Patent Legal Services FAQs

What services are performed under these contracts?

How many contracts are awarded by NIH and on what basis are they awarded?

What law firms have current contracts with OTT/NIH?

What is the contract award period?

Who is responsible for the NIH patent legal services contract?

Who is the NIH Contracting Officer for the current patent legal services contracts?

Who do I contact regarding the programmatic requirements?

If after award a contractor does not want to continue providing services or the NIH terminates a contract, will there be a solicitation for a replacement law firm?

How would my firm know when NIH is requesting proposals for this type of requirement? Also, when would the Government make the announcement of the NIH/OTT need for "Patent Legal Services?"

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What services are performed under these contracts?

The NIH requires patent related services including patent searches, patent prosecution, infringement and interference services, and licensing consultation of inventions submitted through the NIH Technology Transfer process.

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How many contracts are awarded by NIH and on what basis are they awarded?

The NIH makes multiple awards, task order contracts, priced on a time and material basis.

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What law firms have current contracts with OTT/NIH?

Biotechnology contracts were awarded in April 2009 to the following law firms

  1. Edwards & Angell, LLP; Boston, MA
  2. Klarquist Sparkman, LLP; Portland, OR
  3. Leydig, Voit & Mayer, Ltd; Chicago, IL
  4. Sheridan Ross; Denver, CO
  5. Townsend & Townsend & Crew, LLP; San Francisco, CA

Chemistry contracts were awarded in June 2009 to the following law firms:

  1. Cantor Colburn; Hartford, CT
  2. Klarquist Sparkman, LLP; Portland, OR
  3. Leydig, Voit & Mayer, Ltd; Chicago, IL

Mechanical/Electrical/Software (M/E/S) contracts were awarded in July 2009 to the following law firms:

  1. Klarquist Sparkman; Portland, OR
  2. Polsinelli Shughart; Kansas City, MO
  3. Edwards Angell Palmer & Dodge; Boston, MA

Contested proceedings contracts were awarded in October 2009 to the following law firms:

  1. Foley and Lardner; Milwaukee, WI
  2. Leydig Voit & Mayer; Chicago , IL
  3. McAndrews Held and Malloy; Chicago, IL
  4. Townsend & Townsend & Crew; San Francisco, CA

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What is the contract award period?

The contract is awarded for ten (10) years; a base year and nine (9) option years to extend the performance period. The current contract is due to end in 2019.

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Who is responsible for the NIH patent legal services contract?

The contract is planned and monitored by both a Contracting Officer and a Contracting Officer's Representative.

The solicitation, evaluation, and award phase is mainly the Contracting Officer's responsibility. The Contracting Officer signs on behalf of the Government and bears the legal responsibility for the contract.

The Contracting Officers's Representative monitors specified aspects of contractor performance. These aspects may include ensuring that the contractor’s performance meets the standards set forth in the contract, the contractor meets the technical requirements under the contract by the delivery date(s) and/or within the period of performance, and that the contractor performs within the price or estimated cost stated in the contract.

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Who is the NIH Contracting Officer for the current patent legal services contracts?

Ms. Arisane Underwood is the NIH Contracting Officer responsible the NIH Patent Legal Services contracts. If you have any questions regarding the NIH contracting/acquisition process, Ms. Underwood can be reached at 301-402-5401 or by e-mail.

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Who do I contact regarding the programmatic requirements?

Ms. Regina Gaither is the Contracting Officer's Representative. She can be reached at 301-435-4077 or by e-mail.

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If after award a contractor does not want to continue providing services or the NIH terminates a contract, will there be a solicitation for a replacement law firm?

No. The program office (OTT) will make a determination as to which existing contractor (or contractors) to transfer the case files to ensure there is no loss of intellectual property to the Federal Government.

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How would my firm know when NIH is requesting proposals for this type of requirement? Also, when would the Government make the announcement of the NIH/OTT need for "Patent Legal Services?"

Solicitations are published in the Federal Business Opportunities (FedBizOpps) approximately six (6) months prior to the expiration of the current contracts. The actual timing of when the announcement will be posted in the FedBizOpps is determined by the NIH Contracting Officer. If you have any additional questions regarding the pre-award process, we must refer you the NIH Contracting Officer.

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