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					        Marshall University

         Request For Proposal

         Intellectual Property
       Counsel to the University

                  Issued by:
Marshall University Technology Transfer Office
              August 15, 2008
A. Notice

Information provided in this request is confidential and is to be used only for purposes of
preparing a proposal detailing the scope and cost of providing Intellectual Property Counsel to
the Marshall University Technology Transfer Office. It is expected that each proposer will read
the request with care, as failure to meet certain specifications or conditions may invalidate a
Proposals are being solicited by the Technology Transfer Office (hereafter referred to as the
TTO) of Marshall University (hereafter referred to as University or MU). The TTO reserves the
right to accept, reject, or negotiate any or all proposals or any portion thereof. Price shall not be
the sole criteria for selecting a legal firm or firms. Rather, scope of available services, experience
with similar clients, and references of the prospective legal firms shall also be considered.
Information contained herein is believed to be accurate, but is not to be considered a warranty.
Requests for additional information clarifying the specifications should be directed via e-mail or
fax to Marshall University Technology Transfer Office, Attn: Amy Anastasia, Assistant Director,
at (304) 696-4365, or

B. General Information

1. Agreement

A written agreement will be drawn up between the TTO, as the client, and the selected legal firm
specifying the terms and conditions of the agreement.

2. Terms

The initial agreement would be for one year. In addition, the agreement may be annually
renewed at the option of the TTO for up to four additional years provided services and fees are
satisfactory. The proposal should address fees for all five years.

3. Records

Records, files, data and legal work product regarding the University and the TTO remain the
property of the TTO.

C. Preparation of Proposal

Three copies of the proposal must be submitted. Proposals must indicate both the type of services
and the estimated number of hours for each. The total proposal shall include all costs associated
with services provided by the firm. Proposals are to clearly indicate all costs and the basis for
their determination.
D. Procedures for Submission of Proposals

All proposals are to be submitted to the address indicated below no later than September 15,
2008. The TTO may reject any proposal that is received after the specified date and time.

Marshall University
Technology Transfer Office
Attention: Amy Anastasia
Assistant Director
401 11th Street, Suite 1300
Huntington, WV 25701

F. Period of Validity

All proposals must remain valid for a period of 120 days after the due date specified.

G. Interpretation of Specifications

If any person contemplating submitting a proposal is in doubt as to the meaning of any part of
this request, he/she may submit a request in writing to Amy Anastasia, Assistant Director at the
address listed in Section D or via e-mail to for an interpretation. Any such
request must be submitted not later than by 5:00 P.M on September 1, 2007. The firm
submitting the request will be responsible for its prompt delivery. Oral explanations will not be

H. Consideration of Proposal

The Vice President for Research and Chief of Staff/General Counsel shall represent and act for
the University in all matters pertaining to this request for proposal. The University reserves the
right to reject any or all proposals.

I. Proposal Format

The Proposal should include a discussion of your understanding of the scope of legal services
required and should indicate your plan and time schedule to initiate the engagement. A concisely
outlined proposal providing the scope of services and corresponding costs which is easily
understood and clearly readable will receive more favorable consideration.
Please include in your proposal the following:
    1. A short (one page or less) executive summary of why your firm should be selected.
    2. Resume of the primary representative as intellectual property counsel to the University.
    3. Resumes of others who may work on University intellectual property affairs.
    4. A list of institutions of similar size that your firm has represented in any matter since
        January 1, 2005.
    5. A brief synopsis regarding each suit, claim or grievance, pertaining to technology transfer
        related activities, brought against the firm, including its attorneys, since January 1, 2005.
   6. The address and telephone number for the firm’s main office and any branch offices that
      may be involved in providing services to the University.
   7. Names, addresses, phone numbers, and contact persons for at least three University
      clients for which legal and intellectual property services have been provided and which
      may be contacted as references.

J. Acceptance of Proposal

The TTO anticipates that it will enter into a fully executed agreement with the selected legal firm
on or before December 1, 2008, (at which time the selected legal firm will be required to provide
evidence of professional liability insurance).

K. Affirmative Action

Marshall University is committed to affirmative action and equal opportunity in all areas of its
operation. Each respondent firm must affirmatively state that its policies and practices are in
compliance with state and federal laws governing equal opportunity and civil rights in the

L. Mission
To serve Marshall University Technology Transfer Office as its intellectual property counsel by
providing legal advice and counsel, recognizing the quasi-governmental nature of the

M. General Responsibilities

Work with Director of TTO and General Counsel of University to advise TTO in matters
including but not limited to the following:
     Conflict of interest (individual and institutional)
     Sponsored Research Agreements
     Material Transfer Agreements
     Prior art searches
     New policy development

N. Law Firm Qualifications

Has demonstrated expertise in the following:
    conflict of interest
    patent law
    technology licensing
    corporate law
    Bayh-Dole legislation
O. Conflict of Interest

The University and TTO are very sensitive to matters of conflict of interest. The proposal must
address the firm’s policy and procedure for addressing conflict of interest issues.

P. Primary Representative Qualifications

The TTO shall select the Primary Representative and any subsequent replacements, interim and
otherwise. The Primary Representative:
     Shall be a member of sufficient standing to effectively call upon and utilize the resources
      of the law firm
     Must have knowledge and experience representing public, not-for-profit entities
      (preferably institutions of higher education) and/or quasi-governmental organizations
     Must have strong knowledge and interest in patent law and licensing
     Must have strong interpersonal and communication skills and demonstrate the ability to
      work with a diverse organization
     Additional commitments of law firm and primary representative:
            Does not delegate functions of the Primary Representative without prior consent
               of the TTO.
            Identifies and discloses potential conflicts of interest and obtains consent where
            Ability to work with local and other external counsel, if applicable, and with
               University representatives.

Q. Compensation & Billing

Please submit a proposal for compensation consistent with the following:
     The level of work is anticipated to be at least 200 hours per year. In pricing services,
       bidding firms are encouraged to consider the “non-profit” status of the University.
     The selected law firm shall provide a monthly itemized billing statement. The statement
       must include a description of the subject matter of work, the attorney or legal
       assistant/paralegal, the time spent, the rate charged and the total of the amount billed for
       that item.
     Include with the proposal, an explanation of reimbursable expenses and the method for
       determination of cost for reimbursable expenses.