SOURCES SOUGHT
R -- Payment of Patent Maintenance and Annuity Fees
- Notice Date
- 3/3/2017
- Notice Type
- Sources Sought
- NAICS
- 541990
— All Other Professional, Scientific, and Technical Services
- Contracting Office
- Department of Health and Human Services, National Institutes of Health, Office of Administration, 6011 Executive Blvd, 5th Floor, Rockville, Maryland, 20852-3804, United States
- ZIP Code
- 20852-3804
- Solicitation Number
- HHS-NIH-OD-OLAO-SS-17-005
- Archive Date
- 4/30/2017
- Point of Contact
- Sheryn N. Etti, Phone: 3015943560
- E-Mail Address
-
ettis@mail.nih.gov
(ettis@mail.nih.gov)
- Small Business Set-Aside
- N/A
- Description
- This is a Small Business Sources Sought Notice. This is not a solicitation for proposals, proposal abstracts, or quotations. The National Institutes of Health (NIH), Office of Technology Transfer (OTT), is conducting a market survey to ascertain the availability and potential capability of potential offerors to provide payment of patent maintenance and annuity fees in the United States and foreign countries. OTT is seeking an organization to provide the services as outlined in the requirements below. Potential offerors need to be able to demonstrate their ability to provide the services. The anticipated period of performance is a one-year base period with four (4) one-year option periods. 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 IC 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. SCOPE The nature of the activities is for the Contractor to undertake the part of the Government tracking of patent cases in order to pay the approximately 3,000/year annuity or patent fees to maintain the patents and patent applications in the United States and foreign countries. The United States and each foreign country have different requirements, time frames, and fees to pay. Payment of annuities is not an inherent Governmental function. Failure to follow the appropriate steps will cause the U.S. Government to lose intellectual property rights in the United States and foreign countries. Such a loss has a serious and direct effect on the Government. First, there would be a dramatic loss since all costs and efforts to date to establish the patent(s) would be lost. This would be a substantial amount since years of efforts may have been undertaken and significant financial investments have been made to establish the patent rights in the United States and the foreign countries. Second, there is a direct loss of income from licensing of the patent in the United States or the foreign countries. Depending on the technology, this can amount to millions of dollars annually for the past period of patent protection, which may be up 20 years from date of initial patent filing. Third, there is the cost of damage to the marketability of the product in the United States and the foreign countries. If the OTT, on behalf of the NIH and CDC fails to maintain a patent, any entity in that country may take the technology and manufacture it without concern as to the rights or payment fees to the inventors and/or assignee, in this instance, the U.S. Government. OBJECTIVES Safely and efficiently maintain, monitor, and effect annuity, maintenance fee, and/or renewal fee of NIH and CDC patent portfolios. Establish efficient means of communications between the NIH and the Contractor. REQUIREMENTS Independently and not as an agent of the Government, the Contractor shall furnish all the necessary services, qualified personnel, material, equipment, and facilities, not otherwise provided by the Government as needed to perform the Statement of Work described herein: 1. Contractor shall provide the professional services and personnel with the expertise to maintain the database, perform data integrity checks to verify critical patent numbers and dates against available public information, pay patent maintenance fees and annuity fees on behalf of the NIH and CDC. The Contractor will respond to inquiries regarding specific client questions and providing access to information about worldwide patent laws. 2. Upon award of contract, provide a timely transition plan of data ensuring all the data is accurately uploaded. To include, at a minimum, identifying those patents and patent applications where immediate payments are required, performing integrity data checks, identify formatting or data type problems or potential errors. Resolve any issues identified in the data review. 3. Maintain records of all patents and patent applications that have been filed with the United States Patent and Trademark Office (USPTO) and/or foreign countries either by NIH or CDC, or on behalf of the OTT, or by a third party where there are government co-inventors. 4. Provide OTT Contracting Officer's Representative (COR) with reports listing U.S and foreign patents and patent applications that require maintenance or annuity fees to be paid with the estimate of cost in U.S. dollars for each. 5. Pay annuities as determined by country laws and regulations by the due date as designated from the reports submitted to and agreed to by the OTT COR. In the event no instructions are provided to the Contractor not to pay, the Contractor will pay the maintenance or annuity fee. 6. Examine the impact of adjustments or revisions in the patent annuity or maintenance fees of the United States and foreign countries with whom the NIH has activity and advise the OTT COR as to the action that needs to be taken to meet those changes. 7. Treat all information as strictly confidential. 8. Maintain all such information with the full understanding that they are the exclusive property of the Government. At the completion of the contract, this information shall be delivered to the Government or the successor Contractor at the direction of the OTT COR. 9. The Contractor's field naming conventions may vary, but it will have fields that can be utilized to accommodate the client's internal designations for querying, reporting, and filtering of data. The deliverables will be provided in specified formats as the Government intends to import, for cost tracking purposes, the annuity/maintenance fee data from the Contractor's Periodic Report of Annuities (PRA), invoice reports, and resolution reports into its own proprietary database. Example data such as estimated cost, actual cost, resolution changes, related dates, and invoice numbers into the organization's proprietary database to track the individual patent related expenses. Minimally required fields for all Excel and delimited text files are: WIPO Country Abbreviation, Case Type, Application Number, Filing Date, Patent Number, Issue Date, Annuity Due Date, related annuity financial amount (e.g. annuity cost, invoiced amount, resolution), Annuity Number, Comments/Remarks, IC Division, NIH POC, NIH Base Reference Number (e.g. E-123-2000), Full NIH reference number (e.g. E-123-2000/0-US-01). 10. Provide access to real-time secure web database(s) and tools for web based decision making. 11. Provide a secure web site to allow OTT to provide documents or files to Contractor, e.g. text files for uploading data into Contractor's database or invoice submission. DESCRIPTION OF INFORMATION TO INCLUDE IN THE CAPABILITY STATEMENT The North American Industry Classification System (NAICS) for this requirement is 541990 with a size standard of $15 million. In light of this project summary, all interested concerns are invited to submit a tailored capability statement. The capability statement should reference Sources Sought Number HHS-NIH-OD-OLAO-SS-17-005 and should be no longer than 15 pages in length and shall include the following: (1) Name and Address of the Organization, (2) The size and type of business: Small Business; 8(a) Small Business; Service Disabled Veteran Owned Small Business; HubZone Small Business, as listed under ww.sam.gov, (3) Point of Contact with name, title, voice/telephone, facsimile number, and email address, (4) DUNS number, (5) Contractor's capability statement that addresses the organization's ability, knowledge, experience and personnel to perform the service described in the Statement of Work below (Pamphlets and standard brochures will not be considered responsive to this Sources Sought Notice), (6) List of organizations to whom similar types of services have been previously provided to include contract number, dollar value, name and phone number of the Contracting Officer, and (7) Do not submit pricing information in your response to this Sources Sought notice. This market survey is being conducted only for the purpose of identifying potential sources and to gather current market information. A determination by the Government not to compete this proposed contract based on responses to this notice is solely within the discretion of the Government. Information received will be considered solely for the purpose of determining whether this procurement will be set aside. Responding firms should provide four (4) copies of their capability statement to Sheryn N. Etti (Ref. HHS-NIH-OD-OLAO-SS-17-005), National Institutes of Health, Office of Acquisitions, 6011 Executive Blvd., Room 541E, (MSC 7663) Bethesda, MD 20892-7663. (NOTE: If you are using a courier service, Federal Express, or UPS the city, state, and zip code should read ROCKVILLE, MD 20852). Please be aware that the U.S. Postal Service's "Express Mail" DOES NOT deliver to the Rockville, Maryland address AND delivery to the Bethesda, Maryland address will result in a delayed delivery to our office in Rockville, MD (up to 3 - 5 days). ALL INFORMATION SUBMITTED IN RESPONSE TO THIS ANNOUNCEMENT MUST BE RECEIVED ON OR BEFORE THE CLOSING DATE. THE CLOSING DATE FOR RESPONSES IS March 17, 2017 at 1:00 PM Eastern Time. Email and facsimile copies will not be accepted. All questions and/or comments regarding this sources sought notice must be in writing and may be emailed to Sheryn N. Etti at ettis@mail.nih.gov. Comments and questions will NOT be answered, but may assist in creating a solicitation for this requirement. NOTE: Capability Statements were previously requested under Small Business Sources Sought No. HHS-NIH-OD-OLAO-SS-17-003. Vendors that responded under the previous notice are encouraged to submit capability statements under this new Small Business Sources Sought Notice No. HHS-NIH-OD-OLAO-SS-17-005. Disclaimer and Important Notes : This notice does not obligate the Government to award a contract or otherwise pay for the information provided in response. The Government reserves the right to use information provided by respondents for any purpose deemed necessary and legally appropriate. Any organization responding to this notice should ensure that its response is complete and sufficiently detailed to allow the Government to determine the organization's qualifications to perform the work. Respondents are advised that the Government is under no obligation to acknowledge receipt of the information received or provide feedback to respondents with respect to any information submitted. After a review of the responses received, a pre-solicitation synopsis and solicitation may be published in Federal Business Opportunities. However, responses to this notice will not be considered adequate responses to a solicitation. Confidentiality : No proprietary, classified, confidential, or sensitive information should be included in your response. The Government reserves the right to use any non-proprietary technical information in any resultant solicitation(s).
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