Intellectual Property (IP) Law and Policy Expert for Advisory Services

INDUSTRY CANADA IC600092 ADVANCE CONTRACT AWARD NOTICE (ACAN)

An Advance Contract Award Notice (ACAN) allows departments and agencies to post a notice, for no less than fifteen (15) calendar days, indicating to the supplier community that it intends to award a good, service or construction contract to a pre-identified contractor. If no other supplier submits, during the fifteen calendar day posting period, a statement of capabilities that meets the requirements set out in the ACAN, the competitive requirements of the government's contracting policy have been met. Following notification to suppliers not successful in demonstrating that their statement of capabilities meets the requirements set out in the ACAN, the contract may then be awarded using the Treasury Board's electronic bidding authorities.

If other potential suppliers submit statements of capabilities during the fifteen (15) calendar day posting period, and meet the requirements set out in the ACAN, the department or agency must proceed to a full tendering process on either the government's electronic tendering service or through traditional means, in order to award the contract.

Contracting Officer Name: Jennifer Ethier Telephone Number: 613-960-7747 Facsimile: 613-941-0319 E-mail: Jennifer.ethier@ic.gc.ca

DESCRIPTIVE TITLE

Intellectual Property (IP) Law and Policy Expert for Advisory Services

BACKGROUND

Industry Canada (IC) is responsible for the development and co-ordination of policies, laws and regulations in the area of intellectual property (IP). In this regard, the activities of the department are aimed at assessing the need for legislative, regulatory and policy improvement, monitoring international developments, and undertaking research and consulting with stakeholders. The work of the department is aimed at ensuring that Canada’s system of IP is competitive and adapted to new technologies and market conditions.

REQUIREMENTS/RESULTS

Industry Canada requires an external IP law and policy expert to provide timely and strategic information, analysis, and policy advice on various elements and aspects of the Canadian patent system. Additional expertise in foreign patent systems is considered an asset. The contractor would provide a balanced, impartial review of policy proposals advanced in response to stakeholder requests for reform of the Canadian patent system.

A key criteria is the ability to demonstrate impartiality. Relating to the pharmaceutical industry, candidates must not have confined themselves or been associated with a law firm which confined itself to, exclusively, being employed by, retained by, or advising only companies from one of the government’s key industry stakeholders (i.e., either innovative or generic manufacturers) within the last five years.

The relationship between the elements of the patent system are often complex, comprising a mix of legal and policy considerations. Because of this complexity, a candidate with significant judicial experience on a federal court adjudicating cross-cutting legal and policy issues related to IP is required. Additionally, given the commercially sensitive nature of some stakeholder concerns, the contractor must possess a current and valid secret security clearance.

The work conducted would be on an “as and when requested” basis.

The work activities under the contract would include

• reviewing proposals and supporting documentation on matters of IP policy; • providing ongoing policy advice on the development and implementation of options for reforming Canada’s patent system arising from Canada’s IP commitments in the Comprehensive Economic and Trade Agreement (CETA); and • providing impartial and balanced information and views rooted in relevant legal and policy related considerations.

The deliverables will be defined on an “as needed” basis and may take the form of written reports and briefings and may include the following:

• provision of written information and advice to the Project Authority on proposals for reform of the Canadian patent system and any other related policy issues; and • preparation for and participation at meetings, roundtables and workshops, when and as required.

IDENTIFICATION OF PROPOSED CONTRACTOR

Name of Contractor: The Honourable J. Edgar Sexton, Q.C. Address: 275 King Street East City: Brockville Province: Ontario Postal Code: K6V 1E3

REASON FOR AWARDING CONTRACT TO THIS CONTRACTOR

The Honourable J. Edgar Sexton has thirteen years of experience as a judge on the Canadian Federal Court of Appeal, participating in more than 1,000 appeals in all types of federal cases, including IP. The Federal Court of Appeal matters handled by Justice Sexton in the area of IP demonstrate the complexity of the legal and policy considerations underpinning the Canadian regime. Justice Sexton was a presiding judge in notable IP cases and for several of these he authored the majority judgement.

Justice Sexton’s judicial experience and current arbitration practice demonstrates his impartiality on issues of patent law and policy. In a field where many experts have regularly advised or worked for key stakeholders, demonstrated impartiality is a key requirement of this contract.

Before becoming a judge, Justice Sexton carried on a full-time practice in the courts and in arbitration. He was chairman and senior partner of the international law firm Osler, Hoskin & Harcourt for twelve years. Additionally, while in private practice, Justice Sexton acted as an expert on Canadian IP law in foreign countries.

Justice Sexton meets the requirement for holding a valid secret security clearance.

MINIMUM ESSENTIAL REQUIREMENTS

Any interested supplier must demonstrate by way of a statement of capabilities that it meets the following requirements:

• significant expertise in Canadian patent law and policy (20 years minimum); • ability to provide reasoned and impartial information, analysis and policy advice; • in relation to the pharmaceutical industry, candidates must not have confined themselves or been associated with a law firm which confined itself to, exclusively, being employed by, retained by, or advising only companies from one of the government’s key industry stakeholders (i.e., either innovative or generic manufacturers) within the last five years; • significant dispute resolution experience handling IP matters, as an arbitrator or judge; • strong knowledge of Industry Canada’s mandate and the theoretical objectives of patent law and policy; • readily available on demand; and

• possession of a current and valid secret security clearance.

APPLICABLE LIMITED TENDERING REASONS

Section 6(d) of the Government Contracts Regulations is being invoked in this procurement as only one person or firm is believed capable of performing the contract.

OWNERSHIP OF INTELLECTUAL PROPERTY

Ownership of any Foreground Intellectual Property arising out of the proposed contract will vest in the Contractor.

PERIOD AND ESTIMATED COST OF THE CONTRACT

The proposed contract is for an expected period of time of 2 years.

The estimated value of the contract is $80,000 (including taxes) for a maximum of 2 years. THIS A CEILING FOR THE FULL 2 YEARS

CLOSING DATE AND TIME FOR WRITTEN SUPPLIER RESPONSES CHALLENGING THIS REQUIREMENT IS JUNE 20, 2014 1:00 P.M, EASTERN TIME.

You are hereby notified that the government intends to solicit a bid and negotiate with the firm identified above.

If you wish to submit a written response showing that you are capable of meeting this requirement, it must be done not later than the closing date and time. As it is intended to proceed in a timely manner, responses received after the closing date will not be considered. The Crown reserves the right not to open this procurement to competition.

Responses received on or before the closing date will be considered solely for the purpose of deciding whether or not to conduct a competitive procurement. Information provided will be used by the Crown for technical evaluation purposes only and is not to be construed as a competitive solicitation. Your written response must provide sufficient evidence (e.g. specifications, technical data, drawings, or any other proof) that clearly demonstrates that your product or service is capable of fulfilling this requirement.

Suppliers that have submitted a response will be notified in writing of Industry Canada's decision to continue with the non-competitive procurement or to compete the requirement.

Should you have any questions concerning this requirement, contact the contracting officer identified on the first page. The Industry file number, the contracting officer's name and the closing date of the ACAN must appear on the outside of the envelope in block letters or, in the case of a facsimile transmission, on the covering page.

The Crown retains the right to negotiate with suppliers on any procurement. Documents may be submitted in either official language of Canada.