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FBO DAILY ISSUE OF MAY 20, 2011 FBO #3464
SOURCES SOUGHT

R -- Payment of Patent Maintenance and Annuity Fees

Notice Date
5/18/2011
 
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-SBSS-11-008
 
Archive Date
12/17/2011
 
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. The Office of the Director, National Institutes of Health (NIH), is seeking an organization that has the knowledge and experience to provide the necessary professional services to pay patent maintenance and annuity fees for the patent prosecution of inventions of the NIH and Food and Drug Administration (FDA) employees in the United States and foreign countries. Countries generally included, but are not limited to Japan, Canada, Australia and the European Patent Office. Potential offerors need to be able to demonstrate that they have a complete understanding and knowledge of what is behind the management of patents. In addition, they must be knowledgeable of patent laws in each foreign country. They also need to be able to demonstrate how they will handle the volume of annuity payments related to pending applications and granted patents for the NIH. At least 2,000 active patents are currently filed throughout the world and in multiple settings (various countries). A total of 3,600 payments are estimated each year. The anticipated period of performance is a one-year base period with four (4) one-year option periods. The North American Industry Classification System (NAICS) for this requirement is 541990 with a size standard of $7 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-SBSS-11-008 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: Other than Small Business; Small Business; 8(a) Small Business; Service Disabled Veteran Owned Small Business; HubZone Small Business, as listed under www.ccr.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), and (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. This market survey is being conducted to reach the widest possible audience 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 normally be considered solely for the purpose of determining whether to conduct a competitive procurement. Responding firms should provide four (4) copies of their capability statement to Sheryn N. Etti (Ref. HHS-NIH-OD-OLAO-SBSS-11-008), 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 Wednesday, June 2, 2011 at 2:00 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. STATEMENT OF WORK Independently, the Contractor shall provide the necessary professional services to pay patent maintenance and annuity fees for the patent prosecution of inventions of the National Institutes of Health (NIH) and Food and Drug Administration (FDA) employees in the United States and foreign countries. Specifically, the Contractor shall provide the services listed below. 1. Maintain records of all patents which have been filed with the United States Patent and Trademark Office (USPTO) and foreign countries by the Office of Technology Transfer (OTT), NIH. 2. Provide the OTT Contracting Officer's Technical Representative (COTR) with the below listed reports of patents which require maintenance or annuity fees to be paid with the estimate of cost in U.S. dollars for each patent. Separate reports shall be provided on the patents filed in the United States and foreign countries. Each report shall be organized and subtotaled by government organizational component and provide a grand total of fees to be paid. a. Submit no later than five (5) months prior to a quarter, a Quarter Tax Review Report of Patents that requires a fee to be paid. b. Submit three (3) months prior to the beginning month of the quarter, a Quarterly Tax Review Report of Patents. The OTT COTR may return one (1) copy of the report to the Contractor with the proposed pay and drop decisions. c. Submit no later than two (2) months prior to the beginning month of a quarter, Invoice Reports of Patents, which will include the following: 1) Summary - For foreign countries, include the amount due to the Contractor for each country divided by the OTT COTR. 2) Detail - List of the total amount due to the Contractor for each case. d. Submit one (1) month prior to the beginning of the month or quarter, Invoice Report of Patents. The OTT COTR will return a copy of the report that will indicate any last minute decision changes and will include a detailed listing showing which cases are to be added or deleted. Payment will be processed as stated in Section G. e. Provide two (2) Post Invoice Reports after payment of the invoice as follows: 1) Paid Cases - List of the annuities identifying the cases paid and the actual amount paid. For foreign countries, the amount paid will be shown in the foreign currency. 2) Non-paid Cases - List of the cases with a tax due that were not paid by the Contractor. f. After payments are made, the Contractor shall submit a Settlement Report listing the debits and credits which have occurred since the invoice date. 3. Pay annuities by the due date as designated from the reports submitted to and agreed to by the OTT COTR. 4. 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 COTR as to action that needs to be taken to meet those changes. 5. Treat all information as strictly confidential. 6. Maintain all such information and the media on which it is stored with the full understanding that they are the exclusive property of the Government. At the completion of the contract, this information and media shall be delivered to the Government or the successor Contractor at the direction of the OTT COTR. 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).
 
Web Link
FBO.gov Permalink
(https://www.fbo.gov/spg/HHS/NIH/OoA/HHS-NIH-OD-OLAO-SBSS-11-008/listing.html)
 
Place of Performance
Address: 6011 Executive Bouelvard, Rockville, Maryland, 20852, United States
Zip Code: 20852
 
Record
SN02450992-W 20110520/110518234703-54079e5480a67b103c59cae76426fae7 (fbodaily.com)
 
Source
FedBizOpps Link to This Notice
(may not be valid after Archive Date)

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