Patent and copyright consultancy services

Description

This is a Contract Award Notice, the original text read as follows: Scottish Enterprise (SE) is seeking to establish a framework to deliver patent attorney and associated services. In practice for each distinct technology area (programme) and associated patent portfolio, we envisage identifying and appointing an IP service provider and particularly a lead patent attorney to manage and take care of these intellectual property rights under the instruction of SE’s IP Manager. In addition, SE is procuring 2 associated services, firstly an annuity service provider to provide all renewal services in respect of the ITI Scotland patent portfolio (lot 7) and secondly, IP analyst provision (lot 8). The framework will have 8 individual lots and we intend to appoint 1 supplier to each lot. The Framework will be for a 3-year period, after this time, SE will have the option to extend the framework for a further twelve month period. Specifically this lot is concerned with patent attorney provision in respect of assets developed in the area of Genome Segment Assembly including in particular an associated patent portfolio. The Genome Segment Assembly R&D programme (now complete) focussed on the development of technologies and instrumentation in the area of Synthetic Biology. Synthetic biology is a technology area encompassing the construction of genetic sequences or pathways comprising multiple genes, in which the methodology is approached from an engineering viewpoint of bolting components together rather than the classical molecular biology viewpoint of using template directed assembly. GSA is a technique in this field and can combine multiple genes of interest into single DNA constructs/assemblies, in a quick and combinatorial manner. A licence agreement is already in place with a Scottish based commercial partner. Specifically this lot is concerned with patent attorney provision in respect of assets developed in the area of Resonance Enhanced Drilling including in particular an associated patent portfolio. The resonance enhanced drilling R&D programme (now complete) focussed on the development of technologies and instrumentation in the area of onshore and offshore drilling and represents a special type of high frequency impact enhanced rotary drilling where in addition to a rotary drill-bit a controllable oscillator (magnetostrictive or mechanical) delivers high frequency axial oscillations in order to create resonance between a drill-bit and the material being drilled. This results in the amplification of the pressure exerted at the drill-bit significantly increasing drilling efficiency and speed whilst decreasing required Weight on Bit (WOB) and drill-bit wear. This makes it possible to drill through different formations with the same drill-bit, rather than having to stop for bit changes as is currently the case and creates the potential to unlock resources currently considered inaccessible or uneconomic. Applications for this technology are primarily envisaged in Oil and Gas, Mining, and Geothermal markets. Specifically this lot is concerned with patent attorney provision in respect of assets developed in the area of explosives detection including in particular an associated patent portfolio. The explosive detection R&D programme (now complete) focussed on the development of technologies and instrumentation in the area of stand off detection of explosives using laser spectroscopy. Every material has a unique spectroscopic fingerprint based on characteristic vibrational spectra which allows identification of threat materials. The explosive detection programme created platform technology in this area which is capable of real time stand off detection of trace amounts of explosives. Applications for this technology are envisaged in civil security and defence explosive detection markets with particular suitability in the areas of aviation security, mass transportation security, stadia and other public venues security, and critical infrastructure security. A licence agreement is already in place with a Scottish based commercial partner. Specifically this lot is concerned with patent attorney provision in respect of assets developed in the area of Composite Pipeline Systems including in particular an associated patent portfolio. The Composite Pipeline systems R&D programme (now complete) focussed on the development of onshore pipeline technology and particularly composite steel pipeline structures which are formed in the field by helically winding interlocking steel strip onto a corrosive resistant liner. This greatly reduces the pipe wall thickness, weight, and material cost relative to conventional pipes which are often manufactured off site transported thousands of miles and then welded together section by section. Application of this technology is primarily anticipated in the Oil and Gas market. Although secondary markets have been identified e.g. the transportation of water in places like Saudi Arabia. The ability to helically wind the pipe on site promises estimated cost savings of between 30-40 %. In addition to material costs, savings are achieved by reducing the number of welds, skilled welders, and other staff required to be housed for long periods in often remote hostile environments. A licence agreement is already in place with a Scottish based commercial partner. Specifically this lot is concerned with patent attorney provision in respect of assets developed as part of the Chronic Wound Care R&D programme including in particular an associated patent portfolio. The Chronic wound care R&D programme (now complete) focussed on the development of a point-of-care diagnostic platform technology that could be used to diagnose and monitor wound infection both in clinical environments and in the community. In practice a number of analyte detection methodologies and apparatus were created which have potentially broader application. This included a real time Electro-impedance spectroscopy technique protected by two of the patent families below and another technique which uses dielectrophoresis to significantly increase the capture rate of an analyte which is protected by the third patent family. Previous commercialisation efforts have not achieved the desired outcome and we are currently assessing the commercial prospects of the CWC assets. Specifically this lot is concerned with patent attorney provision in respect of assets developed as part of the Ubiquitin Proteasome System R&D programme including in particular an associated patent portfolio. The Ubiquitin Proteasome System R&D programme (now complete) focussed on the ubiquitin proteasome system which controls intracellular protein degradation in mammalian systems in a highly controlled manner. When it goes wrong, disease can occur due to either a build up of proteins that should be degraded, or conversely, degradation of required proteins. It has therefore been implicated in the onset of multiple diseases but due to a lack of relevant technologies required for identifying drug-like modulators of the system, attempts to create therapies that realign the UPS have proved intractable to date. The objective of the programme was develop technologies to link novel UPS components to disease, with a specific focus on cancer, and to provide proof of concept for drug discovery against this class of molecular targets. The programme focused on the components of the ubiquitin proteasome system that confer selectivity to the system and are the ultimate drug targets within the UPS, the ubiquitin E3 ligases. Ubiquitin E3 ligases strongly implicated in specific diseases were selected based on strength of validation and the input from the Programme Advisory Group. Multiple technologies were initially tested and new combinations developed that allowed early hit identification. Extensive downstream assay workflows were developed in parallel allowing hits to be thoroughly interrogated. Novel biochemical, biophysical and cell-based assays were used to selectively identify and prioritise lead molecules against the E3 ligases of interest. Previous commercialisation efforts have not achieved the desired outcome and we are currently assessing the commercial prospects of the UPS assets. Across all programmes we require a single supplier to take over and provide renewal/annuity payment service in respect of the entire ITI Scotland portfolio (see appendix 1 of the supplementary information document). The provider will be responsible for ensuring all maintenance/annuity/renewal payments are made in good time and no payment deadlines are missed. The provider will work in tandem with and under instruction of the programme lead patent attorney (see above) and/or the SE IP Manager. The standard instruction will be to automatically renew all cases unless otherwise instructed and it’s envisaged that reminders and sufficient opportunity will be provided to allow other instructions if required e.g. to passively abandon by not making renewal payment. This function is currently provided by multiple service providers and we would like to consolidate this service into one provider. In addition to the patent attorney support above we require IP analyst support. To clarify this support is expected to include: — The provision of various types of patent search services to include both legal and business type searches. It’s thought this could include e.g. patentability searches, freedom to operate searches, and patent landscape studies. This will demand access to and a good knowledge of specialist searching tools e.g. Thomson Innovation, — For a small number (2 or 3) of the programmes (with particular focus on the Life Sciences area) the IP analyst will be responsible for the day to day management and direction of the portfolio in support of SE’s IP Manager. To be clear each programme will be assigned a patent attorney and that is not the requirement of this role. Instead the IP analyst is expected to leverage their (Life Sciences) technical background considering and scrutinising the available options in tandem with the patent attorney and SE’s IP Manager, — Providing general support in the area of IP covering wide range of ad hoc tasks, — Assisting and supporting in the ongoing evaluation of the ITI Scotland patent portfolio, — Assisting and supporting the monetisation of the portfolio as appropriate.