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NASA Request for Information: No-cost Patent Marketing and Brokerage Services With Revenue Sharing Component Upon License Execution

Status Report From: NASA HQ
Posted: Saturday, September 26, 2009

image Synopsis - Sep 23, 2009

General Information

Solicitation Number: N/A
Reference Number: NNH09PA0001L
Posted Date: Sep 23, 2009
FedBizOpps Posted Date: Sep 23, 2009
Recovery and Reinvestment Act Action: No
Original Response Date: Nov 16, 2009
Current Response Date: Nov 16, 2009
Classification Code: 99 -- Miscellaneous
NAICS Code: 533110 - Lessors of Nonfinancial Intangible Assets (except Copyrighted Works)

Contracting Office Address

NASA/Goddard Space Flight Center, NASA Headquarters Acquisition Branch, Code 210.H, Greenbelt, MD 20771

Description

This is a Request for Information (RFI) only; neither NASA nor the Government will be responsible for any cost incurred in furnishing this information. NASA is requesting information from organizations interested in providing intellectual property (IP) management services (such as patent valuation, marketing, assessment and brokerage) to NASA under a no-cost arrangement that could allow for revenue sharing upon license execution. Services may be provided to one or more NASA Centers.

NASA Patent Licensing

NASA policy as set forth in the National Aeronautics and Space Act of 1958 and the Bayh-Dole Act of 1980 is to seek the widest dissemination possible of its intellectual property for the benefit of the public and U.S. economy. The Agency's patent licensing program is managed at each Center and follows the requirements of 37 CFR S404. (http://www.access.gpo.gov/nara/cfr/waisidx_99/37cfr404_99.html ).

NASA Center Directors have been delegated the authority to enter into patent license agreements. At each NASA Center, the patent licensing function is managed by the Center's Innovative Partnerships Program (IPP) Office with the advice and counsel of the Center's Patent Counsel. The patents owned by NASA cover the technologies representing the full breadth and scope of the work performed by the Agency.

Current Status

To make the benefit of NASA's technology investments available to the public, NASA Centers seek licensees for NASA's patented technologies in a variety of ways.

Currently two NASA Centers are participating in a pilot project to transfer NASA technologies through the live auction of exclusive licenses with pre-defined terms that the winning bidder will assume. The first auction, conducted October 2008, resulted in the successful auction of a portfolio of NASA-owned patents provided by the NASA Goddard Space Flight Center (GSFC). Under the same pilot program, work is underway to conduct an auction that would include a portfolio of patents provided by the NASA Marshall Space Flight Center (MSFC). The business model in this pilot project is revenue sharing from the licensing revenue.

NASA's Goal

NASA wishes to maximize the benefit to the public from NASA's R&D investments yielding new technologies and patents. Seeking no-cost methods to further advance dissemination of NASA's patent investment will provide the best value to the public through the introduction of new and efficient licensing processes and tools. NASA recognizes that there are many business models in the U.S. for providing IP management services, such as patent brokering, using a variety of different transaction methods and platforms. NASA is issuing this request for information in an effort to better understand the range of possible models and services available for assisting NASA with the dissemination of NASA technology, at no additional cost to the taxpayer.

Request for Information

NASA is soliciting information from interested potential sources of IP management services that would be provided at no cost to NASA. NASA has specific interest in the following:

* The types of services envisioned that the submitting organization might be interested in providing to NASA, including patent brokering, valuation of patents, bundling of patents and valuation of bundles, identifying, screening, and selecting qualified licensees, etc.

* Identification of which services may be relevant to exclusive licenses and/or non-exclusive licenses.

* The capabilities of your organization for providing such services.

* The variety of methods used to facilitate those services (For example websites, trade shows, direct marketing, auctions, etc.)

* The success rates experienced with each of the methods used, as well as some illustrative examples of each.

* Relevant experiences or lessons learned in providing similar services to Federal Government Agencies.

* The methods used to identify and evaluate patents and bundles of patents (from one Center or from across multiple Centers) to offer and the amount of information and support that would be required from NASA staff to conduct such an evaluation. Please briefly address your possible analytical and due diligence methods.

* A summary of the resources that could be provided as part of a potential service, including such things as networks, the background and experience of personnel, and any facilities, equipment or other assets that might be used to support NASA.

* Potential methods or models for delivering services, and source and amount of non-NASA revenue that would be available. Description of the potential contractual relationship with NASA and methods for complying with relevant government regulations and policies.

Any services that may potentially be provided under contracts with NASA would be on a non-exclusive basis, with NASA retaining the right to pursue other methods for technology transfer that are in the best interest of NASA and the public.

Information Submittals:

Organizations able to supply relevant information should submit such information not to exceed 5 pages (excluding brochures) addressing the above to the address shown below by October 30, 2009. Use single space, 12 -point, Times New Roman format.

The following file naming convention should be used: IPP_RFI_firstinitial_lastname.doc. For example, Angela Rodriguez would name her file IPP_RFI_A_Rodriguez.doc.

Authorized file formats include: Adobe Acrobat versions 6-8(.pdf) Microsoft Word versions 2000-2003 (.doc) and Microsoft Excel versions 2000-2003 (.xls).

Although all comments received will be carefully reviewed and considered for inclusion in any possible later action, the initiators of this request make no commitment to include any particular recommendations. Respondents will not be notified of the results of the review.

No solicitation exists; therefore, do not request a copy of the solicitation. If a solicitation is released it will be synopsized in the FedBizOpps and on the NASA Acquisition Internet Service. It is the responsibility of potential offerors/bidders to monitor these sites for the release of any solicitation or synopsis.

Response Submission Deadline:

Responses to this RFI must be submitted no later than 11:59 PM Eastern Standard Time, on November 16, 2009. RFI submissions will be accepted as email attachments only. All responses must be sent to HQ-IPP-RFI@mail.nasa.gov with "IPP RFI Response" in the subject line.

An email confirmation of receipt from NASA will be sent within a one-week period to the designated point of contact.

Point of Contact for Inquiries and Submissions:

Inquiries regarding this RFI may be directed to NASA Headquarters, Office of Innovative Partnerships, Mail Stop 6J79 , 300 E Street SW, Washington, D.C., 20546, fax 202-358-3878, telephone (toll free) 1-877-202-7109, or electronic mail at HQ-IPP-RFI@mail.nasa.gov with "IPP RFI Inquiry " in the subject line. Inquiries must be received within 15 calendar days from the date the RFI is issued. Responses to all inquiries received by this deadline will be posted electronically and made publicly available at http://www.nasa.gov/offices/ipp/products/rfi.html within 30 calendar days from the date the RFI is issued.

This synopsis is for information and planning purposes only and is not to be construed as a commitment by the Government nor will the Government pay for information solicited.

Disclaimer:

NASA will not publicly disclose proprietary information obtained as a result of the RFI. To the full extent that it is protected by law and regulations, information identified by a respondent as Proprietary or Confidential will be kept confidential.

This RFI may also be found electronically at http://www.nasa.gov/offices/ipp/RFI/html

Point of Contact

Name: Diana Hoyt
Title: Manager, Strategic Planning
Phone: 877-202-7109
Fax: 202-358-3878
Email: HQ-IPP-RFI@mail.nasa.gov

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