VA Office of Research and Development Technology Transfer Program - Legal/Litigation Services ***THIS IS A SOURCES SOUGHT/REQUEST FOR INFORMATION ONLY. NO PRICING IS REQUIRED. THE VA IS ONLY SEEKING SOURCES AND INFORMATION. CONTRACTORS ARE WELCOME TO PROVIDE CAPABILITY STATEMENTS AND COMMENTS.*** BACKGROUND Every year, VA researchers develop dozens of new technologies of great benefit to veterans and the public. VA's Technology Transfer Program (TTP) translates these developments into practical application. TTP educates VA employees regarding their obligation to disclose inventions and their rights as federal employees. TTP evaluates these inventions, patents when appropriate, and seeks commercial partners to develop them further. TTP receives approximately 200 disclosures per year. Because of VA's historic close working relationship with affiliated academic medical centers, most of VA's inventions are jointly owned with our affiliates, who often take the lead in patenting and commercialization. This is facilitated by Cooperative Technology Administration Agreements with 60 of VA's affiliated academic medical centers. TTP directly manages about 20% of the disclosed inventions. The remainder are managed by our affiliates. TTP and its affiliates files approximately 40 patent applications each year, and receive approximately 10 issued patents. To date, VA or its affiliates have entered into over 200 licenses with companies to further develop VA owned inventions. In addition to managing inventions made by VA employees, TTP facilitates the negotiation of Cooperative Research and Development Agreements (CRADA), agreements that allow industry and VA to work together for the benefit of industry and veterans. TTP, together with VA's Office of General Counsel, Veterans Health Administration and VA's Veterans Research and Educational Foundations have developed a series of model agreements that serve as templates for new agreements. In addition, VA has negotiated master agreements with 14 leading pharmaceutical companies. Master agreements are company specific agreements where both VA and the company formally agree to use the master agreement without further modification for all future collaborations. MINIMUM QUALIFICATIONS Contractor will have a minimum of five years experience in IP and patent law, filing and prosecuting patents as required by U.S. Federal Laws and Regulations. Experience with filing and prosecuting patents in an academic setting is an additional benefit for this requirement. Contractor must demonstrated technical expertise in patent filing in one or more of the following disciplines: - Medical devices - Durable medical equipment - Medical diagnostics - Biotechnology - Medical software BUSINESS SIZE STATUS Please state your business size status in your capability statement. To receive credit as an SDVOSB or VOSB, an Offeror must be registered and verifiable in VetBiz.gov Vendor Information Pages (http://www.VetBiz.gov). OBJECTIVES The VA TTP requires legal support to promote and protect patent technologies invented within the VA. In order to successfully perform the above stated objectives, knowledge areas shall include transitioning early-stage, bio-medical, biological sciences, pharmaceuticals, and biomedical technologies into application (inclusive but not limited to medical devices, durable medical equipment, medical diagnostics, biotechnology, medical software); intellectual property legal experience including patent preparation and prosecution. Additional areas of expertise include indentifying and responding to claims, infringement and validity opinions. PERIOD OF PERFORMANCE The performance period shall be one base year plus four one-year options. The performance base period shall not exceed 12 months from date of award of contract. CONTRACTOR REQUIREMENTS PROPOSED TASKS - (WILL BE MORE DEFINED UPON THE RELEASE OF A SOLICITATION/ REQUEST FOR QUOTES/REQUEST FOR PROPOSALS.) Task 1- Filing Applications Task 2 - Formal Document and Application Parts Task 3 -Substantive Prosecution Task 4- Issuance and Post Issuance Task 5- Miscellaneous List of Deliverables by Task: Item Task End Result/Deliverable Schedule/Milestone 4.1.1 File U.S. Design Application Filing receipt and copy of the application Within 2 weeks of filing 4.1.2 File U.S. Provisional Application Filing receipt and copy of the application Within 2 weeks of filing 4.1.3 File U.S. Non-Provisional Application (including CON/DIV) Filing receipt and copy of the application Within 2 weeks of filing 4.1.4 File International Application under Patent Cooperation Treaty Filing receipt and copy of the application Within 2 weeks of filing 4.1.5 File U.S. National Stage Application under PCT Filing receipt and copy of the application Within 2 weeks of filing 4.1.6 File Supplemental U.S. National Stage Application documents Filing receipt and copy of the application Within 2 weeks of filing 4.1.7 File U.S. Non-Provisional Application under Paris Convention Filing receipt and copy of the application Within 2 weeks of filing 4.1.8 Instructions to Foreign Associate to file National Stage Application Notification of completed task to TTP Within 2 weeks of task assignment 4.1.9 Instructions to Foreign Associate to file Paris Application Notification of completed task to TTP Within 2 weeks of task assignment 4.2.1 Prepare Inventor Declaration and Assignment Notification of completed task to TTP Within 2 weeks of task assignment 4.2.2 File Inventor Declaration Filing receipt and copy of the application Within 2 weeks of filing 4.2.3 Record Assignment Filing receipt and copy of the Assignment Within 2 weeks of filing 4.2.4 Review and Report Notice of Recordation of Assignment Document Notification of completed task to TTP Within 2 weeks of task assignment 4.2.5 File Corrective Assignment to Correct Recorded Assignment Filing receipt and copy of the corrected Assignment Within 2 weeks of filing 4.2.6 Review and Report Notice to File Missing Parts Notification of completed task to TTP Within 2 weeks of task assignment 4.2.7 File Response to Notice of Missing Parts Filing receipt and copy of response Within 2 weeks of filing 4.2.8 Review and report Filing Receipt Notification of completed task to TTP Within 2 weeks of task assignment 4.2.9 File Request for Corrected Filing Receipt Filing receipt and copy of corrected filing Within 2 weeks of filing 4.2.10 Review and Report Notice of Missing Requirements Notification of completed task to TTP Within 2 weeks of task assignment 4.2.11 File Response to Notice of Missing Requirements Filing receipt and copy of response Within 2 weeks of filing 4.2.12 Review and Report Notice of 371 Acceptance Notification of completed task to TTP Within 2 weeks of task assignment 4.2.13 File Revised Application Data Sheet Filing receipt and copy of revised Application Data Sheet Within 2 weeks of filing 4.2.14 Review and Report New or Revised Publication Date Notification of completed task to TTP Within 2 weeks of task assignment 4.2.15 Review and Report Publication of Application Notification of completed task to TTP Within 2 weeks of task assignment 4.3.1 File Information Disclosure Statement Filing receipt Within 2 weeks of filing 4.3.2 File Preliminary amendment Filing receipt Within 2 weeks of filing 4.3.3 Review and Report Office Action Notification of completed task to TTP Within 2 weeks of task assignment 4.3.4 File Office Action Response Filing receipt and copy of Office Action response Within 2 weeks of filing 4.3.5 File PCT Article 19 amendment Filing receipt and copy of PCT amendment Within 2 weeks of filing 4.3.6 File PCT Article 34 Amendment Filing receipt and copy of PCT amendment Within 2 weeks of filing 4.3.7 File Request for Continued Examination Filing receipt and copy of Request Within 2 weeks of filing 4.3.8 File Petition Filing receipt and copy of Petition Within 2 weeks of filing 4.3.9 File Notice of Appeal Filing receipt and copy of Appeal Breifs and Replies Within 2 weeks of filing 4.4.1 Review and Report Notice of Allowance / Issue Fee Due Notification of completed task to TTP Within 2 weeks of Notice 4.4.2 Pay Issue Fee Filing receipt of Issue fee Within 2 weeks of filing 4.4.3 Review and Report Issue Notification Notification of completed task to TTP Within 2 weeks of Notification 4.4.4 Review and Report Letters Patent Notification of completed task to TTP Within 2 weeks of filing 4.4.5 Report Maintenance Fee Deadline Notification of completed task to TTP Within 2 weeks of open period of deadline 4.4.6 Pay Maintenance Fee Filing receipt of Maintenance Fee Within 2 weeks of filing 4.5.1 Advise and consult on IP matters Notification of completed task to TTP Within 2 weeks of task assignment

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