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Request for Proposals — Legal Services for Tennessee Technology Advancement Consortium

Request for Proposals | Legal Services for Tennessee Technology Advancement Consortium

October 13, 2023

Re: Patent Application Preparation, Prosecution, and IP-Related Legal Services for TTAC

Launch Tennessee (LaunchTN) and the Tennessee Technology Advancement Consortium (TTAC) seek proposals for legal services focused on patent application preparation, prosecution, and other IP-related legal services. TTAC seeks to create a statewide technology transfer office to provide universal access to innovators at Tennessee universities in collaboration with the University of Tennessee Research Foundation, Vanderbilt Center for Technology Transfer & Commercialization, The University of Memphis, Tennessee State University, and Tennessee Technological University.

Overview

TTAC, overseen by LaunchTN, is dedicated to optimizing innovation flow to the marketplace, generating revenue for research, and positively impacting Tennessee’s economy.

During the pilot year LaunchTN anticipates seeking legal counsel for the IP escalation of up to 15 technologies through the TTAC and the creation of a collaborative agreement for service expansion to additional universities in subsequent years pending program funding.

Accordingly, LaunchTN seeks legal counsel that understands our objectives and will act as a partner in our ultimate goal to make Tennessee the No. 1 place in the country to start and grow a business.

Proposal Requirements

I. Executive Summary:

Provide an overview of your firm, emphasizing experience in intellectual property law, and commitment to LaunchTN’s objectives.

II. Professional Experience:

Describe your firm’s expertise in IP law, specifically in patent application preparation and prosecution. Highlight prior work with similar organizations and universities.

III. Team Qualifications:

Identify the lead attorney and key team members, specifying their relevant experience in IP-related legal services, specifically Ph.D. level attorneys and fields of postdoctoral studies of staff members.

IV. Approach:

Outline your strategy for providing high-quality, cost-effective patent applications aligned with LaunchTN’s goals.

V. Pricing Proposal:

Present fixed fee pricing arrangements for the services, including but not limited to hourly billing rates and proposed rates as per the attached pricing table but in any case, please include flat fees, if applicable, for: 

  • Provisional patent filings
  • Utility Conversion
  • Patent Searching
  • Answering USPTO Office Actions (may have a scaled depending on the severity of rejection


VI. Additional Services:

Indicate any non-patent services your firm can offer, such as copyright filings, licensing transaction assistance, or regulatory support.

VII. Conflicts

Please describe representation by the applicant of any kind where LaunchTN is or may become an adverse party.  In addition, please describe the applicant’s procedure for determining if a possible new LaunchTN patent prosecution matter might have a subject matter conflict, as well as the applicant’s policies and procedures for addressing conflict of interest issues.

VIII. Partnership:

Provide details on how your firm can collaborate with TTAC and LaunchTN regarding start-up activities, client contacts, reporting, and sponsorship opportunities.

IX. References:

Submit up to three references from similar clients. 

Timeline:

  • Please respond to this request by November 13, and email questions anytime before that deadline.
  • LaunchTN will select an agency by November 17.
  • Legal services provided through the PILOT must be complete by June 30, 2024.

Proposal Submission

Proposals are due by no later than 11:59 p.m., CST, on Nov. 13, 2023 via email to:

Tennessee Technology Development Corporation d/b/a Launch Tennessee
Attn: Technology Advancement Manager
charles@launchtn.org

Evaluation of Proposals:

While price is an important factor, LaunchTN will evaluate proposals on price and the following criteria:

  • Capacity to provide high-quality IP protection services
  • Ability to establish a collaborative partnership beyond the pilot year.
  • Qualifications of staff members to be assigned to the engagement
  • Firms understanding of needed work
  • Alignment with LaunchTN’s vision for growing innovation and entrepreneurship in Tennessee
  • References and track record
  • Quality of the proposal

 

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