NIH RFP: Payment of Patent Maintenance and Annuity Fees

Updated April 14, 2022

Notice ID: 75N98022R00012

“This Request for Proposal (RFP) is for the acquisition of services to provide payment of United States patent maintenance fees and foreign annuity fees for the patent protection of inventions of the National Institutes of Health (NIH) and Centers for Disease Control and Prevention (CDC) employees in the United States and foreign countries.”

“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…”

“Requirements:

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, the Contractor shall provide a timely updated transition plan of data ensuring all the data is accurately uploaded after consultation with OTT. 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 coinventors.
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…”

Read more here.

Posted January 7, 2022

Notice ID: HHS-NIH-OD-OLAO-SS-22-005

“The purpose of the project is to provide payment of United States (U.S.) patent maintenance fees and foreign annuity fees for the patent protection of inventions of the National Institutes of Health (NIH) and the Centers of Disease Control and Prevention (CDC) employees in the United States and foreign countries.”

“Requirements:

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, the Contractor shall provide a timely updated transition plan of data ensuring all the data is accurately uploaded after consultation with OTT. 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 f or 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…”

Read more here.