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NASA REQUEST FOR INFORMATION: NO-COST INTELLECTUAL PROPERTY MARKETING ANDBROKERAGE SERVICES WITH REVENUE-SHARING COMPONENT UPON LICENSE EXECUTION

Prior Information Notice

General Information
Country:   United States
Notice/Contract Number:   fbo:nnh10pl001
Publication Date:   Oct 7, 2011
Deadline:   Oct 21, 2010
Funding Agency:   National Aeronautics and Space Administration
Buyer:   Headquarters
Original Language:   English

Contact Information
Address:   United States

Goods, Works and Services

 

Original Text

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This is a Request for Information (RFI) only; neither NASA nor the Government will beresponsible for any costs an organization incurs in furnishing this information. NASA isrequesting information from U.S.-owned organizations interested in providing intellectualproperty (IP) management services (such as patent valuation, marketing, assessment andbrokerage) to NASA under a no-cost arrangement that could allow for revenue sharing uponlicense execution. Services may be provided to one or more NASA Centers nationwide. Itis NASAs intent to issue an RFP for a no-cost contract in the future.NASA Patent Licensing NASAs policy as set forth in the National Aeronautics and Space Act of 1958 and theBayh-Dole Act of 1980, and a long history of subsequent legislation mandates NASA to seekthe widest dissemination possible of its intellectual property for commercial applicationand the other public benefit to the Nation. The Agencys patent licensing program ismanaged at each NASA Center and follows the requirements of 37 CFR 404.(http://www.access.gpo.gov/nara/cfr/waisidx_99/37cfr404_99.html). NASA Center Directors are delegated the authority to enter into patent licenseagreements. At most NASA Centers, the patent licensing function is currently managed byeach Center with the advice and counsel of the Centers Patent Counsel and the Office ofthe Center Chief Technologist. The patents owned by NASA cover a broad spectrum oftechnologies relevant to NASAs mission and as such, represent the full breadth and scopeof the work performed by the Agency. Current Status To make the benefit of NASAs technology investments available to the public, NASACenters seek potential licensees for NASA-owned inventions and patented technologies in avariety of ways. For example, two NASA Centers are currently participating in a pilotproject to transfer NASA-owned patentented technologies through the live auction ofexclusive licenses with pre-defined terms that the winning bidder will assume. The firstsuch event was conducted in October 2008 and resulted in the successful auction of aportfolio of NASA-owned patents provided by the NASA Goddard Space Flight Center (GSFC).Under the same pilot program, additional live auctions were held for a portfolio ofpatents provided by the NASA Marshall Space Flight Center (MSFC). However, no NASAproperty was sold or transferred at those events.. The business model for this pilot project is revenue sharing from the licensing revenue(fees and royalties) and is thus commission-based.NASAs Goal NASA wishes to maximize the benefit to the public from NASAs R&D investments that yieldcommercially valuable new patented technologies. Seeking no-cost methods to furtheradvance the transfer of NASA-owned patented inventions will introduce efficiencies andprovide increased value to the public and NASA through the introduction of new andeffective licensing processes and tools. NASA recognizes that there are many businessmodels in the U.S. for providing IP transaction services, such as patent brokering, usinga variety of different transaction methods and platforms. NASA is issuing this RFI in aneffort to better understand the full range of possible models and services available fromU.S. entities for assisting NASA with the transfer of NASA patented technology, at noadditional cost to the taxpayer. Request for InformationNASA is soliciting information from interested potential sources of IP managementservices that could be provided at no cost to NASA. NASA is specifically interested inthe following information. Submitting organizations are encouraged to address as many ofthe bullet points and additional questions below as possible: The types of services envisioned that your organization might be interested inproviding to NASA, including but not limited to: marketing of NASA-owned patents, miningNASAs patent portfolio to identify patent bundles, valuation of patents and patentbundles and identifying, screening, and recommending selecting qualified potentiallicensees, and any other services the submitting organization deems appropriate toachieve NASAs goal of increasing technology transfer to the public. How these services would advance NASAs goal of seeking the widest possibledissemination of its IP for the benefit of the public and U.S. economy. Specifically,how would the services your organization would provide assure NASA that entities wouldnot exclusively license bundles of patented technologies that would not be put intocommercial practice? Identification of services that may be relevant to exclusive licenses and/ornon-exclusive licenses. The capabilities and particular strengths of your organization in providing IPmarketing and brokerage services. The strengths of your organization in providing these services, including yournetwork of patent aggregators, corporate customers. The variety of methods your organization would use to provide these services The success rates and experience to date with each of the methods yourorganization would use, as well as some illustrative examples of each. Relevant experiences or lessons learned in providing similar services to FederalGovernment Agencies. Please identify the Agencies and the points of contact. Relevant experiences or lessons learned in providing similar services to otherorganizations. Please identify the organizations and points of contact. Given that NASA patents are held individually at each of the 10 NASA Centers,what are the methods your organization has used/would use to identify and evaluatepatents and bundles of patents across multiple organizations, in this case, from oneCenter or from across multiple Centers? Please characterize the amount of informationand support that would be required from NASA staff to conduct such an evaluation. Please briefly address your organizations analytical methods. A summary of the resources that your organization could provide to NASA as partof a potential service, including networks, the background and experience of personnel,portfolio strengths, and any facilities, equipment or other assets that might be used tosupport NASA. Potential methods or models for delivering services, and the source and amount ofnon-NASA revenue that would be available to your organization for doing this work. Description of the potential contractual relationship with NASA and methods forcomplying with relevant Federal Government regulations and policies. Additional Questions: What has been your organizations experience and success with providing thesekinds of services? How would your organization measure success? Over what duration? Using whattools? What metrics would be used to demonstrate success? How does your organization currently manage its business? Portfolio approach? By technology area? By client base? Other? Please provide brief background information on the nature of your organizationsbusiness and business operations. Please include company strengths, particularlyregarding marketing of IP. Also include relevant clients and types of services providedto those clients and the number of years that your organization has provided theseservices. What are the relevant strengths of your organization? If you were advising the Government, what approach would you recommend using toassure that the governments IP finds the widest dissemination possible of its IP for thebenefit of the public and U.S. economy? Does your organization have any other suggestions for NASA as the Agency embarkson this project?Any services that may potentially be provided under contracts with NASA would be on anon-exclusive basis, with NASA retaining the right to pursue other methods for technologytransfer that are in the best interest of NASA and the public. Information Submittals: Organizations interested in providing the above information should submit the informationin 20 pages or less, (excluding brochures) to the address shown below by October 1,2010, E-DT. Use single space, 12 point, Times New Roman format. The following file naming convention should be used: IPP_RFI_company name.doc. Forexample, Ford would name its file IPP_RFI_Ford.doc. Authorized file formats include: Adobe Acrobat versions 6-8(.pdf) Microsoft Word versions2000-2007 (.doc) and Microsoft Excel versions 2000-2003 (.xls). Although all submissions received will be carefully reviewed and considered for inclusionin any possible later action, NASA does not commit to adopt or include any particularrecommendations in a subsequent document (e.g., a solicitation). Respondents will not benotified of the results of the review. No solicitation exists; therefore, do not request a copy of the solicitation. If asolicitation is released it will be synopsized in the FedBizOpps and on the NASAAcquisition Internet Service. It is the responsibility of potential offerors/bidders toregularly 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 Daylight Time, onOctober 21, 2010. RFI submissions will be accepted as email attachments only. Allresponses must be sent to HQ-IPP-RFI@mail.nasa.gov with IPP RFI Response in the subjectline. An email confirmation of receipt from NASA will be sent within a one-week period to thedesignated point of contact. Point of Contact for Inquiries and Submissions: Inquiries regarding this RFI may be directed to NASA Headquarters, Office of InnovativePartnerships, Mail Stop 6J80 , 300 E Street SW, Washington, D.C., 20546, fax202-358-3878, telephone (toll free) 1-877-202-7109, or electronic mail atHQ-IPP-RFI@mail.nasa.gov with IPP RFI Inquiry in the subject line. Inquiries must bereceived within 15 calendar days from the date the RFI is issued. Responses to allinquiries received by this deadline will be posted electronically and made publiclyavailable within 30 calendar days from the date this RFI is issued. This synopsis is for information and planning purposes only and is not to be construed asa commitment by the Government and the Government will not 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 properlyidentified by a respondent as Proprietary or Confidential will be kept confidential.
Set-aside code: N/A
Contact: Diana Hoyt, Manager, Strategic Planning, Phone 877-202-7109, Fax 202-358-3878, Email HQ-IPP-RFI@mail.nasa.gov

Link To Document

Email: Diana Hoyt (HQ-IPP-RFI@mail.nasa.gov)

Updated on 2010/10/06

This is a modification to the synopsis entitled NO-COST INTELLECTUAL PROPERTY MARKETINGAND BROKERAGE SERVICES WITH REVENUE-SHARING COMPONENT UPON LICENSE EXECUTION which wasposted on September 07, 2010.The due date for the RFI is corrected to read October 21, 2010.All other information included in the original posting remains unchanged.
Set-aside code: N/A
Contact: Diana Hoyt, Manager, Strategic Planning, Phone 877-202-7109, Fax 202-358-3878, Email HQ-IPP-RFI@mail.nasa.gov

Link To Document

Email: Diana Hoyt (HQ-IPP-RFI@mail.nasa.gov)

Updated on 2010/09/07
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