Contract for IP Protection Consultancy Services

Contract for IP Protection Consultancy Services

The requirement is for a firms of patent agents to provide cost effective, general intellectual property advice.

United Kingdom-Swansea: Patent and copyright consultancy services

2018/S 110-250641

Contract notice

Services

Directive 2014/24/EU

Section I: Contracting authority

I.1)Name and addresses

Swansea University
Procurement — Finance, Swansea University, Singleton Park
Swansea
SA2 8PP
United Kingdom
Contact person: Owen Cullen, Deputy Head of Procurement
E-mail: o.n.cullen@swansea.ac.uk
NUTS code: UKL18
Internet address(es):Main address: www.swansea.ac.uk

Address of the buyer profile: https://www.sell2wales.gov.wales/search/Search_AuthProfile.aspx?ID=AA0345

I.2)Information about joint procurement

I.3)Communication

The procurement documents are available for unrestricted and full direct access, free of charge, at: https://etenderwales.bravosolution.co.uk
Additional information can be obtained from another address:
https://etenderwales.bravosolution.co.uk
https://etenderwales.bravosolution.co.uk
United Kingdom
E-mail: o.n.cullen@swansea.ac.uk
NUTS code: UKLInternet address(es):Main address: https://etenderwales.bravosolution.co.uk
Tenders or requests to participate must be submitted electronically via: https://etenderwales.bravosolution.co.uk

I.4)Type of the contracting authority

Body governed by public law

I.5)Main activity

Education

Section II: Object

II.1)Scope of the procurement

II.1.1)Title:

T47(18) Contract for IP Protection Consultancy Services (AgorIP)

II.1.2)Main CPV code

79120000

II.1.3)Type of contract

Services

II.1.4)Short description:

The requirement is for a firms of patent agents to provide cost effective, general intellectual property advice and to undertake the preparation, registration and prosecution of applications for patents and other forms of registered intellectual property including but not limited to trademark applications across all of the relevant research areas of the University. The patent agents will be expected to possess the necessary breath of intellectual property law experience and technical understanding particularly in the life, physics and computer sciences with respect to patents, design rights and trademarks.

II.1.5)Estimated total value

II.1.6)Information about lots

This contract is divided into lots: no
II.2)Description
II.2.1)Title:

II.2.2)Additional CPV code(s)

79120000
79110000
79140000

II.2.3)Place of performance

NUTS code: UKL

II.2.4)Description of the procurement:

See additional information.

II.2.5)Award criteria

Price is not the only award criterion and all criteria are stated only in the procurement documents
II.2.6)Estimated value

II.2.7)Duration of the contract, framework agreement or dynamic purchasing system

Start: 30/07/2018
End: 30/12/2022
This contract is subject to renewal: no

II.2.10)Information about variants

Variants will be accepted: no

II.2.11)Information about options

Options: yes
Description of options:

AgorIP is currently expected to run until December 2020. During this time, the estimated value of this contract for IP Protection will be up to 650 000 — 850 000 GBP. AgorIP has however applied to its funders to extend the AgorIP Project until December 2022. Should this be successful, then the University with the agreement of the successful tenderer will reserve the right to extend the contract duration until December 2022 and the estimated contract value up to 1 300 000 — 1 700 000 GBP.

II.2.12)Information about electronic catalogues

II.2.13)Information about European Union funds

The procurement is related to a project and/or programme financed by European Union funds: yes
Identification of the project: Agor IP
II.2.14)Additional information

Section III: Legal, economic, financial and technical information

III.1)Conditions for participation
III.1.1)Suitability to pursue the professional activity, including requirements relating to enrolment on professional or trade registers

III.1.2)Economic and financial standing

Selection criteria as stated in the procurement documents

III.1.3)Technical and professional ability

Selection criteria as stated in the procurement documents
III.1.5)Information about reserved contracts
III.2)Conditions related to the contract
III.2.1)Information about a particular profession
III.2.2)Contract performance conditions:
III.2.3)Information about staff responsible for the performance of the contract

Section IV: Procedure

IV.1)Description

IV.1.1)Type of procedure

Open procedure
IV.1.3)Information about a framework agreement or a dynamic purchasing system
IV.1.4)Information about reduction of the number of solutions or tenders during negotiation or dialogue
IV.1.6)Information about electronic auction

IV.1.8)Information about the Government Procurement Agreement (GPA)

The procurement is covered by the Government Procurement Agreement: yes
IV.2)Administrative information
IV.2.1)Previous publication concerning this procedure

IV.2.2)Time limit for receipt of tenders or requests to participate

Date: 09/07/2018
Local time: 12:00
IV.2.3)Estimated date of dispatch of invitations to tender or to participate to selected candidates

IV.2.4)Languages in which tenders or requests to participate may be submitted:

English, Welsh

IV.2.6)Minimum time frame during which the tenderer must maintain the tender

Duration in months: 3 (from the date stated for receipt of tender)

IV.2.7)Conditions for opening of tenders

Date: 09/07/2018
Local time: 12:00
Place:

The tender process will be managed via the Bravosolution tendering portal.

Section VI: Complementary information

VI.1)Information about recurrence

This is a recurrent procurement: no
VI.2)Information about electronic workflows

VI.3)Additional information:

This procurement is for patenting and professional intellectual property related services in support of the technology transfer activity at Swansea University within the AgorIP Project. A significant portion of the University’s intellectual property is managed and commercialised by the AgorIP Project within the school of management. Other University Intellectual property exists and is managed and commercialised by the Department of Research, Engagement and Innovation Services (REIS). This specification does not cover the services required by REIS.

The requirement is for a firms of patent agents to provide cost effective, general intellectual property advice and to undertake the preparation, registration and prosecution of applications for patents and other forms of registered intellectual property including but not limited to trademark applications across all of the relevant research areas of the University. The patent agents will be expected to possess the necessary breath of intellectual property law experience and technical understanding particularly in the life, physics and computer sciences with respect to patents, design rights and trademarks.

To fulfil the provisions of this tender the current Intellectual Property portfolio would need to be transferred from existing attorneys, who have consolidated the portfolio onto a single database; diarising cases for their next due date, recording renewals and forecasting future costs. AgorIP therefore anticipates a low cost for the transfer of the portfolio.

The portfolio currently consists of 48 patent families to be managed by the successful tenderer who will also be required to manage some patent agents who will continue the prosecution of certain applications. Due to funding restrictions, AgorIP will accept invoices from only one supplier and it is therefore required that the successful tenderer accepts invoices from these agents and invoices AgorIP on their behalf. As this is the case and the portfolio is likely to increase in size, the patent agents is/are expected to be able to manage a portfolio of this extent and should be able to accommodate a significant monthly “on account” float. This will include invoices directly payable to the successful patent agents as well as disbursements to other agents.

It is important that the patent agents is able to develop a strong rapport with both the academic community and the technology transfer team within AgorIP and to take proactive steps to foster good relations including availability to correspond in efficient time via email and telephone and to visit Swansea as reasonably requested. As part of this, we require the successful patent agent/s to provide, on a monthly basis, a half day surgery on the University premises to meet with inventors and TTO/M’s. This surgery is to discuss IP protection issues, including but not limited to; the patentability of inventions and general IP advice.

The patent agents will also be required to track and report on the costs of their service provision on a quarterly basis and to provide training for AgorIP staff in IP administration. Before the end of the contract, the patent agents will provide a professional transfer of IP administrative processes to the University and the cost of this should be included.

AgorIP will reserve the right to procure IP services from other patent agents where, for example, they believe unique specialist skills are required, where they are mandated by funders of University research or where it perceives a potential conflict of interest.

Note: The authority is using eTenderwales to carry out this procurement process. To obtain further information record your interest on Sell2Wales at https://www.sell2wales.gov.wales/search/search_switch.aspx?ID=82640

(WA Ref:82640).

VI.4)Procedures for review

VI.4.1)Review body

Swansea University
Procurement — Finance, Swansea University, Singleton Park
Swansea
SA2 8PP
United Kingdom
E-mail: o.n.cullen@swansea.ac.ukInternet address: www.swansea.ac.uk
VI.4.2)Body responsible for mediation procedures
VI.4.3)Review procedure
VI.4.4)Service from which information about the review procedure may be obtained

VI.5)Date of dispatch of this notice:

08/06/2018

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