SOLICITATION NOTICE
R -- Patent Prosecution Services
- Notice Date
- 11/21/2013
- Notice Type
- Combined Synopsis/Solicitation
- NAICS
- 541199
— All Other Legal Services
- Contracting Office
- HPODUS Environmental Protection AgencyAriel Rios Building1200 Pennsylvania Avenue, N. W.Mail Code: 3803RWashingtonDC20460
- ZIP Code
- 20460
- Solicitation Number
- RFQ-DC-14-00024
- Response Due
- 12/13/2013
- Archive Date
- 1/12/2014
- Point of Contact
- Stefan Martiyan or Tina M Nevitt
- Small Business Set-Aside
- Total Small Business
- Description
- This requirement is for patent prosecution services for an invention developed by EPA scientists and other named individuals. All questions need to be submitted no later than 11:00am Tuesday, November 26, 2013 electronically to nevitt.tina@epa.gov. For a copy of the SF 18 and notice of invention by the inventors, please submit your request electronically. This requirement is to suport EPA Case 778-13: Vane, et. al. BACKGROUND: The purpose of this requirement is to provide nonpersonal services for the preparation and filing of a patent application for the invention for Environmental Protection Agency (EPA) Case No. 778-13, ?Permselective Membranes with Tunable Properties.? The invention was developed by Leland Vane and Vasudevan Namboodiri of EPA, along with Michael Abar, a Senior Environmental Employment Program enrollee working at EPA and Gui Lin, a post-doctorate research associate from the National Research Council, also working at EPA. The invention discloses a membrane that can dehydrate solvent streams using traditional pervaporation/vapor permeation separation processes. The inventors believe that this membrane is the first of its kind. SCOPE OF WORK: The contractor shall prepare a document in the form of a US patent application for the invention in EPA Case No. 778-13. The application must, in form and substance, comply with the US patent laws (Title 35 U.S. Code) and the regulations of the US Patent and Trademark Office (PTO) and the Patent Cooperation Treaty (PCT). TASKS/REQUIREMENTS: The order resulting from this request shall include the following tasks (for other direct costs the contractor shall include an estimated price/cost for those item, but the contractor shall only be reimbursed for the actual price/cost and their approved G&A rate stated in the resultant order): Task 1 ? Patent Application: The contractor shall submit a draft patent application to the EPA Patent Attorneys and inventors for review prior to preparation of final documents. The EPA Patent Attorneys will authorize preparation of the final documents once the draft application is approved. The contractor shall submit the draft application within two weeks of obligation. If for some reason this time frame cannot be met, the contractor shall immediately contact the EPA Patent Attorneys to determine a revised scheduled date. The EPA Patent Attorneys may authorize filing of the draft as formal patent application, and a revised draft as a US continuation-in-part application at a later date. Once the EPA Patent Attorneys authorize the preparation of the final version of the US patent application, the contractor shall prepare the final version within one week of the date that authorization was given. Copies of the final version of the patent application shall be forwarded concurrently to the inventor for execution and to the EPA Patent Attorneys. The Power of Attorney shall include Laura Scalise, Reg. No. 45,778 and Randall Cherry, Reg. No. 51,556 and may include any and all registered patent attorneys and patent agents of the contractor. Upon execution of the final US version by the inventor, the contractor shall receive said executed application and, shall promptly file the application in the PTO. If instructed by the EPA Patent Attorneys, the contractor shall file unsigned copies of the patent application, and prepare the appropriate execution documents for late filing in accordance with PTO procedures. As indicated above, if instructed by the EPA Patent Attorneys, the contractor shall file the draft application as a formal US application, with the understanding that the final version will be filed as a continuation-in-part application. Also, if instructed by the EPA Patent Attorneys, the executed US application shall be transmitted to the EPA Patent Attorneys for filing. The contractor shall file with the formal US application a 1.102(c) petition-to-make-special, citing utility of the invention for materially enhancing the quality of the environment. There is no filing fee for this petition. (See MPEP 708.02 section V.) Task 2 ? Information Disclosure Statement: The contractor shall prepare and file an Information Disclosure Statement once information regarding prior art is provided to or becomes known to the contractor. The Information Disclosure Statement must comply with PTO regulations. Task 3 ? Assignment Documents: The contractor shall prepare and forward assignment documents for execution by the inventors and shall file the executed assignment documents in the PTO. EPA Patent Attorneys can provide a template if needed. The Assignee is the United States Government, as represented by the Administrator of the US EPA. Task 4 ? US Drawings: If the informal patent drawings provided by the EPA are likely to be unacceptable by the PTO and formal patent drawings are necessary, the contractor shall obtain approval from the EPA Patent Attorneys for this service. The contractor shall provide an estimate of drawing costs in their proposal. Should the actual cost exceed the NTE amount, the contractor shall contact the Contracting Officer (CO) and EPA Patent Attorneys immediately, so that the purchase order can be modified. Task 5 ? Official Actions: The contractor shall include in their proposal an allowance for up to two hours of telephonic discussions and negotiations with the PTO and for preparation of routine documents - including but not limited to telephonic conversations about restriction requirements or Examiner?s amendments, and the like. The contractors shall advise the EPA Patent Attorneys of the unofficial PTO application serial number as soon as the contractor receives it. The contractor shall also forward a copy of official actions received from the PTO along with a copy of each item of cited prior art to the EPA Patent Attorneys. However, the contractor shall not prepare a response to the actions unless a purchase order for the work is issued by the EPA or the purchase order currently active for this patent application is modified. Task 6 ? Restriction Requirement: It is possible that the Examiner will issue an office action in the form of a restriction requirement. The contractor shall include in their proposal the cost for replying to a restriction requirement. Task 7 ? US Fees: The contractor shall pay the necessary filing fees subject to reimbursement by the EPA under this purchase order. The contractor will only be reimbursed for the actual fees and their G&A. Should the actual cost exceed the amount allowed in the purchase order, the contractor shall contact the CO and EPA Patent Attorneys immediately so that the purchase order can be modified. CONTINUED PROSECUTION AND PRESERVATION OF FILES: The contractor shall be aware that the EPA reserves the right to continue prosecution on its own or by contracting with another law firm. Accordingly, the contractor shall maintain a complete file of work done and of correspondence with the PTO, and if directed by the EPA, return the files or transfer the files to the EPA using the most cost effective means to transfer the files. CONTINUED PROSECUTION: For each office action subsequent to any restriction requirement, the contractor shall forward the action along with a quote for responding to the office action to the EPA Patent Attorneys within a week of the mailing date on the action. The contractor shall not answer the office action until a purchase order for the work is received. The quote shall be for the actual costs of the US PTO fees with the approved G&A cost, and the attorney?s legal costs with an explanation of the legal costs (number of hours, etc.).
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