. Prepare and provide detailed status spreadsheets of matters, including domestic and international trademark application and registration matters, and brand-monitoring matters.

Infringement

a. Evaluate complex and nuanced trademark law matters and issues, particularly with respect to questions of priority, dilution, infringement, and false association.

b. Prepare cease and desist letters.

c. Provide litigation-related support and services.

d. Provide a service to monitor misuse and infringing uses of marks by third parties, including the monitoring of major vendors and e-platforms, both national and international, e.g., Amazon, eBay, and Alibaba.

e. Work with requisite foreign associates on foreign infringement and enforcement matters.

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SPECIFIC INSTRUCTIONS

Study and Evaluation

For Task Orders specifying the study and evaluation of trademarks or other materials, the

Contractor shall perform the study and evaluation and shall submit a report or legal opinion, as requested, to the NIH-OGC Task Ordering Official.

Deadlines

The Contractor shall be responsible for timely handling and filing of submissions to the USPTO and other trademark authorities and must adequately determine and notify the NIH-OGC Task

Ordering Official of relevant deadlines.

In the event of failure by the Contractor to perform within established timeframes for filing and it is determined by the Contracting Officer (a contractual matter that is concurred by the

Contracting Officer Representative (COR)) to have been due to a delay, a lack of action, or inappropriate action by the Contractor, the Contractor agrees that it and not the NIH-OGC shall be liable for any fees, expenses related to professional services, and other additional costs to revive or otherwise extend the period for response. Fees may include, for example, extension of time fees not previously authorized by NIH-OGC. Such failures may be considered by NIH-

OGC in determinations regarding exercise of any option year under the contract and as part of any past performance evaluation. Repeated failures may be considered grounds for termination of the contract.

ENTRANCE CONFERENCE

Within two (2) weeks after contract award, or as soon as is practical for NIH-OGC, a firm that receives a contract as a result of this solicitation is required to attend a virtual one-half day (4 hour) orientation for the NIH-OGC Trademark Team. The orientation will be held to meet the NIH-OGC Trademark

Team and the NIH Contracting Officer, as well as to review ordering and billing procedures. The meeting may be held via teleconference or video conference, the latter of which is preferred. Additional orientation or information meetings may be held at the request of NIH-OGC or the Contractor. If necessary, NIH-OGC may request a meeting between NIH-OGC, new Contractor, and original

Contractor to allow for a seamless transition.

3. TASK ORDERS

This contract provides for the issuance of Task Orders for tasks as needed.

Only the Contracting Officer may issue Task Orders to the Contractor, providing specific authorization or direction to perform work within the scope of the contract and as specified in the Statement of Work.

Unless specifically authorized by the Contracting Officer, the Contractor shall not commence work until a fully executed Task Order has been awarded. The Contractor may incur costs under this contract in performance of task orders and task order modifications issued in accordance with this article.

No other costs are authorized unless otherwise specified in the contract or expressly authorized by the

Contracting Officer. Services provided to the Government must be invoiced to the Government following the invoice instructions attached to this requirement.

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Services will be ordered by the issuance of individual Task Order Request for Quote (TORFQ) and the

TO will be priced and structured as appropriate depending on the nature of the services/deliverables required. Please note the following:

a. A written Task Order shall be the only basis for acquisition of services/deliverables under this contract.

b. The Task Order Request for Quote will be initiated directly with the contractor only by an NIH-

OGC Task Ordering Official.

c. The contractor shall be responsible for performance in accordance with the terms and conditions of the contract when a Task Order is placed by an NIH-OGC Task Ordering Official.

d. In the event that a contractor cannot accept work, due to either time and/or resource constraints, or a professional conflict of interest, the NIH-OGC Task Ordering Official may assign the work to another contractor.

e. With the approval of the NIH-OGC, a contractor, on a case-by-case basis, may use personnel other than KEY PERSONNEL to assist in the performance of tasks associated with a particular requirement. The use of these personnel should be the exception, not the rule. NIH-OGC must approve in writing the use of such personnel prior to the contractor using such personnel. If a contractor believes that such personnel will be needed on a routine basis, they must request

NIH-OGC approval to have them added as KEY PERSONNEL. A contract modification signed by the Contracting Officer constitutes approval of the update in Key Personnel. Such temporary personnel should be charged in the OTHER category on the Task order as

“SPECIALIZED PERSONNEL – [NAME].”

f. The Task Order must accurately reflect the labor mix that the contractor will actually use to perform the task described. For example, if the contractor plans to staff the task by using a

Partner, it WOULD NOT be appropriate to complete the Task Order Request for Quote estimate showing only an Associate’s time and then justify the substitution of personnel by saying the other staff used (in this example, the Partner) cost the Government the same amount or less (in other words, here, the Partner took less time) than using the staff originally proposed.

g. An NIH-OGC Task Ordering Official may request an alternative labor mix than that which may be quoted by the contractor on a Task Order Request for Quote estimate. If the NIH-OGC

Task Ordering Official and contractor cannot agree on the labor mix, the Task Order may not be awarded to the contractor and may be transferred to a different contractor.

3.1 TASK ORDER PROCEDURES

One or more Task Orders (TOs) may be issued during the performance period of this contract.

a. When the NIH-OGC Task Ordering Official identifies a specific requirement for work to be performed under this contract, NIH-OGC will originate a written Task Order Request for Quote

(TORFQ).

b. The TORFQ does not commit the NIH to pay any costs incurred in the submission of any quote, nor does it commit the NIH to award a Task Order for such services. The NIH intends for each

TORFQ to be negotiated into a resulting Task Order; however, there is no guarantee that a Task Order will be issued in every case.

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c. Upon receipt of the TORFQ, the contractor shall submit a quote. The quote (estimate) should provide details related to the performance of the task required including, (1) names of key personnel to perform the task, (2) labor hours required, and (3) a price estimate for completion of the task based on the labor hours for the particular Key Personnel who will perform the task and other anticipated charges

(fax, photocopy, Federal Express, PTO fees, etc.).

d. The estimate proposed by the contractor will reflect the proposed firm fixed price rate for the labor category in Article 1 of this document. Additional billing costs cannot be incurred on the Task

Order beyond what was proposed by the contractor and authorized by the Ordering Official for the task without prior authorization.

e. Upon receipt of the completed TORFQ documents the NIH-OGC Task Ordering Official will evaluate the quote for reasonableness and accuracy. Evaluation factors will include at a minimum, an assessment of price and the proposed personnel.

f. The signed Task Order and approved TORFQ will be sent to the contractor, thereby authorizing the contractor to begin work.

g. The contractor shall provide an invoice detailing the work performed when the deliverable for the task is completed. The contractor may invoice for interim work completed under a Task Order issued that involves foreign prosecution as long as the requirements of such a task have been completed to the satisfaction of the NIH-OGC Task Ordering Official.

h. When all ordered deliverables are determined to meet Task Order requirements, NIH-OGC will indicate receipt and authorize payment to the NIH Commercial Accounts Branch, Office of Financial

Management.

3.2 DELIVERY ORDER CONTRACT OMBUDSMAN

In accordance with FAR 16.505(b)(8), the following individual has been designated as the NIH

Ombudsman for task order and delivery order contracts.

[The appropriate individual will be included in the resultant contract as follows:]

For Non-R&D Contracts:

Dr. Kathryn Partin, Director of Research

Integrity

NIH Competition Advocate

1 Center Drive, Room 160, MSC 0151

Bethesda, MD 20892-0151

Phone: (301) 451-7764

E-mail: partinkm@nih.gov mailto:%20partinkm@nih.gov

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4. PERIOD OF PERFORMANCE

a. The period of performance of this contract shall be from August 26, 2023 through August 25, 2024.

b. If the Government exercises its option(s) pursuant to the OPTION PROVISION of this contract, the period of performance will be increased as listed below:

Option Option Period

Option Period One (1) August 26, 2024 – August 25, 2025

February 25, 2019 - February 24, 2020

February 25, 2019 - February 24, 2020

Option Period Two (2) August 26, 2025 - August 25, 2026

Option Period Three (3) August 26, 2026 - August 25, 2027

Option Period Four (4) August 26, 2027 - August 25, 2028

5. CONTRACTING OFFICER'S REPRESENTATIVE (COR)

The following Contracting Officer's Representative (COR) will represent the Government for this contract: To be determined at time of award

The COR is responsible for: (1) monitoring the Contractor's technical progress, including the surveillance and assessment of performance and recommending to the Contracting Officer changes in requirements; (2) interpreting the statement of work and any other technical performance requirements; (3) performing technical evaluation as required; (4) performing technical inspections and acceptances required by this contract; and (5) assisting in the resolution of technical problems encountered during performance.

[The alternate COR is responsible for carrying out the duties of the COR only in the event that the

COR can no longer perform his/her duties as assigned.]

The Contracting Officer is the only person with authority to act as agent of the Government under this contract. Only the Contracting Officer has authority to: (1) direct or negotiate any changes in the statement of work; (2) modify or extend the period of performance; (3) change the delivery schedule; (4) authorize reimbursement to the Contractor for any costs incurred during the performance of this contract; (5) otherwise change any terms and conditions of this contract; or (6) sign written licensing agreements. Any signed agreement shall be incorporated by reference in

Section K of the contract.

The Government may unilaterally change its COR designation.

6. METHOD OF ORDERING

a. Orders issued under this contract may be placed as follows: [X] in writing

[ ] via telephone

[ ] via facsimile (fax)

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[ ] via electronic mail (e-mail)

[ ] Oral [Oral Orders will be confirmed in writing within days of issuance.

[X] Other Specify: A Task Order/Delivery Order Number shall be given to you at the time the order is placed. The Contractor is cautioned not to accept an order unless one of these numbers is issued.

b. The Contracting Officer is authorized to issue orders and provide written confirmation of oral orders, if applicable, under the contract.

7. POST AWARD EVALUATION OF CONTRACTOR PERFORMANCE

a) Contractor Performance Evaluations

Interim and Final evaluations of Contractor performance will be prepared on this contract in accordance with FAR Subpart 42.15. The Final performance evaluation will be prepared at the time of completion of work. In addition to the Final evaluation, Interim evaluation(s) will be prepared annually at the end of each year (base and option years).

Interim and Final evaluations will be provided to the Contractor as soon as practicable after completion of the evaluation. The Contractor will be permitted thirty days to review the document and to submit additional information or a rebutting statement. If agreement cannot be reached between the parties, the matter will be referred to an individual one level above the

Contracting Officer, whose decision will be final.

Copies of the evaluations, Contractor responses, and review comments, if any, will be retained as part of the contract file, and may be used to support future award decisions.

b) Electronic Access to Contractor Performance Evaluations

Contractors may access evaluations through a secure Web site for review and comment at the following address: http://www.cpars.gov

8. REPORTING MATTERS INVOLVING FRAUD, WASTE AND ABUSE

Anyone who becomes aware of the existence or apparent existence of fraud, waste and abuse in

NIH funded programs is encouraged to report such matters to the HHS Inspector General's Office in writing or on the Inspector General's Hotline. The toll-free number is 1-800-HHS-TIPS (1-800-

447-8477). All telephone calls will be handled confidentially. The website to file a complaint on-line is: http://oig.hhs.gov/fraud/hotline/ and the mailing address is:

US Department of Health and Human Services

Office of Inspector General

ATTN: OIG HOTLINE OPERATIONS

P.O. Box 23489

Washington, D.C. 20026 http://www.cpars.gov/ http://oig.hhs.gov/fraud/hotline/

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9. REPORTING REQUIREMENTS

All reports required herein shall be submitted in electronic format. In addition, one hardcopy of each report shall be submitted to the Contracting Officer or to the Contracting Officer Representative (COR) as noted.

All electronic reports submitted shall be compliant with Section 508 of the Rehabilitation Act of 1973.

Additional information about testing documents for Section 508 compliance, including guidance and specific checklists, by application, can be found at: http://www.hhs.gov/web/508/index.html under

"Making Files Accessible."

All paper/hardcopy documents/reports submitted under this contract shall be printed or copied, double-sided, on at least 30 percent post-consumer fiber paper, whenever practicable, in accordance with FAR

4.302(b).

10. ACKNOWLEDGEMENT OF FEDERAL FUNDING

The Contractor shall clearly state, when issuing statements, press releases, requests for proposals, bid solicitations and other documents describing projects or programs funded in whole or in part with

Federal money: (1) the percentage of the total costs of the program or project which will be financed with Federal money; (2) the dollar amount of Federal funds for the project or program; and (3) the percentage and dollar amount of the total costs of the project or program that will be financed by nongovernmental sources.

11. KEY PERSONNEL (HHSAR 352.237-75) (December 18, 2015)

The key personnel specified in this contract are considered to be essential to work performance. At least

30 days prior to the Contractor voluntarily diverting any of the specified individuals to other programs or contracts the Contractor shall notify the Contracting Officer and shall submit a justification for the diversion or replacement and a request to replace the individual. The request must identify the proposed replacement and provide an explanation of how the replacement's skills, experience, and credentials meet or exceed the requirements of the contract (including, when applicable, Human Subjects Testing requirements). If the employee of the Contractor is terminated for cause or separates from the

Contractor voluntarily with less than thirty days’ notice, the Contractor shall provide the maximum notice practicable under the circumstances. The Contractor shall not divert, replace, or announce any such change to key personnel without the written consent of the Contracting Officer. The contract will be modified to add or delete key personnel as necessary to reflect the agreement of the parties.

(End of clause)

The following individual(s) is/are considered to be essential to the work being performed hereunder:

Name Title

To be inserted at award Senior Partner II

12. FAR AND HHSAR CLAUASES INCORPORATED BY REFERENCE

This contract incorporates one or more clauses by references, with the same force and effect as If they were given in full text. Upon request, the Contracting Officer will make their full text available. Also, the full text of a clause may be accessed electronically at this address: https://www.acquisition.gov/.

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52.204-13, System for Award Management Maintenance (SAM) (Oct. 2018)

52.204-19, Contractor’s Rep. and Certs. including those submitted via SAM (Dec. 2014)

52.212-1 Instructions to Offerors—Commercial Items (March 2023)

52.212-4 Contract Terms and Conditions—Commercial Items (Dec 2022)

52.219-9, Small Business Subcontracting Plan (Oct. 2022)

52.232-18, Availability of Funds (April 1984)

52.237-3, Continuity of Services (January 1991)

52.242-15, Stop Work Order (August 1989)

52.242-17, Government Delay of Work (April 1984)

52.246-4, Inspection of Services - Fixed Price (August 1996)

DEPARTMENT OF HEALTH AND HUMAN SERVICES ACQUISITION REGULATION

(HHSAR) CLAUSES:

HHSAR Clause No. Date Title

303.808-70 Dec 2015 Solicitation provision and contract clause

352.203-70 Dec 2015 Anti-Lobbying

352.224-71 Dec 2015 Confidential Information

352.237-75 Dec 2015 Key Personnel

The following FAR Provisions/Clauses are provided in full and incorporated by reference.

-FAR 52.212-3 Offeror Representations and Certifications—Commercial Items (Dec 2022)-Offerors are required to include a completed copy of the provision in their business proposal. See Attachment #1

-FAR Clause 52.212-5 Contract Terms and Conditions Required to Implement Statutes or Executive

Orders—Commercial Item (June 2023). See Attachment #2.

1. FAR Clause 52.216-18, Ordering (August 2020)

a. Any supplies and services to be furnished under this contract shall be ordered by issuance of delivery orders or task orders by the individuals or activities designated in the Schedule. Such orders may be issued until the contract expiration date.

b. All delivery orders or task orders are subject to the terms and conditions of this contract. In the event of conflict between a delivery order or task order and this contract, the contract shall control.

c. If mailed, a delivery order or task order is considered "issued" when the

Government deposits the order in the mail. Orders may be issued orally, by facsimile, or by electronic commerce methods only if authorized in the Schedule.

2. FAR Clause 52.216-19, Order Limitations (October 1995)

a. Minimum Order. When the Government requires supplies or services covered by this contract in an amount of less than $300, the Government is not obligated to purchase, nor is the Contractor obligated to furnish, those supplies or services under the contract.

b. Maximum Order. The Contractor is not obligated to honor--

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i. Any order for a single item in excess of $500,000

ii. Any order for a combination of items in excess of the total contract amount; or

iii. A series of orders from the same ordering office within 15 days that together call for quantities exceeding the limitation in subparagraph (1) or

(2) above.

c. If a requirements contract (i.e., includes the Requirements clause at subsection 52.216-

21 of the Federal Acquisition Regulation (FAR)), the Government is not required to order a part of any one requirement from the Contractor if that requirement exceeds the maximum-order limitations in paragraph (b) of this section.

d. Notwithstanding paragraphs (b) and (c) above, the Contractor shall honor any order exceeding the maximum order limitations in paragraph (b), unless that order (or orders) is returned to the ordering office within 3 days after issuance, with written notice stating the Contractor's intent not to ship the item (or items) called for and the reasons.

Upon receiving this notice, the Government may acquire the supplies or services from another source.

3. FAR Clause 52.216-22, Indefinite Quantity (October 1995)

a. This is an indefinite-quantity contract for the supplies or services specified, and effective for the period stated, in the Schedule. The quantities of supplies and services specified in the Schedule are estimates only and are not purchased by this contract.

b. Delivery or performance shall be made only as authorized by orders issued in accordance with the Ordering clause. The Contractor shall furnish to the Government, when and if ordered, the supplies or services specified in the Schedule up to and including the quantity designated in the Schedule as the "maximum." The Government shall order at least the quantity of supplies or services designated in the Schedule as the "minimum."

c. Except for any limitations on quantities in the Order Limitations clause or in the Schedule, there is no limit on the number of orders that may be issued. The Government may issue orders requiring delivery to multiple destinations or performance at multiple locations.

d. Any order issued during the effective period of this contract and not completed within that period shall be completed by the Contractor within the time specified in the order. The contract shall govern the Contractor's and Government's rights and obligations with respect to that order to the same extent as if the order were completed during the contract's effective period; provided, that the Contractor shall not be required to make any deliveries under this contract after the expiration of the contract.

4. FAR Clause 52.217-8, Option to Extend Services (November 1999)

The Government may require continued performance of any services within the limits and at the rates specified in the contract. These rates may be adjusted only as a result of revisions to prevailing labor rates provided by the Secretary of Labor. The option provision may be exercised more than once, but the total extension of performance hereunder shall not exceed 6 months. The Contracting Officer may exercise the option by written notice to the Contractor within 30 days prior to the expiration date of the contract.

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5. FAR Clause 52.217-9, Option to Extend the Term of the Contract (March 2000)

a. The Government may extend the term of this contract by written notice to the Contractor prior to the expiration date; provided that the Government gives the Contractor a preliminary written notice of its intent to extend at least 30 days before the contract expires. The preliminary notice does not commit the Government to an extension.

b. If the Government exercises this option, the extended contract shall be considered to include this option clause.

c. The total duration of this contract, including the exercise of any options under this clause, shall not exceed five (5) years.

6. FAR Clause 52.232-19, Availability of Funds for the Next Fiscal Year (April 1984)

Funds are not presently available for performance under this contract beyond the Government's

Current Fiscal Year. The Government's obligation for performance of this contract beyond that date is contingent upon the availability of appropriated funds from which payment for contract purposes can be made. No legal liability on the part of the Government for any payment may arise for performance under this contract beyond the Government's Current Fiscal Year, until funds are made available to the Contracting Officer for performance and until the Contractor receives notice of availability, to be confirmed in writing by the Contracting Officer.

7. FAR Clause 52.212-2 Evaluation—Commercial Products and Commercial Services (Nov

2021)

a) The Government will award a contract resulting from this solicitation to the responsible offeror whose offer conforming to the solicitation will be most advantageous to the

Government, price and other factors considered. The following factors shall be used to evaluate offers: (See TECHNICAL EVALUATION FACTORS below).

Technical and past performance, when combined, are significantly more important than cost or price.

b) Options. The Government will evaluate offers for award purposes by adding the total price for all options to the total price for the basic requirement. The Government may determine that an offer is unacceptable if the option prices are significantly unbalanced. Evaluation of options shall not obligate the Government to exercise the option(s).

c) A written notice of award or acceptance of an offer, mailed or otherwise furnished to the successful offeror within the time for acceptance specified in the offer, shall result in a binding contract without further action by either party. Before the offer’s specified expiration time, the Government may accept an offer (or part of an offer), whether or not there are negotiations after its receipt, unless a written notice of withdrawal is received before award.

13. SMALL BUSINESS SUB-CONTRACTING PLAN

a. Small Business Subcontracting Plan

1. In accordance with FAR 19.704 and FAR Clause 52.219-9, the submission of a subcontracting plan by other than small business offeror( s) is a requirement as a part of the

- 18 -proposal submission process and is to be submitted separately from the technical and cost proposals. An offeror's subcontracting plan must be determined to be acceptable, by the

Contracting Officer, prior to the contract award.

2. The failure of any Contractor or subcontractor to comply in good faith with FAR Clause

52.219-8, entitled " Utilization of Small Business Concerns" incorporated in this contract and the attached Subcontracting Plan, will be a material breach of such contract or subcontract and subject to the remedies reserved to the Government under FAR Clause 52.219-16 entitled, "Liquidated Damages- Subcontracting Plan."

b. Subcontracting Reports

1. An offeror is to submit their respective subcontracting plan electronically using the U.S.

Department of Health and Human Services (HHS) Small Business Customer Experience

(SBCX) system at https://osdbu.hhs.gov . The offeror shall follow the instructions outlined in the SBCX Industry Guide at: https://oamp.od.nih.gov/nih-document-generation-system/dgs-workform-information/attachment-files-section-j to successfully submit their subcontracting plan by the proposal submission deadline.

2. The official point of receipt for determining timely submission of an offeror's subcontracting plan is the SBCX system and/or email notification. Once the subcontracting plan is successfully submitted in the SBCX system the offeror should receive an email notification and confirmation message of completion upon submission.

3. If an offeror's subcontracting plan is not confirmed as received within the SBCX system by the proposal submission date specified in the solicitation, it will be considered late in accordance with subparagraph (c)(3) of FAR Clause 52.215-1, Instructions to Offeror-

Competition Acquisition. Disposition of late submittals of a subcontracting plan by an offeror via the SBCX system is at the discretion of the Contracting Officer.

4. Any technical questions regarding the use of the SBCX system may be submitted via email message to the SBCX help desk at client.support@apexlogic.com. The client support hours of operation are Monday - Friday, 6:00 a.m. - 8:00 p.m. Eastern Standard Time (EST). Note:

help desk tickets can be submitted 24 hours a day / 7 days a week and a representative will respond within the presented client support hours of operation for assistance.

5. Individual Subcontract Reports (ISR)

Regardless of the effective date of this contract, the Report shall be due on the following dates for the entire life of this contract:

April 30th

October 30th

Expiration Date of Contract

6. Summary Subcontract Report ( SSR)

Regardless of the effective date of this contract, the Summary Subcontract Report must be submitted annually on the following date for the entire life of this contract:

October 30th

For both the Individual and Summary Subcontract Reports, the

[Contracting Officer/Contract Specialist/title of alternate designee] must be included as a contact for notification purposes at the following e-mail address: ajaooj@mail.nih.gov https://osdbu.hhs.gov/ https://oamp.od.nih.gov/nih-document-generation-system/dgs-workform-information/attachment-files-section-j https://oamp.od.nih.gov/nih-document-generation-system/dgs-workform-information/attachment-files-section-j mailto:client.support@apexlogic.com

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14. EVALUATION OF AWARD

Selection of an offeror for contract award will be based on an evaluation of proposals against the factors outlined below. Although technical factors are of paramount consideration in the award of the contract, past performance and cost/price are also important to the overall contract award decision. All technical evaluation factors when combined, are significantly more important than cost/price. The Government intends to make an award(s) to that offeror whose proposal provides the best overall value to the Government.

15. TECHNICAL EVALUATION FACTORS

The evaluation factors are used by the technical evaluation committee when reviewing the technical proposals. The factors below are listed in the order of relative importance with weights assigned for evaluation purposes.

(1) Technical/Administrative Approach (40 Points)

Offeror must develop and present a project plan that demonstrates the ability to perform each of the functions delineated in the Statement of Work.

This plan also should describe procedures and mechanisms to ensure the achievement of stated goals and objectives in a timely and accurate fashion - including transition or implementation plans at the beginning and end of the contract - and identify potential problems and possible solutions.

This factor will be scored by an evaluation of the knowledge of the subject area exhibited in the proposal and the feasibility and thoroughness of the offeror's proposed course of action.

(2) Personnel (35 Points)

Offerors must provide a staffing plan and an explanation of how proposed staff will be involved in any resulting work. Resumes of proposed contract staff should demonstrate competence and qualifications. Special emphasis will be placed on experience handling administrative cases

(oppositions and cancellations) before the Trademark Trial and Appeal Board (TTAB) from inception of the case through oral argument/hearing at the TTAB, complex trademark issues, anticounterfeiting matters, including brand monitoring and take down of items from online platforms, as well as with handling international trademark counseling, prosecution, registration, and disputes (administrative cases). If such personnel are not currently available in-house, there should be discussion of contingent hires with letters of intent provided. Proposals will be evaluated by determining if the proposed staff has appropriate experience for the completion of the work required in a timely manner.

(3) Corporate Experience (25 Points)

Offeror must demonstrate significant organizational experience. A strong and deeply staffed corporate infrastructure will be necessary to make sure that there are sufficient personnel to satisfy the expected episodic need for filing labor intensive oppositions and other administrative dispute remedies, as well as handling a myriad of other work, including anticounterfeiting work and matters involving complex trademark issues. This experience will be evaluated for quality and relevance to the required Statement of Work as a predictor of the offeror's ability to successfully perform the required work in a timely manner.

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Past Performance Factor

Offerors' past performance information will be evaluated for the offerors most likely to receive an award.

The Government will evaluate the offeror's past performance based on information obtained from references provided by the offeror, other relevant past performance information obtained from other sources known to the Government, and any information supplied by the offeror concerning problems encountered on the identified contracts and corrective action taken.

The Government will assess the relative risks associated with each offeror. Performance risks are those associated with an offeror's likelihood of success in performing the acquisition requirements as indicated by that offeror's record of past performance.

The assessment of performance risk is not intended to be a product of a mechanical or mathematical analysis of an offeror's performance on a list of contracts but rather the product of subjective judgment by the Government after it considers relevant information.

When assessing performance risks, the Government will focus on the past performance of the offeror as it relates to all acquisition requirements, such as the offeror's record of performing according to specifications, including standards of good workmanship; the offeror's record of controlling and forecasting costs; the offeror's adherence to contract schedules, including the administrative aspects of performance; the offeror's reputation for reasonable and cooperative behavior and commitment to customer satisfaction; and generally, the offeror's business-like concern for the interest of the customer.

The Government will consider the currency and relevance of the information, source of the information, context of the data, and general trends in the offeror's performance.

The lack of a relevant performance record may result in an unknown performance risk assessment, which will neither be used to the advantage nor disadvantage of the offeror.

16. GENERAL PROPOSAL INSTRUCTIONS

The proposal must be signed by an official authorized to bind your organization and must stipulate that it is predicated upon all the terms and conditions of this RFP. It should state the length of time the proposal is firm, and the designation of those personnel authorized to conduct negotiations. The

Offeror is responsible for all costs associated with the preparation, submittal, presentation, and evaluation of any proposal. Electronic proposals (Technical and Business) shall be in Microsoft

Word, Excel, PowerPoint, or Adobe Acrobat. NIH uses Microsoft Office 2013.

To expedite the proposal evaluation, all documents required for responding to the SOLICITATION should consist of the following parts:

I. TECHNICAL PROPOSAL

It is recommended that the technical proposal consist of a cover page, a table of contents, and the information requested in the Technical Proposal Instructions.

II. BUSINESS PROPOSAL

It is recommended that the business proposal consist of a cover page, a table of contents, and the information requested in the Business Proposal Instructions.

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III. SUB CONTRATING PLAN

In accordance with FAR Part 19.7, the offeror will need to submit a small business subcontracting plan with their proposal (unless the offeror is a small business).

Offerors must respond to this solicitation as all or none (including option year…