SOURCES SOUGHT
R -- Sources Sought Businesses and Organizations capable of providing trademark legal services
- Notice Date
- 8/4/2006
- Notice Type
- Sources Sought
- NAICS
- 541110
— Offices of Lawyers
- Contracting Office
- Department of Health and Human Services, National Institutes of Health, National Cancer Institute, Office of Acquisitions, 6120 Executive Blvd. EPS Suite 600, Rockville, MD, 20852
- ZIP Code
- 20852
- Solicitation Number
- Reference-Number-SS-NCI-NA
- Response Due
- 8/17/2006
- Archive Date
- 9/1/2006
- Description
- This sources sought announcement for the National Cancer Institute, Technology Transfer Branch is seeking market information on businesses/organizations capable of providing trademark legal services. THIS SOURCES SOUGHT ANNOUNCEMENT IS NOT A REQUEST FOR PROPOSAL AND THE GOVERNMENT IS NOT COMMITTED TO AWARD A CONTRACT PURSUANT TO THIS ANNOUNCEMENT. NO SOLICITATION PACKAGE IS AVAILABLE AT THIS TIME AND REQUESTS FOR SOLICITATION PACKAGES WILL NOT RECEIVE A RESPONSE. The applicable NAICS code is 541110 and the Size Standard is $6.5M average annual receipt for the preceding three fiscal years. This Sources Sought Synopsis is in support of market research being conducted by the NCI to identify capable potential sources. The purpose of this Sources Sought Synopsis is to determine if there are potential small businesses who are capable of performing this effort. If this acquisition is determined to be reserved for small business, the Government will use this information gathered from this Sources Sought Synopsis to help identify small business firms participating in this market. Background: Trademark law in particular is a highly specialized field requiring knowledge of a variety of statutes, familiarity with the administrative practices of the U.S. Patent & Trademark Office (PTO), and a working knowledge of the case law concerning the use and licensing of marks. Non-attorneys-including representatives of corporate entities ? are forbidden by law from representing another party in a trademark matter. The Office of the General Counsel (OGC) for the National Institutes of Health (NIH) has authority to conduct all trademark-related work on behalf of all the agencies in the Public Health Service PHS). The TTB of the NCI is primarily responsible for negotiating certain research agreements relating to technology development, for example, Material Transfer Agreements, Confidential Disclosure Agreements, Clinical Trial Agreements, and Cooperative Research and Development Agreements. These agreements facilitate the research of NIH?s scientists whenever their projects require interaction with the private sector. Proposed Statement of Work for Information Only. Technical Requirements: A) Direct Action. Handle specified tasks regarding particular marks. The contractor shall provide quality service and a high level of effort consistent with legal standards established in the American Bar Association?s Model Rules of Professional Conduct, combined with both regular and as-requested updates to TTB regarding the status of each case. B) Direct Mark Searches and Prosecution. For unregistered marks, contractor may be requested to conduct portions or all of the prosecution of the mark. TTB anticipates two marks per year where the contractor interacts directly with PTO for the entire prosecution of new marks. These steps include: searching for existing marks that have senior rights; preparing the PTO trademark application; filing the trademark application in the PTO; and preparing legal memoranda for a formal reply to PTO Office Actions; and preparing any auxiliary documentation required by the PTO to allow registration. C) Direct Maintenance and Licensing of Marks and Conducting Oppositions. For registered marks, contractor may be requested to maintain the mark and/or handle the negotiation and drafting of one or more licenses of the mark. The contractor shall provide a monthly report of the status and action due dates of all applications and registrations managed by TTB. This report shall include, listing of due dates for affidavits of use, renewal dates, and response dates for office actions. In addition, the contractor must establish a procedure for specifically reminding TTB one year prior to the due date of any maintenance document that must be filed in the PTO, e.g. Section 8 Affidavits. Contractor shall provide written formal or informal recommendations on the strategy of filing any particular Opposition or Cancellation and TTB may request that the Contractor prepare and file some or all of the documents required for these proceedings. D) Direct Conduct of Foreign Interactions. Provide assistance in formal interactions with any trademark office in a foreign country regarding A PHS mark registered in the United States. Upon request by TTB, the contractor shall conduct those interactions on behalf of TTB. The contractor shall be responsible for ensuring that the procedural requirements and actions imposed by the foreign trademark office are communicated to TTB, that the procedural requirements and actions are met at the earliest time that is reasonable under the circumstances and at least no later than any deadlines established by the foreign trademark office. E) Training. At the request of TTB, contractor shall provide training to TTB staff in the filing, prosecution, and maintenance of trademark applications and registrations. Such training is expected to be in the range of 6-18 hours per year. In addition, when a change in trademark law directly affects how TTB handles trademark matters, the contractor shall provide written notice of such change, and shall provide training in the change, if requested by TTB. The contractor may be required to design and produce training materials which can be used as a reference or other resource for TTB to use both during and after the training. F) Contractor Staff Expertise and Demonstration of Intellectual Property Training and Expertise. Contractor shall demonstrate that it will assign to this contract at least three (3) attorneys with sufficient expertise to perform the services of this contract. Contractor shall be a law firm that specializes exclusively in intellectual property law. Contractor shall have at least three (3) attorneys and support staff with expertise in trademark law and who practice trademark law almost exclusively. These attorneys shall be permanent employees of the firm and shall not be outside consultants hired only when trademark services are required. G) TTB may request that contractor meet in person with Public Health Service trademark owners at the NIH on short notice. Therefore, the contractor must be a local firm with its home office(s) in the Metropolitan Wasington, DC area (Washington, DC, Virginia, or Maryland). Qualifications: Attorneys must have graduated from an American Bar Association approved law school and must be admitted to the practice of law in at least one (1) state. Experience for lawyers assigned to the contract shall include at least two (2) years of experience in trademark law for junior lawyers and at least five (5) years of experience for senior legal staff. Attorneys must have publications in the field of trademark law and must list their publications. Attorneys must have teaching experience, must list their past experience in providing training in trademark law outside of their own law firm. At least one partner who practices trademark law exclusively and two other attorneys who practice trademark law exclusively. These attorneys must be members of the law firm, not outside consultants. The partner shall spend all of his or her time in the field of trademark law. There must be an attorney in the law firm who specializes in litigation of trademark cases, experience must be summarized. The law firm must demonstrate the procedures they normally use to conduct mark searches, mark prosecution, mark maintenance and the procedures that they have in place to interact with foreign law firms for foreign trademark prosecution. The law firm must demonstrate the type of access that they have to the necessary trademark searching tools, both U.S. and foreign. ANY INTERESTED FIRM should submit a capability statement (restricted to 15 pages) which demonstrates the firm?s ability to perform the key requirements described above. Standard company brochures will not be considered a sufficient response to this Source Sought Synopsis. At a minimum, each small business shall provide capabilities/knowledge/experience necessary to perform the Statement of Work (SOW). Also, a firm must demonstrate they have the necessary personnel with demonstrated experience, facilities and equipment to provide the service detailed in the Statement of Work (SOW). Responses must reference Request for Information (RFI) number RFI-NCI-60132-NA and include the following: (1) Name and Address of the Organization, (2) Type of business (i.e. small business, disadvantaged, women-owned, veteran-owned etc), (3) Point of contact with name, title, phone, fax and email, (4) DUNS number, (5) Contractors capability statement addressing the issues listed above, (7) List of organizations to whom similar types of services have been previously provided to include contract number, dollar value, name and phone number of contracting officer. THIS SYNOPSIS IS FOR INFORMATION AND PLANNING PURPOSES ONLY AND IS NOT TO BE CONSTRUED AS A COMMITMENT BY THE GOVERNMENT. THIS IS NOT A SOLICITATION ANNOUNCEMENT AND NO CONTRACT WILL BE AWARDED FROM THIS ANNOUNCEMENT. NO REIMBURSEMENT WILL BE MADE FOR ANY COSTS ASSOCIATED WITH PROVIDING INFORMATION IN RESPONSE TO THIS ANNOUNCEMENT AND ANY FOLLOW-UP INFORMATION REQUESTS. RESPONDENT WILL NOT BE NOTIFIED OF THE RESULTS OF THE EVALUATION. ALL INFORMATION SUBMITTED IN RESPONSE TO THIS ANNOUNCEMENT MUST BE RECEIVED ON OR BEFORE TH CLOSING DATE. THE CLOSING DATE FOR RESPONSES IS AUGUST 17, 2006 AT 1PM EDT. Faxed and emailed capability statements are NOT authorized. All questions must be in writing and may emailed to Renita Smith at smithren@mail.nih.gov or faxed (301) 402-4513. It is the vendor?s responsibility to call (301) 402-4509 and verify that questions were received.
- Place of Performance
- Address: Bethesda, Maryland
- Zip Code: 20892
- Country: UNITED STATES
- Zip Code: 20892
- Record
- SN01106647-W 20060806/060804220426 (fbodaily.com)
- Source
-
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