IPR & Patent Services

Tender description

The UoE/Edinburgh Innovations are awarding this contract for IPR & Patent Services by way of a Mini-Competition through the APUC Framework Agreement PFB1034 AP Lot 1 IP Protection. This contract will provide legal guidance to ensure that patent applications are filed and executed compliantly to protect Edinburgh Innovations inventions. The process involves consultation with the patent applicant regarding the invention, producing a specification for this invention, and filing it at the appropriate level. The supplier will advise and guide UoE through each application. Generation of new knowledge, concepts, inventions and designs is a natural and expected outcome of research activity at the UoE. The UoE/EI have as a strategic aim achieving excellence in commercialisation and knowledge exchange, and, through the registering of Intellectual Property Rights (IPR), obtaining legal ownership and protection of inventive material. Lot 1: The general capabilities we require include: expert drafting services in a range of disciplines; previous experience of patenting strategies applicable to the University sector; experience of all of the detailed requirements of the UKIPO; a hands on and flexible set of practices including meeting with our inventors; adherence to matrix pricing; a full capability to efficiently file patent applications at priority and PCT application stages from a strategic, quality and holistic perspective, together with very competitive pricing at these points to encourage and facilitate early stage patenting; established and transparent international relationships for filing national phases in a wide range of major territories to efficiently and precisely meet the patenting demands of that national territory; prosecution of all types of office actions; sufficient resource and spare capacity within the firm to cover UoE/EI case load; efficient information and data exchange by letter, electronically, telephone, online client portal and face to face meeting as appropriate; search services and freedom to operate advice; regular reviews (on UoE/EI premises) regarding portfolio and service levels; provision of portfolio status updates on a monthly basis, together with regular updates on actions/deadlines/costs on patent filings that have entered national phase; and general patent procedure advice both by regular update on patent office rule changes and against specific query. Additional capabilities that would be valued include experience of working to specific client working procedures; existing research intensive University clients; flexibility and willingness to work with other suppliers prescribed by UoE/EI (e.g. translators, International Agents and patent maintenance services), where applicable; efficient reminder system for prosecution and maintenance deadlines; a cost effective renewals system; ability to assist with appropriate patenting strategies to minimise cost and maximise commercial potential taking into account the wide scope of UoE licensing processes.