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Contract Award Notice

Provision of Patent and Trade Mark related services

  • First published: 12 February 2018
  • Last modified: 12 February 2018
  • Version: N/A
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To record your interest or obtain additional information or documents please find instructions within the Full Notice Text. (NOTE: Contract Award Notices and Prior Information Notices do not normally require a response)

Contents

Summary

OCID:
Published by:
The University of Nottingham
Authority ID:
AA20987
Publication date:
12 February 2018
Deadline date:
-
Notice type:
Contract Award Notice
Has documents:
No
Has SPD:
No
Has Carbon Reduction Plan:
N/A

Abstract

The University of Nottingham wishes to create a framework agreement for the provision of Patent and Trademark Related Services covering all of the following:

— Drafting, filing and prosecution of patent applications on the University’s behalf.

— Provision of timely reminders of patent deadlines.

— Arrangements for renewals.

— Instruction of overseas attorneys.

— Intellectual property monitoring and searching.

— Spin-outs.

— Trade mark applications.

— Licensing Matters.

Which must be undertaken in house by the chosen providers, and must cover the following subjects/disciplines:

— Pharmacy,

— Chemistry,

— Biochemistry,

— Biomedical sciences,

— Tissue engineering and stem cells,

— Nanotechnology,

— Electrical engineering,

— Mechanical engineering,

— Engineering,

— Built Environment,

— Veterinary medicine,

— Computer science and IT.

Suppliers must meet the criteria above deemed as Critical and further criteria within the tender document, in order to be considered for inclusion within the Framework.

The University will determine the number of Service Providers to be appointed to provide patent and trade mark-related services up to a maximum of 3 providers.

The key objectives of the University are to:

— ensure the appropriate evaluation and protection of intellectual property generated within the University research groups,

— develop an income generating portfolio of spin out and licensing activities,

— use the management of IP to leverage additional research awards.

The group deals with approximately 100 to 150 disclosures each year and files approximately 50 patent applications a year. The total patent portfolio consists of approximately 200 patent families many of which are licensed.

Primary to the University’s considerations will be the Service Provider’s ability to deliver services cost effectively and within realistically achievable timeframes. Capacity to meet urgent turnaround requirements and Continuity of service delivery during staff absence or any transitional phase resulting from a change in personnel should be demonstrable. Face to face meetings and discussions between the University’s Inventors and the Service Providers is integral to the provision of the Services and Service Providers must be prepared to visit the University on request, at their own expense, as part of the process for each patent/trademark application.

The University welcomes Added Value with respect to the provision of core Services which form the subject of this Tender.

Full notice text

Contract award notice

Results of the procurement procedure

Section I: Contracting authority

I.1) Name and addresses

University of Nottingham

King's Meadow Campus, Lenton Lane

Nottingham

NG7 2NR

UK

Contact person: Julie Greenfield

Telephone: +44 1158466587

E-mail: Julie.Greenfield@nottingham.ac.uk

NUTS: UKF14

Internet address(es)

Main address: http://www.nottingham.ac.uk

Address of the buyer profile: http://in-tendhost.co.uk/universityofnottingham

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

Provision of Patent and Trade Mark related services

Reference number: PROC JG ITT/862

II.1.2) Main CPV code

79120000

 

II.1.3) Type of contract

Services

II.1.4) Short description

The University of Nottingham wishes to create a framework agreement for the provision of Patent and Trademark Related Services covering all of the following:

— Drafting, filing and prosecution of patent applications on the University’s behalf,

— Provision of timely reminders of patent deadlines,

— Arrangements for renewals,

— Instruction of overseas attorneys,

— Intellectual property monitoring and searching,

— Spin-outs,

— Trade mark applications,

— Licensing Matters.

Which must be undertaken in house by the chosen providers, and must cover the following subjects/disciplines:

— Pharmacy,

— Chemistry,

— Biochemistry,

— Biomedical sciences,

— Tissue engineering and stem cells,

— Nanotechnology,

— Electrical engineering,

— Mechanical engineering,

— Engineering,

— Built Environment,

— Veterinary medicine,

— Computer science and IT.

Suppliers must meet the criteria above deemed as Critical and further criteria within the tender document, in order to be considered for inclusion within the Framework.

II.1.6) Information about lots

This contract is divided into lots: No

II.1.7) Total value of the procurement

Value excluding VAT: 1 500 000.00  GBP

II.2) Description

II.2.3) Place of performance

NUTS code:

UKF14


Main site or place of performance:

University of Nottingham

IP Commercialisation

Ingenuity Centre

University of Nottingham Innovation Park

Triumph Road

Nottingham NG7 2TU

II.2.4) Description of the procurement

The University of Nottingham wishes to create a framework agreement for the provision of Patent and Trademark Related Services covering all of the following:

— Drafting, filing and prosecution of patent applications on the University’s behalf.

— Provision of timely reminders of patent deadlines.

— Arrangements for renewals.

— Instruction of overseas attorneys.

— Intellectual property monitoring and searching.

— Spin-outs.

— Trade mark applications.

— Licensing Matters.

Which must be undertaken in house by the chosen providers, and must cover the following subjects/disciplines:

— Pharmacy,

— Chemistry,

— Biochemistry,

— Biomedical sciences,

— Tissue engineering and stem cells,

— Nanotechnology,

— Electrical engineering,

— Mechanical engineering,

— Engineering,

— Built Environment,

— Veterinary medicine,

— Computer science and IT.

Suppliers must meet the criteria above deemed as Critical and further criteria within the tender document, in order to be considered for inclusion within the Framework.

The University will determine the number of Service Providers to be appointed to provide patent and trade mark-related services up to a maximum of 3 providers.

The key objectives of the University are to:

— ensure the appropriate evaluation and protection of intellectual property generated within the University research groups,

— develop an income generating portfolio of spin out and licensing activities,

— use the management of IP to leverage additional research awards.

The group deals with approximately 100 to 150 disclosures each year and files approximately 50 patent applications a year. The total patent portfolio consists of approximately 200 patent families many of which are licensed.

Primary to the University’s considerations will be the Service Provider’s ability to deliver services cost effectively and within realistically achievable timeframes. Capacity to meet urgent turnaround requirements and Continuity of service delivery during staff absence or any transitional phase resulting from a change in personnel should be demonstrable. Face to face meetings and discussions between the University’s Inventors and the Service Providers is integral to the provision of the Services and Service Providers must be prepared to visit the University on request, at their own expense, as part of the process for each patent/trademark application.

The University welcomes Added Value with respect to the provision of core Services which form the subject of this Tender.

II.2.5) Award criteria

Quality criterion: Ability to deliver services / Weighting: 45

Quality criterion: Performance Management / Weighting: 25

Quality criterion: Added value / Weighting: 5

Price / Weighting:  25

II.2.11) Information about options

Options: Yes

Description of options:

Options to extend for 2 further 12 month periods.

II.2.13) Information about European Union funds

The procurement is related to a project and/or programme financed by European Union funds: No

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

The procurement involves the establishment of a framework agreement

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

The procurement is covered by the Government Procurement Agreement: Yes

Section V: Award of contract

Contract No: PROC JG ITT/862

Title: Provision of Patent and Trade Mark related services.

A contract/lot is awarded: Yes

V.2 Award of contract

V.2.1) Date of conclusion of the contract

04/01/2018

V.2.2) Information about tenders

Number of tenders received: 12

Number of tenders received by electronic means: 12

The contract has been awarded to a group of economic operators: Yes

V.2.3) Name and address of the contractor

Wilson Gunn

Charles House,148/9 Great Charles St

Birmingham

B3 3HT

UK

Telephone: +44 1212361038

E-mail: ben.appleton@wilsongunn.com

NUTS: UKG31

Internet address(es)

URL: https://www.wilsongunn.com

The contractor is an SME: No

V.2.3) Name and address of the contractor

Barker Brettell LLP

100 Hagley Road

Birmingham

B16 8QQ

UK

Telephone: +44 1214560000

E-mail: Jenny.atkinson@barkerbrettell.co.uk

NUTS: UKG31

Internet address(es)

URL: https://www.barkerbrettell.co.uk/

The contractor is an SME: No

V.2.3) Name and address of the contractor

Withers & Rogers LLP

Derwent House, 150 Arundel Gate

Sheffield

S1 2FN

UK

Telephone: +44 1926310700

E-mail: jbingham@withersrogers.com

NUTS: UKE32

Internet address(es)

URL: https://www.withersrogers.com

The contractor is an SME: No

V.2.4) Information on value of the contract/lot (excluding VAT)

Initial estimated total value of the contract/lot:

Total value of the contract/lot: : 1 500 000.00  GBP

V.2.5) Information about subcontracting

Section VI: Complementary information

VI.3) Additional information

All correspondence and expressions of interest relating to this project MUST be made through the University of Nottingham e-tendering website:

https://in-tendhost.co.uk/universityofnottingham

Noncompliant expressions of interest will not be Considered or acknowledged. The UoN reserves the right to cancel the tender process at any stage. The UoN does not accept any liability for costs incurred in tendering. Variation will be accepted where adequately explained by the tenderer and provided that these variations comply with the standards specified in the selection and claims criteria of the tender document. Tender reference PROC JG ITT/862.

VI.4) Procedures for review

VI.4.1) Review body

Please refer to V1.4.3

Nottingham

UK

Internet address(es)

URL: http://in-tendhost.co.uk/universityofnottingham

VI.4.3) Review procedure

Precise information on deadline(s) for review procedures:

The University will incorporate a standstill period at the point information on the award of the contract is communicated to tenderers. That notification will provide full information on the award decision. The standstill period, which will be for a minimum of 10 calendar days, provides time for unsuccessful tenderers to challenge the award decision before the contract is entered into the Public Contracts Regulations 2015 (SI 2015 No 102) provide for aggrieved parties who have been harmed or are at risk of harm by a breach of the rules to take action in the High Court (England, Wales and Northern Ireland) within 30 days of knowledge or constructive knowledge of breach.

VI.4.4) Service from which information about the review procedure may be obtained

University of Nottingham

Nottingham

UK

Internet address(es)

URL: http://in-tendhost.co.uk/universityofnottingham

VI.5) Date of dispatch of this notice

06/02/2018

Coding

Commodity categories

ID Title Parent category
79120000 Patent and copyright consultancy services Legal services

Delivery locations

ID Description
100 UK - All

Alert region restrictions

The buyer has restricted the alert for this notice to suppliers based in the following regions.

ID Description
There are no alert restrictions for this notice.

About the buyer

Main contact:
Julie.Greenfield@nottingham.ac.uk
Admin contact:
N/a
Technical contact:
N/a
Other contact:
N/a

Further information

Date Details
No further information has been uploaded.

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