ATTACHMENT 2
MODEL
ELECTRONIC FILING
MEMORANDUM OF AGREEMENT
BETWEEN THE UNITED STATES PATENT AND TRADEMARK OFFICE AND
[INSERT PARTICIPANT’ S NAME]

1. INTRODUCTION:

This Memorandum of Agreement ("Agreement") between the US Patent and Trademark Office ("USPTO") and [insert name of company or organization] ("Participant") sets forth the complete agreement of the parties with regard to participation in the [insert name of project] for electronically filed patent and trademark applications during the period of [insert dates ]. Also, except as provided below, the parties agree to comply with all relevant statutory, regulatory, and administrative requirements relating to the electronic filing program.

2. AUTHORITY:

(A) This Agreement is entered into pursuant to the authority vested in the Director of the PTO by Public Law 106-113, known as the American Inventors Protection Act of 1999, which included specific language in Section 4804 to authorize the electronic means of filing documents and issuing publications by electronic means.

(B) This Agreement is not an "acquisition" as that term is defined in the Federal Acquisition Regulation ("FAR") 2.101; therefore, the FAR does not apply to this Agreement.

3. BACKGROUND AND PURPOSE:

(A) This Agreement results from the evaluation and selection by the USPTO of one or more proposals received in response to a solicitation or Request for Agreements ("RFA") for ETA Partnerships in the form of Non-Monetary Agreements.

(B) The purpose of this Agreement is to cooperatively market USPTO electronic filing and corespondence in a mutually beneficial manner. USPTO will provide [to be included as necessary] in exchange for agreed services by the Industry Partner to promote electronic filing.

4. DEFINITIONS:

[TO BE INCLUDED AS NECESSARY]

5. APPLICABLE DOCUMENTS:

[TO BE INCLUDED AS NECESSARY. IN THE EVENT THAT "OFFICIAL USE ONLY"

INFORMATION MUST BE PROVIDED BY THE PTO TO THE PARTICIPANT FOR PERFORMANCE OF THE AGREEMENT, THEN THE AGREEMENT WILL INCLUDE THE FOLLOWING PTO ACQUISTION PROCEDURE CLAUSES, AS APPICABLE: "DISCLOSURE OF INFORMATION - SAFEGUARDS"; "DISCLOSURE OF ‘ OFFICIAL USE ONLY’ INFORMATION SAFEGUARDS"; " DISCLOSURE OF INFORMATION - CRIMINAL/CIVIL SANCTION"; AND "DISCLOSURE OF INFORMATION - OFFICIAL USE ONLY".]

6. AUTHORIZED REPRESENTATIVES:

[CONTACT POINTS FOR EACH PARTY TO BE INCLUDED]

7. DUTIES AND RESPONSIBILITIES OF THE PTO:

[STATEMENT OF WORK (SOW) TYPE LAYOUT OF USPTO’ S COMMITMENTS TO BE INCLUDED]

8. DUTIES AND RESPONSIBILITIES OF THE PARTICIPANT:

[SOW TYPE LAYOUT OF PARTICIPANT’ S COMMITMENTS TO BE INCLUDED]

9. LIABILITY:

Each party to this Agreement shall be liable for the acts and omissions of its own employees. The USPTO shall not be liable for any injury to the Participant’ s personnel or damage to the Participant’ s property unless such injury or damage is due to negligence on the part of the Government and is recoverable under the Federal Tort Claims Act {28 U.S.C. 1346(b)], or pursuant to other statutory authority.

10. THIRD PARTY RIGHTS:

This Agreement does not confer any rights or benefits on any target population or any other third party.

11. PERIOD OF PERFORMANCE AND TERMINATION:

(A) This Agreement shall be in effect from the date of signature for the USPTO for a period of one year, renewable for one additional one-year option period by mutual consent.

(B) This Agreement may be terminated by either party upon 30 days after receipt of written notice signed by either of the signatories to this Agreement or by their successors or designees. The Participant understands that in the event the USPTO terminates this Agreement, the Participant has no right to any claim against the Government, including a claim for termination costs.

12. MODIFICATION OF AGREEMENT:

This Agreement may be modified by either party, but only upon mutual agreement. All modifications must be in writing and signed by both of the signatories to this Agreement or by their successors.

13. INSPECTION RIGHTS:

(A) The USPTO may inspect the work performed by the Participant upon reasonable notice to the Participant’ s Authorized Representative and in a manner that will not interfere with the Participant’ s performance of this Agreement. The Participant shall provide access for this purpose to the USPTO’ s Authorized Representative(s) to the location where the work is being performed. The USPTO shall also have the right to inspect the Participant’ s Report(s) of the work performed as a result of this Agreement. The USPTO’ s Authorized Representative shall provide the results of any inspections to the Participant’ s Authorized Representative for any necessary resolution.

(B) The USPTO may evaluate the Participant’ s performance of this Agreement and may provide the results of this evaluation to the Participant, in writing, on a quarterly basis for written comment and return to the USPTO. The evaluation, including the Participant’ s comments, may be used by the USPTO in considering the Participant for future Agreements or Contracts.

14. REMEDIES:

[ANY REMEDIES FOR NON-PERFORMANCE BY EITHER PARTY, IF ANY ARE TO BE INCLUDED OTHER THAN "TERMINATION" AS STATED IN 11(B), MAY BE INSERTED SUBJECT TO MUTUAL AGREEMENT. IF REMEDIES ARE TO BE PROVIDED, THEN THE UNILATERAL TERMINATION PROVISION IN 11(B) SHALL BE DELETED.]

15. LIMITATIONS:

The terms of this Agreement are not intended to alter, modify, or rescind any current Agreement or provision of Federal law now in effect. Any provision of this Agreement which conflicts with Federal law will be null and void.

16. DISPUTE RESOLUTION:

[THE CONTRACT DISPUTES ACT DOES NOT APPLY. UNDER 41 U.S.C. 605(d), USPTO AND THE PARTICIPANT MAY AGREE TO ALTERNATIVE DISPUTE RESOLUTION OR OTHER MUTUALLY AGREEABLE PROCEDURES.]

17. ORGANIZATIONAL CONFLICT OF INTEREST:

(a) Scope

1. Access to and Use of Government Furnished Information
    1. If the Partner, in the performance of this agreement, obtains access to information, such as PTO plans, policies, reports, studies, financial plans, internal data protected by the Privacy Act of 1974 (Pub. L. 93-579), or data which has not been released or otherwise made available to the public, the Partner agrees that without prior written approval of the Government Contracting Officer (identified henceforth as Contracting Officer) it shall not: (a) use such information for any private purpose unless the information has been released or otherwise made available to the public; (b) compete for work with the PTO based on such information for a period of five (5) years after either the completion of this agreement or until such information is released or otherwise made available to the public, whichever is latest; (c) submit an unsolicited proposal to the Government that is based on such information until five (5) years after the completion of this agreement or one year after such information is released or otherwise made available to the public, whichever is earliest; and (d) release such information unless such information has previously been released or otherwise made available to the public by the PTO.

    2. In addition, the Partner agrees that to the extent it receives or is given access to proprietary data, data protected by the Privacy Act of 1974 (Pub.L. 93-579), or other confidential or privileged technical, business, or financial information under this agreement, it shall treat such information in accordance with any restrictions imposed on such information.

2. Access to and Protection of Proprietary Information
    1. The Partner agrees that, to the extent it receives or is given access to proprietary data, trade secrets, or other confidential or privileged technical, business, or financial information (hereafter referred to as "proprietary data" under this agreement, it shall treat such information in accordance with any restrictions imposed on such information. The Partner further agrees to enter into a written agreement for the protection of the proprietary data of others and to exercise diligent effort to protect such proprietary data from unauthorized use or disclosure.

    2. In addition, the Partner shall obtain from each employee who has access to proprietary data under this agreement, a written agreement which shall in substance provide that such employee shall not, during his/her employment by the Partner or thereafter, disclose to others or use for their benefit, proprietary data received in connection with the work under this agreement. Furthermore, the Partner will instill in its employees the philosophy that they will not use or disclose proprietary information or data generated or acquired in the performance of this agreement except as provided herein.

    3. To the extent that the work under this agreement requires access to proprietary, business, or financial data of others, and as long as such data remains proprietary or confidential, the Partner shall protect such data from unauthorized use and disclosure and agrees not to use it to compete with such individuals or organizations.

(b) Subagreements: The Partner shall include this clause, including this paragraph, in consulting agreements and subagreements of any tier.  The terms "agreement", "Partner", and "Contracting Officer" will be appropriately modified to preserve the Government’s rights.

(c) Representations and Disclosures

    1. The Partner warrants that, to the best of the Partner’s knowledge and belief, there are no relevant facts or circumstances which could give rise to an organizational conflict of interest, as defined in FAR Subpart 9.5, or that the Partner has disclosed all such relevant information.

    2. The Partner agrees that, if an actual or potential organizational conflict of interest is discovered afterward, the Partner will make a full disclosure in writing to the Contracting Officer. This disclosure shall include a description of actions, which the Partner has taken or proposes to take, after consultation with the Contracting Officer, to avoid, mitigate, or neutralize the actual or potential conflict.

    3. Prior to commencement of any Task, the Partner agrees to notify the Contracting Officer that no conflict of interest exists or to identify to the Contracting Officer any actual, apparent, or potential conflict of interest the Partner may have.

(d) Remedies and Waiver

    1. Remedies: The USPTO may terminate this agreement for convenience, in whole or in part, if it deems such termination is necessary to avoid organizational conflict of interest. If the Partner was aware of potential organizational conflict of interest prior to award, or discovered an actual or potential conflict of interest after award and did not disclose or misrepresented relevant information to the USPTO, the Government may terminate the agreement, or pursue such other remedies as may be permitted by law or this agreement.

    2. Waiver: Requests for waiver under this clause shall be directed in writing to the Contracting Officer and shall include a full description of the requested waiver and the reasons in support thereof. If it is determined to be in the best interests of the Government, the Contracting Officer shall grant such a waiver in writing.

(e) Modifications: Prior to an agreement modification, the Contracting Officers will request and the Partner is required to submit either an organizational conflict of interest disclosure or an update of the previously submitted disclosure or representation.

(f) Government Indemnity: The Partner shall hold the Government harmless and indemnify the Government as to any cost or loss resulting from the unauthorized use or disclosure of third party information data or software by the Partner, its employees, sub Partners or agents.

18. CONFIDENTIALITY OF INFORMATION:

    1. Any designs, equipment, and/or concepts which evolve from performance there under shall be considered as "Confidential."

    2. The Partner shall not disclose any confidential information obtained in the performance of this agreement. Any presentation of any designs, equipment, or concepts based on information obtained from the tasks covered by this agreement, will be subject to review and approval by the Government’s COTR before publication or dissemination, for accuracy of factual data and interpretation.

19. SECRECY AND USAGE OF PATENT INFORMATION:

All patent applications and the information contained therein are subject to protection against violations of the public trust under which they are submitted (35 U.S.C. § 122). In addition, pursuant to secrecy order provisions of 35 U.S.C. §181-188, work under this agreement may affect the national security. Information contained in any patent application file(s) are restricted to authorized Partner personnel having a need to know.

Patent documents or copies of information contained therein, patent applications, and abandoned files, when furnished to the Partner by the Government, shall be handled in accordance with the provisions of:
    1. 35 U.S.C. §122
    2. 18 U.S.C. §207(1)
    3. 37 CFR §1.14
    4. 35 U.S.C. §181-188

The Partner acquires no right or privilege to use or disclose any information contained in any patent application or other patent files (provided in any form whatsoever) except as required to perform the work under the agreement. Further, the Partner shall not copy, make any use, or disclose whatsoever of any patent information contained in any patent application or related copy or date furnished to the Partner by the Government except for performing the work procured under this agreement.

All personnel and other representatives employed to work under this agreement, or otherwise having access to patent files or data on information concerning the same, shall take the following oath, or affirmation, signed in writing:

"I do swear or affirm that I will preserve application for patents in secrecy, that I will not divulge any information concerning the same to unauthorized person while employed in work under agreement ___________________ or any time thereafter, and that I take this obligation freely, and without any mental reservation or purpose of evasion."

Each employee’s or other representative’s signed oath, or affirmation, shall be retained in the Partner’s files, subject to inspection by authorized Government representatives.

The Government shall have the right to inspect without advance notice the Partner’s premises, records, and work-in progress to determine whether adequate steps have been and are being taken to protect the secrecy of patent information.

The Partner shall submit a plan for protecting patent application documents and all information contained therein. The plan must include measures to adequately protect both documents, data, and all other patent application information during all phases of staging, filming, handling, processing, storage, quality control, or other agreement activities.

Duplication of protected information and other materials by the Partner is forbidden except as specified in task orders.

The Partner shall be responsible for returning all Government-furnished patent document items to the Government upon completion of the work for which the information is needed, and/or upon termination of the agreement in accordance with the Government Property clauses of this agreement.

20. SIGNATURES:

[TO BE SIGNED AND DATED WITH THE NAMES AND TITLES OF EACH SIGNATORY INSERTED.]