Isis Innovation Ltd patent tender process 2014
Questions and answers: expressions of interest
The following table lists all the questions that we have received from patent attorney firms
interested in submitting expressions of interest, together with our answers.
There is some overlap between questions and some duplication; in the interests of full transparency
we decided to show all questions received. We have only edited to the extent necessary to
anonymise the questions.
Please would you confirm whether or not a firm ISO accreditation is not definitive in our
has ISO accreditation will be definitive in the
selection process.
selection process.
Will our lack of the ISO accreditation/
certification mean we cannot proceed with the
application?
The only stipulation we are currently making is
that candidates must be regulated by the
Intellectual Property Regulation Board (IPREG).
With regard to the information requested in
the questionnaire in relation to examples of
previous approaches to pricing taken with
clients, will it be sufficient, at this stage, to
provide an outline of general approaches taken
or do you require specific numbers?
General approaches to pricing will be sufficient
for expression of interest purposes.
How many firms do you ultimately intend to
select?
We anticipate the appointed panel will
comprise around 4 members.
Roughly how many different providers of
patent services do you anticipate will be
appointed in total to the new panel of
providers?
We anticipate the appointed panel will
comprise around 4 members.
How many firms will be on the final panel?
We anticipate the appointed panel will
comprise around 4 members.
What service areas are of concern with your
current suppliers?
We don’t have any specific area of concern. We
want to move to a transparent tender process.
Which firms do you currently use for legal
services?
We mainly use internal (University of Oxford)
legal service for contractual work.
Roughly what do you anticipate will be the
likely percentage split between the following
four general subject areas for the new patent
Historically our disclosures have been roughly
50% Physical Science and 50% Life Science.
work: biotechnology, genetics, etc. / chemistry
/ physical sciences, materials sciences and
mechanical engineering / telecoms, computing
and information sciences?
Would you have a preference for fixed fee
offers compared to offers based on service
charges and hourly rates?
We like the ‘certainty’ of fixed fees for new
drafts – but we rely on our service providers to
tell us when it’s not feasible to work within
fixed fee constraints to achieve the level of
quality we require.
In the event that our firm is shortlisted, is there
a special form or template that should be used
for preparing the full tender?
We will provide a tender framework document.
Will any preference be given to the firms you
use at present?
No
Assuming quality work, will the ultimate
decision come down to cost?
Whilst cost will obviously have an impact on our
decision our ultimate decision will be based
upon a number of factors including:
o
o
o
o
The service provider’s
experience of working with
world-class academics.
Knowledge and experience of
university tech. transfer.
Breadth and depth of
technologies covered by the
service provider.
Delivery, approach and
judgement of the service
provider
When you ask "Give examples of previous
approaches to pricing you have taken with
clients", would you like specific figures or a
more general guide to pricing structures and
discounts?
General approaches to pricing will be sufficient
for expression of interest purposes.
What is meant by “Specialist IP lawyers” in this
question:
By 'specialist IP lawyer' we mean lawyers who
have specialism in IP litigation and/or
contractual matters relating to IP such as
licensing agreements.
Does your firm have specialist IP lawyers, either
in-house or by alliance? If yes, please give brief
details.
Please would you indicate your total
expenditure on services of the type covered by
this tender (excluding official fees) for each of
the last three years? If possible, can you
provide the same information broken down by
Our current total patent budget is £3.2M
annually. Approximately 25% of the spend
relates to drafting and new filing and PCT filing
costs (including disbursements). The remaining
75% relates to national phase filing and
technology area?
prosecution, grant, maintenance costs etc.
Historically there has been
an approximate 50/50 split between life and
physical sciences.
Please would you indicate who are the present
providers of the services of the type covered by
this tender.
We currently work with a wide variety of patent
agent service providers. We do not currently
have a panel of service providers.
How many firms you expect to appoint on the
panel?
We anticipate we will appoint about 4 service
providers.
As a follow up to that, if a number of firms are
likely to be appointed to the panel, how do you
expect work to be distributed amongst the
panel?
We expect the work to be distributed to the
most suitable service provider for the
technology.
With regard to the request for qualifications
and experience of the members of staff who
would be engaged in fulfilment of the contract,
please could you indicate whether this is
required for the main members of staff who
would be engaged on a regular basis or for all
members of staff who might potentially be
engaged, even on an irregular basis.
Details of primary contacts will be sufficient.
With regard to the question about the
technology areas that we cover, please could
you indicate the level of detail to which you
would like our answer.
We would like to try and establish the breadth
and depth of potential suppliers’ expertise as
much as we can from the expressions of
interest.
What has prompted you to go out to tender?
We are keen to have more transparency in how
we allocate our patent work.
How many advisors are you looking to shortlist? We anticipate the appointed panel will
comprise around 4 members.
Will any of your existing panel firms be reappointed, and how many firms do you expect
to have on your panel after this appointment
process?
We don't currently have a panel - but it's
possible that some of the firms we currently
used - or some that we have used in the past will be appointed.
What are the key decision-making criteria and
how are these weighted?
Weighting for expressions of interest responses
will be as follows:
30% related to ability to
demonstrate working with
world-class academics and
University Tech. Transfer
Offices.

30% related to pricing

20% related to delivery and
approach

20% related to technology
depth and breadth
What are your expectations of costs for the
drafting and filing of a new UK patent
application, such as for example a life science
patent application?
Whilst we are keen to have some certainty with
fixed fees where appropriate, we also recognise
that these will not always be feasible for
complex drafts. We want quality patent
drafting as economically as possible.
Who will be on the decision-making panel and
what are their roles?
The decision making panel is yet to be finalised
but will include Steven Bayliss (Patent & Licence
Administration Manager), Mairi Gibbs
(Operations Manager) and Matthew Carpenter
(Technology Transfer Manager).
May we speak to someone on the decisionmaking panel at any stage of the tender
process in order to better understand your
requirements?
In the interests of transparency we would
prefer to respond to enquiries via this Q&A
process. If you are shortlisted, there will be a
further opportunity to ask questions.
Will all advisors on your advisor panel be
judged on the same criteria or are you looking
for different firms to bring different things
(such as technology-specific expertise)?
Technology capability breadth and depth is
something we are interested in. It may
transpire that the best way to achieve this is to
appoint specialist firms. We have no fixed
views at this point.
Are there any specific technology areas where
you believe your current panel could be
stronger? Are there any areas in which you
specifically require additional assistance?
We don't currently have a panel.
The tender document states that “technical
capability and experience across a very wide
range of technologies” is required for
successful advisor panel appointees. Will you
consider appointing an advisor who has the
required capability and breadth of experience
but wishes to tender for work only in one or
more specific areas of technology?
Technology capability breadth and depth is
something we are interested in. It may
transpire that the best way to achieve this is to
appoint specialist firms. We have no fixed
views at this point.
Our offices are not in Oxford and our attorneys
can easily attend meetings in Oxford. Does this
fulfil your location requirement?
Yes
Is ISO accreditation essential for appointment
to your advisor panel?
No
Please can you provide an indication of the
likely proportion of priority filings within each
of the main technical disciplines (biotech/life
sciences, chemistry/materials, hi-tech/electrical
and engineering)?
Historically our disclosures have been roughly
50% Physical Science and 50% Life Science
Are there any specific technical areas of
particular interest to Isis Innovation?
We get an incredibly diverse range of disclosure
from the University of Oxford and we do not
concentrate our resources on any specific
technical area.
In the expression of interest, it is stated that Isis
are interested in candidates with experience
across “a very wide range of technologies”.
Would Isis consider businesses such as ours,
which offer the benefit of highly developed
specialist experience and knowledge within a
specific field? Our expertise enables us to
obtain the best protection possible for
inventions in the technically demanding sector.
Technology capability breadth and depth is
something we are interested in. It may
transpire that the best way to achieve this is to
appoint specialist firms. We have no fixed
views at this point.
It is also mentioned that successful candidates
could be involved in non-prosecution activities,
such as providing seminars, training and law
updates. This is something that our business
would be very interested in, as we regularly
provide seminars and clinics for a range of
businesses. How frequently would a successful
candidate have the opportunity to provide such
support?
Historically there have been a number of
opportunities per year, e.g. internal seminars
for Isis staff, speaking at external events. We
would expect this to continue.
We realise that some different institutions
prefer to interact with their patent agents in
different ways. Our business prides itself on
providing a flexible service which meets each
client’s individual needs and preferences. Could
you please give us an idea of how the staff of
Isis Innovation and the academics at the
University of Oxford prefer to interact with
patent agents? For example, does the drafting
process typically start with a meeting with the
inventors, or would the attorney be initially
provided with documents detailing the
instructions and the invention?
The drafting process typically starts with a
meeting between attorney, Isis TTM and
academics, supported by exchange of
documents
and
email/phone
contact.
Subsequent prosecution correspondence is
often by email with meetings as necessary.
Correspondence is usually via the Isis member
of staff, not direct between attorney and
academic outside a meeting.
Isis is the
interface for patent activity and the client for
the attorneys.
Should we submit the expression of interest as
a company, and/or as one or more individuals
within the company who have particularly
strong and appropriate experience/expertise?
Please would you submit your expression of
interest as a company.
Will the full tender documents required after a
successful shortlisted expression of interest
Yes, additional details will be required. We will
issue full instructions to shortlisted candidates
require additional details information to that of
the questionnaire for the expression of
interest?
in mid-November.
Will ISIS be interested in experience in
specialist niche subject-matters?
Yes
Is it harmful to our bid that we are a life
sciences and chemistry practice with no
electronics or software focussed attorneys?
No
Are you able to send a Word version of the
tender document?
Our tender documents will be circulated only to
shortlisted parties in mid-November 2014, with
full tender documents due for submission one
month later.
Please can you confirm whether there are any
allocated score weightings against the
questions in the Expression of Interest
document and, if so, what are those
weightings?
We will apply the following weightings to your
responses:



30% related to ability to
demonstrate working with
world-class academics and
University Tech. Transfer
Offices.
30% related to pricing.
20% related to delivery and
approach
20% related to technology
depth and breadth
Please can you confirm the size of the existing
panel of advisers and explain how this panel is
managed? How many panel members are Isis
Innovation looking to recruit over the next 3
years?
There isn’t an existing panel of advisers. We
anticipate the appointed panel will comprise
around 4 members.
What will be the main areas of technology
focus for Isis Innovation over the next 3 years?
Depends on the disclosures we receive from the
University of Oxford. Historically our
disclosures have been roughly 50% Physical
Science and 50% Life Science.
Does Isis Innovation plan on entering any
specific new markets over the next 3 years? If
so, can you please confirm which?
It entirely depends on the technologies
disclosed and licensees/potential licensees.
Is Asia an important region for Isis Innovation
going forward?
Yes. We have a Hong Kong subsidiary and JVs in
China.
Does Isis Innovation currently have a patent
watching service in place?
No – but we have access to subscription
services that enable us to do this ourselves.
Please can you confirm the current and
Our current total patent budget is
predicted annual spend on IP-related legal
services (excluding disbursements) in Europe?
Also, please can you provide a further
breakdown by patent prosecution and
litigation/commercial IP matters?
£3.2M. Approximately 25% of the spend relates
to drafting and new filing and PCT filing costs
(including disbursements). The remaining 75%
relates to national phase filing and prosecution,
grant, maintenance costs etc.
The Expression of Interest outlines the
requirement for patent work only. Have Isis
Innovation considered adequate protection for
their trade mark, design and copyright
portfolios?
Considered - but our requirements for TM,
Design etc. protection are minimal. We would
anticipate working with a panel member if such
IP rights were required.
When should we expect answers to these
questions, which will help inform the
information we provide in the Expression of
Interest?
Answers to your questions are provided herein,
and will be posted on our website on
14/10/2014.
Should the Expression of Interest be provided
in a digital or hard copy to Steven Bayliss?
Digital copy to Steven Bayliss will be sufficient.
Contact details
E: Steven.bayliss@isis.ox.ac.uk T: +44 (0)1865 280841
F: +44 (0)1865 280831
http://www.isis-innovation.com/
Isis Innovation Ltd, Ewert House, Ewert Place, Summertown, Oxford OX2 7SG
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