Payment of Patent Maintenance and Annuity Fees

The Office of Acquisitions (OA), Office of Logistics and Acquisition Operations (OLAO), on behalf of the Office of Technology Transfer (OTT) at the National Institutes of Health (NIH), intends to solicit, negotiate, and award a contract on a competitive basis for the purpose of providing payment of patent maintenance and annuity fees for the patent protection of inventions of the NIH and Centers for Disease Control and Prevention (CDC) employees in the United States and foreign countries.  The OTT, NIH, intends to award an Indefinite Delivery Indefinite Quantity contract with a one-year base period plus four (4) one-year option periods.  Option years will be exercised at the sole discretion of the Government.

BACKGROUND

Pursuant to the Federal Technology Transfer Act (FTTA) of 1986, the NIH Office of Technology Transfer (OTT) is responsible for certain aspects of the technology transfer programs for the NIH and CDC.  An important part of the Act is obtaining and maintaining patent protection for the inventions of NIH and CDC employees.  The OTT assists in pursuit of patent prosecution in the United States and a number of foreign countries primarily under the terms of the Patent Cooperative Treaty (PCT) but may file patent applications in countries not under the terms of the PCT. Worldwide patent filings may provide an incentive for a company to license the technology and bring the drug/therapy to market.

Countries worldwide, including the United States, typically require that patent annuity and/or maintenance fees be paid.  If the fees are not paid in a timely manner, patent applications or patents will lapse and have no further enforcement or intellectual property value.  These worldwide patent applications may be licensed to companies who may use the patent or sell commercial products in one or more countries and remit royalties to the NIH. The licensing royalties are provided to the Institute and Centers (ICs) and the inventors. The NIH and CDC could lose millions of dollars in potential royalties if these patent application/patents were to lapse due to non-payment of annuity fees.

THIS IS A SYNOPSIS, NOT A REQUEST FOR PROPOSAL (RFP).  A RFP WILL BE AVAILABLE ON OR ABOUT MARCH 29, 2022 ON www.SAM.gov.  Prospective offerors are responsible for downloading the solicitation and amendments.  It is the offeror’s responsibility to monitor www.SAM.gov for the release of the solicitation and amendments.  Hard copies will be provided to individuals eligible under the American with Disability Act and Rehabilitation Act upon request.

Note:  This synopsis follows Small Business Sources Sought Notice No. HHS-NIH-OD-OLAO-SS-22-005 that was released on January 6, 2022.