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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.
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.
What law firms have current contracts with OTT/NIH?
Contracts were awarded in June 2002 to the following law firms:
- Birch, Stewart, Kolasch & Birch, LLP; Falls Church, VA
- Edwards & Angell, LLP; Boston, MA
- Heller Ehrman, LLP; Washington, D.C.
- Klarquist Sparkman, LLP; Portland, OR
- Knobbe Martens Olsen & Bear, LLP; San Luis Obispo, CA
- Leydig, Voit & Mayer, Ltd., Chicago, IL
- Berenato, White & Stavish, LLC (formerly Liniak, Berenato, Longacre & White), Bethesda, MD
- Merchant & Gould, P.A.; Minneapolis, MN
- Needle & Rosenberg, PC; Atlanta, GA
- Perkins Coie, LLP; Santa Monica, CA
- Schwegman, Lundberg, Woessner & Kluth, P.A.; Minneapolis, MN
- Townsend & Townsend & Crew, LLP; San Francisco, CA
- Venable, Baetjer, Howard, and Civiletti; Washington, D.C.
- Woodcock Washburn, LLP; Philadelphia, PA
What is the contract award period?
The contract is awarded for five (5) years; a base year and four option years
to extend the performance period. The current contract is due to end in December 2006.
Who is responsible for the NIH patent legal services contract?
The contract is planned and monitored by both a Contracting Officer and a Project Officer.
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 Project Officer is the representative of the program office who ensures the program requirements
are clearly defined and advises the Contracting Officer to ensure the contract is designed to meet
those requirements. While the contract is in force, the Project Officer ensures compliance with
all contract clauses and applicable laws and reports any deviations to the Contracting Officer.
Who is the NIH Contracting Officer for the current patent legal services contracts?
Ms. Erin Flynn is the NIH Contracting Officer responsible the NIH Patent Legal Services contracts.
If you have any questions regarding the NIH contracting/acquisition process, Ms. Flynn can be
reached at 301-402-8214 or by e-mail.
Who do I contact regarding the programmatic requirements?
Ms. Regina Gaither is the OTT Project Officer. She can be reached at 301-435-4077 or by e-mail.
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.
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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