National Research Council Canada IP Prosecution and IP License Management Solution Project Appendix 1 Statement of Work Version 6.0, 10 December 2013 ii
Table of Contents 1. Instructions to Bidders... 1 2. Introduction and Background... 1 NRC... 1 Current Situation... 1 Anticipated Outcomes... 2 3. Overview of IP Management Renewal... 2 NRC s Intellectual Property (IP) Management Approach... 2 Management... 2 Ownership... 2 Disclosure... 2 Protection... 3 Exploitation of our IP... 3 Enforcement... 3 IP Management Project Overall Approach... 3 Component 1: Implementation of IP Prosecution and IP License Administration Solution... 4 Component 2 (future phase): Implementation of an Enterprise-wide IP Management and IP Portfolio Management Capability... 5 4. Required Work Activities... 6 iii
1. Instructions to Bidders This document defines the work to be conducted in the planning and execution of the project, as well as the expected content of the proposal. It should be addressed in conjunction with Appendix 2 Plan, Methodologies and Approach Response Matrix. Bidders are requested to develop a free-form proposal describing their plan, methodologies and approach for the project in response to this Statement of Work. Bidders are requested to complete the Response Matrix in Appendix 2 to indicate where in the proposal, the response to each requirement can be found. Bidders submitting solution proposals must address all Required Work Activities, as identified in this document. 2. Introduction and Background NRC The National Research Council (NRC) is the Government of Canada's premier organization for research and development. Working with clients and partners, NRC provides innovation support, strategic research, scientific and technical services. NRC has just what industry needs: infrastructure, personnel, equipment, experience and networking capabilities. NRC offers access to leading technology equipment, research and training programs. It provides industry with a lower-risk way to develop innovative ideas, reduce start-up costs, and shorten time to market. There are many benefits of working with the NRC: NRC enables companies to innovate by providing knowledge, equipment and easier access to applied research; NRC provides technical and commercialization services to industry; NRC undertakes the critical R&D that industry requires; NRC develops the highly skilled workforce that industry needs; and NRC bridges the innovation gap between university-based discovery and industrial commercialization. Intellectual Property is a core product of NRC s work. A significant portion of NRC s revenue depends on its own IP. It is either licensed directly or serves as critical background IP to NRC s collaborative research and technical services projects. Current Situation NRC has a dedicated team of approximately 20 individuals who manage IP prosecution on behalf of NRC and its client institutions in the Government of Canada. The team also administers NRC s IP license agreements. The IP Management team has been using a system called Nucleus, developed by Future Path in Ottawa, Canada. Nucleus, NRC s existing system, has been in place for more than a decade and provides functionality to support IP Prosecution and IP License Administration. NRC s IP management requirements have evolved and the existing system has completed its expected lifecycle. One of the key gaps in functionality of the existing system is the lack of an update service for country rules. This 1
is viewed as a major risk for NRC. The IP Management team has prepared its strategy for the next ten years and developed its business requirements as a first step in refreshing its business operations and supporting application solution. Anticipated Outcomes The goal of NRC s IP Management strategy is to manage (capture, evaluate, own and exploit) its IP to maximize user benefit in accordance with the strategic interests of Canada, NRC and NRC s clients. Specific objectives of the strategy are: 1. Manage risk factors associated with protecting IP 2. Strategically manage IP investments to maximize impacts and revenues 3. Make IP inventory accessible internally 4. Automate key IP management processes and procedures 5. Support business needs, provide access to needed IP data and be user friendly 3. Overview of IP Management Renewal NRC s Intellectual Property (IP) Management Approach First and foremost, NRC is responsible for managing its IP to drive socio economic benefits for Canada. NRC will strive to extract maximum value from the IP that it develops and co-develops, and to ensure that the chosen IP protection and commercialization strategies support the current and future needs of Canada and of NRC. Management The Business Management Support team under the direction of the VP Engineering and Business Management is responsible for ensuring effective management of the IP portfolio in accordance with NRC policies and guidelines. The IP portfolio will be managed as a corporate asset for the benefit of NRC. Ownership For IP, including inventions and know-how, whether patentable or not, created by People who work for NRC including inventions made by NRC employees while acting within the scope of their duties or employment or made with facilities, equipment or financial aid provided by or on behalf of the NRC will vest with the Crown. NRC has full authority to license, sell or otherwise deal with such inventions and know-how. The ownership, use rights and positions for background and arising IP for NRC and its clients will be identified and properly protected in all NRC contracts. Disclosure NRC employees are obliged to disclose all IP deriving from their work, and are obliged to maintain an appropriate written research log. Specifically, NRC employees are obliged to file an invention disclosure statement using the Public Servants Inventions Act "Form 1" document in a timely fashion for any invention arising from their work, including the creation of software, and to execute all requested documents relating to assignment and protection of IP rights in any of his or her work for which ownership vests in the Crown. 2
Protection NRC maintains an IP portfolio of technologies (owned, co-owned and licensed in) that protects NRC s freedom to operate and secures competitive advantages for future users of the technology. All arising IP will be promptly disclosed and assessed. The assessment process shall take into consideration various factors such as its relevance to NRC, NRC s clients, benefit to Canada and commercialization potential. Resulting IP protection strategy will be determined, documented, and implemented. The portfolio of existing IP rights will be re-assessed on a yearly basis to determine its continued relevance to NRC and to NRC clients. IP protection tools used by NRC will include patent, copyright, Trade-Mark, Official Marks, Plant Breeders Rights, Industrial Designs and Integrated Circuit Topographies. NRC will also use Trade- Secrets when appropriate. Exploitation of our IP IP is a key element to facilitate successful technology commercialization and transfer. The IP will be central to all program design, and NRC will strive to use the appropriate tool to exploit that IP to maximize the benefit for Canada. NRC will engage with its clients and stakeholders through various types of agreements such as, but not limited to, service agreements, consortium agreements, collaborative research agreements, and license agreements. In certain circumstances, when it is in its best interest, NRC may agree to transfer or sell its patent rights to a third party. Such arrangements require prior approval from the President of NRC. Enforcement NRC will vigilantly enforce its statutory and non-statutory IP rights. While reasonable efforts will be made to resolve issues through discussions and other means such as mediation or binding arbitration, litigation may be employed. IP Management Project Overall Approach NRC has become increasingly focused on the needs of clients. In particular, our engagement with targeted industry players has seen an increase across many facets of the organization. NRC s new focus requires strengthened IP management processes and supporting systems to facilitate decision making and enable the development and management of high-value client and stakeholder relationships. To this end, the need to have a more complete picture of IP to support both business development and corporate reporting activities has become ever more important. The NRC Operational Plan for FY 2012-13 has called for reforms in NRC s business development and client management approaches. Specifically, IP is highlighted as a critical piece to this undertaking: Intellectual Property Management (IP) Promotes and encourages optimal and flexible strategies and practices that maximize benefits to Canada and industrial usage of NRC IP. NRC Operational Plan for FY 2012-13 3
Implementing an effective IP Management capability, composed of business process, supporting technology solutions and enabled staff and management, will generate the following benefits: NRC s Business Management Services (BMS) team will have the tools and support it requires to more effectively identify and protect NRC s IP. NRC will have a more complete, accessible and manageable inventory of IP. There will be more clarity around which IP and patents support NRC s business activities. There will be improved processes and tools for developing, disclosing, capturing and managing IP through its lifecycle. NRC will have a greater ability to leverage and develop its IP into products and services. NRC has decided to address its IP Management requirement in two parts: 1. As a first priority, NRC will engage a service provider to deliver a technology solution for IP Prosecution and IP License Administration. The new solution will be based on commercial off-the-shelf (COTS) components, including an update service for country rules; and 2. In a future phase, NRC will implement support for broader IP lifecycle management across the organization. This is planned as an extension to NRC s existing CRM solution, which has been positioned to support the requirement. Each of these is described below. Component 1: Implementation of IP Prosecution and IP License Administration Solution Case for Change: IP is a core product of NRC and is a critical input for a significant portion of NRC s revenue. It is protected by patents, trademarks and copyrights on individual technologies and inventions filed in patent offices around the world. NRC also provides IP Prosecution services to other Government of Canada institutions on a fee basis, generating additional revenue. The existing system lacks critical functionality required by NRC to manage IP prosecution activities, including managing maintenance of existing patents. BMS is currently managing prosecution activities for approximately 2000 files in 75 countries around the world, on a largely manual basis with limited automation support. Missing a single filing date could cause the loss of patent protection on any one of NRC s critical technologies. NRC is therefore at very high risk of losing protection of its IP due to manual error. Scope of Work: Acquisition and implementation of: o A COTS application to support in-house IP Prosecution activities for NRC s IP and client IP; o Country law update services for patent/trademark offices around the world; and o A COTS application to support License Administration. Cleansing and migration of data to the new application services. Decommissioning of the existing system. Training for up to 20 total users who will be involved in the focused activities of Patent Prosecution and/or License Administration on behalf of all of NRC. A minimum of two months of parallel operation of NRC s existing system and the new application service during startup phase. 4
The scope of direct impact is for a focused group of 20 people, primarily in BMS, who are involved in managing patents and administering license agreements. Implementation of this option will result in a significant reduction in manual activities related to tracking patent prosecution and monitoring of all international patent regulations. It will also result in a significant reduction in risk to NRC of accidentally allowing a critical patent to lapse. Component 2 (future phase): Implementation of an Enterprise-wide IP Management and IP Portfolio Management Capability Component 2 is planned as a future phase extension, building on the capabilities of Component 1. It is not part of this requirement but is presented for information purposes. Case for Change: IP is a core product of NRC and is a critical input for a significant portion of NRC s revenue. The lifecycle of NRC s IP begins well before the inception of a new idea. It begins with a formal agreement for research services, identifying how any resulting or arising IP will be addressed. NRC has a limited ability to identify and manage individual IP inventions as they move through their lifecycle from inception through to commercialization. NRC also has a limited capability to view and manage its overall portfolio of IP. An improved capability operating across the enterprise would engage portfolio and program leads with BMS in the following: Understanding which IP supports revenue generation, directly or indirectly; Better aligning investments in ongoing IP development and protection with NRC business strategy, potential impact and revenue-generating capacity; Better directing investments in IP protection based on assessed value of IP; Achieving savings in IP protection spending for low-value IP; Supporting new business models for revenue generation, such as licensing of selected external IP to supplement NRC s IP to create new products and services for clients; and Implementing a framework to better encourage and recognize inventors in declaring new IP so that it may be assessed and protected appropriately. Scope of Work: Establishing agreement on initial enterprise-wide processes for IP Lifecycle Management and IP Portfolio Management; Configuration and implementation of a functionality to support IP Lifecycle Management and IP Portfolio Management with the following basic capabilities: o An NRC-wide shared repository to record and track all of NRC s IP through its lifecycle; o A mechanism to encourage, support and assist researchers in disclosing inventions/ technologies; o The ability to map IP to researchers, programs, portfolios, client agreements, patents and any other dimension required by NRC; o The ability to integrate with the current NRC CRM environment to enable IP inventory to be linked to agreements in development; and 5
o The ability to conduct reporting and analysis on the entire portfolio of NRC s IP to determine trends, profitability, investment priorities and other management requirements. (Optional) Integration with the new NRC CRM application, opportunity management process and contracting process; and Orientation for up to 200 users who will be peripherally involved in the new capabilities. NRC acknowledges that commercially available solutions for IP Lifecycle and Portfolio Management are highly configurable to support wide variances in approaches between organizations. They also include extensive arrays of features and functions, well beyond what is required for NRC at this point in time. A portion of IP management and development of license agreements is already handled within NRC s CRM platform. NRC therefore has opted to develop/configure only those functions of IP Management that are relevant to NRC, as extensions of the current CRM solution. This is expected to provide better integration, easier training and less development effort than duplicating all of the features of commercial products. 4. Required Work Activities The table below defines the key elements of work that are to be addressed in proposals from each bidder. Required Work Activity Project Planning and Management Description Bidders will address project planning and management services for the full scope of work they propose in response to this RFP. Bidders will include a draft project plan with their proposal, outlining: Deliverables Project Plan Project Schedule (updated weekly) The scope of work proposed (referencing other areas of the proposal as appropriate) and any exclusions to scope; A list of key activities to be conducted (i.e., high level work breakdown structure (WBS)); Responsibilities and expected time commitments of NRC participants at each stage; A project schedule, with sufficient level of detail to demonstrate how all required work and signoffs will be completed prior to 31 May 2014 (may be combined with WBS); The primary assignments of proposed team members by activity (i.e., who is leading each activity) including any activities assigned to NRC resources; The proposed change control process to address changes in scope requested by NRC or the service provider; The proposed approach for making decisions and reaching consensus on questions, as they arise (e.g., in relation to scope, approach, solution design/development, acceptance, risks, issues and other aspects of the project); The proposed method for tracking and managing risks and issues that arise throughout the project; and The approach to status reporting and coordination between the parties. Weekly Status Updates The bidder will propose weekly status update meetings to discuss progress, as well as any risks or issues that may, among other things, affect the achievability of the deadline date. The status meeting can be in person, by telephone or online. They can be brief, 6
Required Work Activity Description consuming only the time required to convey and discuss schedule progress and how any time lags (or risk thereof) will be addressed. NRC believes an iterative approach is most appropriate for the solution development work to be conducted, allowing time and opportunities for user engagement for input, revision and validation. NRC requires that the work to configure and implement the solution be conducted in two phases. The first phase will include work proposed by the bidder that can be successfully completed, tested and accepted prior to March 31, 2014. The second phase will include the remaining work proposed by the bidder that must be successfully completed, tested and accepted by May 31, 2014. The purposes of the two phases is to enable NRC to manage its available budget across the fiscal year boundary on March 31, 2014. Key milestones are: Deliverables Contract Award NRC intends to complete negotiations, if required, and issue a contract to a service provider by 7 February 2013. All commercial products, including software licenses, will be delivered to NRC for review and acceptance prior to 31 March 2014. Software Solution Phase 1 Complete The completed and tested Phase 1 software solution, as defined by the bidder, fully configured to meet NRC s agreed requirements, will be delivered to NRC and installed on NRC s test environment for acceptance testing no later than 3 March 2014. It will be accompanied by the most recent test results to demonstrate that the product is ready for acceptance testing. Phase 1 Software Solution Acceptance NRC will conduct acceptance testing throughout the first two weeks of March 2014, referring any issues identified to the service provider for remediation and re-testing. Final acceptance of the full software solution will be no later than 17 March 2014. Software Solution Phase 2 Complete The completed and tested Phase 2 software solution, addressing the remaining components included in the proposed solution, fully configured to meet NRC s agreed requirements, will be delivered to NRC and installed on NRC s test environment for acceptance testing no later than 1 May 2014. It will be accompanied by the most recent test results to demonstrate that the product is ready for acceptance testing. Phase 2 Software Solution Acceptance NRC will conduct acceptance testing throughout the first two weeks of May 2014, referring any issues identified to the service provider for remediation and re-testing. Final acceptance of the full software solution will be no later than 16 May 2014. Full Solution Acceptance The accepted software and configuration will be deployed on the operational 7
Required Work Activity Description infrastructure in the week of 19 May 2014 (noting that 19 May is a statutory holiday in Canada). At the same time, data will be converted and loaded, ready for operation. User training will be conducted during the last two weeks of May. The completed solution, including verified data, will be ready for final verification and acceptance no later than 30 May 2014. Deliverables Initial Deployment NRC will begin operation of the accepted solution as of 1 June 2014, in parallel with the continued operation of the legacy system. At this time, the solution provider will initiate any and all proposed services for operational support, maintenance and country law updates, as well as the warranty on the solution configuration and integration. Full Deployment NRC will continue parallel operations of the new and legacy solutions for a period of approximately 11 weeks, ending 16 August 2014. NRC will begin decommissioning the legacy system in late August 2014. Warranty will continue for a full six months, expiring 30 November 2014. Solution Design and Development Bidders will address this component as part of their proposal. The work associated with the overall software and technology solution may vary to some degree, depending on each bidder s proposed solution. NRC believes that an iterative approach to solution design and configuration is most appropriate, allowing designated users to get engaged and validate solution components as they are refined. Bidders should address the following in their approach: Startup: Concepts training for project team participants in any applicable software products that are proposed (estimate a 2-4 hour session) Solution Architecture and Design: Implementation architecture recommendations, specific to NRC s technology and security environment, addressing interfaces to any externally-hosted components, as applicable Information architecture, in terms of a data model or other documentation, that will enable NRC users to understand the standard and configured structures of data in the system, enabling them to develop reports and analysis Application Design Specifications, including at a minimum: o Specific workflows to be implemented o Business rules to be implemented o Views and reports to be implemented o New data structures, fields, labels, etc., to be configured o Roles, permission structures and access privileges to data and functionality to be configured o Organizational setup parameters to be configured o User interface setup, including dashboards and default startup screens to be configured Concepts Training Session Solution Architecture Solution Design Specifications Resulting Application, configured for NRC Test Plan, Scripts, Results Data Conversion Plan Conversion Test Results (for validation) 8
Required Work Activity Implementation Training Description o Support structures for both official languages Build and test: Configure and test all components and their functionality relative to business requirements and business rules, through multiple iterations, as appropriate Conduct regression testing for each iteration and any new versions Conduct integration testing to verify the operation of any agreed interfaces (if any) to other NRC systems and services Support User Acceptance Testing Data Conversion: Develop conversion plan, including: o Agreed scope of what data must be converted and what is not required (NRC prefers to convert active records only, including approximately 2000 IP files and over 400 license agreements); and o Mapping of legacy data to the new environment Develop cleansing strategy and assist NRC staff in conducting data cleansing as needed Develop and test conversion programs in preparation for deployment, reflecting the planned implementation strategy Bidders will provide an initial implementation approach with their proposals. The successful bidder will be responsible for managing the implementation in coordination with NRC. NRC will retain responsibility for providing the following items: Facilities, including work space, meeting rooms and technology-related storage/data centres; The supporting hardware, operating systems, network, security services and associated infrastructure to support the proposed application solution; The actual installation of licensed software on NRC infrastructure, as appropriate, supported by the solution provider; and Resources to conduct data cleansing and to provide additional detail on business rules and practices, as facilitated by the solution provider. Bidders will describe how and when implementation planning will occur and who will be involved in the process. Bidders will provide an initial training approach with their proposals. The total number of business users requiring training will be 20. An estimated 20 users will require training on the IP Prosecution functionality. An estimated 15 users will require training on the IP Licensing functionality. Bidders are asked to propose optional training services for the postimplementation period (i.e., beyond 30 June 2014) to address the following: Deliverables Implementation Plan Training Plan Curriculum, Course Outlines and Student Materials Software configuration training for business support staff; 9
Required Work Activity Post- Implementation Support Description Technical software training for system administration staff; and Technical software training for developers/integrators. Bidders will propose an approach and specific services for ongoing support for the solution, addressing: Support services for any proposed products, during standard working hours; Maintenance services for any proposed products to be operated by NRC staff, providing regular product updates, fixes and new releases; and Warranty services for a period of six months following acceptance of the solution. Deliverables Post- Implementation Support Plan 10