Cohen/Boyer patent information,
1988-1991
Paperclip holding: 1) Small heavystock paper with undated handwritten note from "Susan" to SNC thanking SNC for speaking at Bert Rowland's memorial, mentions "He was always extrememly proud of what he considered his greatest professional accomplishment: writing the Cohen-Boyer patents.", also says that memorial was videotaped; 2) Three-page printout SNC's talk, "Bert Rowland Memorial comments. Stan Cohen" dated 11/26/10, talk has "File" handwritten by SNC at top right of p. 1 and all three pages have edits handwritten by SNC; and 3) in between pp. 2-3 of the talk is a printout of the program, "In Loving Memory of Bert June 26, 1930 - October 28, 2010"
Printout dated 5/21/98 of article "Stanford DNA 'enforcer' Grolle closes the $200M book on Cohen-Boyer", Joan O'C. Hamilton, Signals, published 11/25/97; five pages; business card of Katharine Ku, Director of OTL stapled to top right of first page, with handwritten "To Stan Cohen"; small yellow post-it attached to first page, "File--Cohen/Boyer patent" written by SNC
Spreadsheet titled, "COHEN-BOYER ROYALTIES DISTRIBUTION. . ..1980 THRU 1996-7"; business card of Katharine Ku, Director of OTL stapled to top left of page with handwritten "Prof Stan Cohen"; in upper right of page stamp "RECEIVED SEP 2? 1997" {perhaps SEP 22} and "Cohen/Boyer patent file" written by SNC; lower right of printout "9/15/97 "F. Grolle" "
Fax of article, "Tiger by the tail" by Niels Reimers, Journal of the Association of University Technology Managers, Vol. 5, 1995, pp. 25-47; reprinted from CHEMTECH, August 1987, 17(8), pp. 464-471; sent 11/29/95 from Stanford Tech. Lic.
"Stanford Technology Brainstorm, the Newsletter of Stanford University's Office of Technology Licensing (OTL)", Vol. 5, No. 2, Autumn 1996; stamped RECEIVED DEC 1? 1996 {perhaps DEC 17} in upper right; "Cohen/Boyer patent file" written by SNC in upper right; "IN THIS ISSUE . . . Cohen-Boyer Still a Strong Part of OTL's Licensing Activity"
Letter dated August 6, 1996 from SNC to Eugene Bauer, Dean of Stanford School of Medicine, re "proposal to establish a new School of Medicine academic program of lasting value, using funds provided by the Cohen/Boyer patent income"
Letter dated January 31, 1996 from Condoleezza Rice, Provost of Stanford University to SNC; response to January 23, 1996 memo from SNC to CR, cc to President Gerhard Casper and Dean Eugene Bauer re "Cohen/Boyer Patent Income"
Letter dated July 31, 1996, from David J. Aston, Associate Director, UC Office of Technology Transfer to Katharine Ku, Director of Stanford University Office of Technology Licensing, cc Terence A. Feuerborn, Executive Director UCOTT and Niels Reimers, Director, Office of Technology Management, UCSF, re "We do not believe that it would be appropriate to pursue a patent term extension by way of a private bill in the United States Congress."; handwritten in upper right "Stan Cohen FYI -- K2"
Four-page memo dated June 10, 1996, from Floyd Grolle, Office of Technology Licensing to SNC, stamped "RECEIVED JUN 13 1996" re "Cohen-Boyer Status Report" on royalties; "file" written in upper right by SNC
Robertson Stephens & Company Institutional Research Biotechnology Calendar, August-September 1995, dated August 1, 1995, "Cohen/Boyer patent file" handwritten by SNC in upper right of first page, 20 pages; clipped behind it is complimentary issue of BioWorld Financial Watch, Vol. 3, No. 42, containing article, "The Promise of Gene Therapy Still Lures Big Investors" by Jennifer Van Brunt, cover page and p. 13
Undated three-page article without a byline "Products in the U.S. Pipeline from the Pharmaceutical Manufacturers Association"; handwritten by SNC in upper right "file with material from Lampert"
One page of fax from Stanford Tech. Lic. sent September 29, 1995, labeled P.4 re status of Docket S 74-043, title, "Cohen/Boyer; Recombinant Technology" it is part of 13-page fax photographed in IMG_0062.jpg
Printout of United States Patent 4,237,224, "Process for Producing Biologically Functional Molecular Chimeras", Inventors: Cohen and Boyer, December 2, 1990
Fax from Stanford Tech. Lic. sent September 29, 1995 re status of Cohen intellectual property managed by OTL; 12 numbered pages stapled in random order; page 10 re Docket S78-077, "Protein Production At Synthetic Start Site", inventors Nunberg, Chang, Cohen and Schimke; pages 3,6,5,7,8,and 9 re Docket S74-043, title, "Cohen/Boyer; Recombinant Technology"; page 11 re Docket S92-106, "Use of tRNA Genes to Stabilize the Inheritance of Unstable Plasmids in Populations of Growing Cells", inventors Vogtli and Cohen; page 12 re Docket S93-160, "Method for Concurrent Disruption of Expression of Multiple Alleles of Eukaryotic Genes", inventors Li and Cohen; page 13 re Docket S93-161, "docket created to classify all of Cohen's many (over 70) IRPs on file with OTL"; page 1 cover sheet, from "Christina -- OTL" to "Stanley Cohen's Office" page 2 re Docket S73-061 "MEDIPHOR/MINERVA/MUMPS (Software)", inventor S. Cohen; page 4 is missing and is filed alone (photographed in IMG_0060.jpg)
Letter dated September 27, 1994 from SNC to Arian Arima, General Counsel's Office, Stanford University; small sheet with fax transmission report and two-page letter responding to September 23 memo (IMG_0064.jpg) re payment for invention incorrectly characterized as "royalty" when it is "an installment sale"
Memo dated September 23, 1994, from Adrian Arima, General Counsel's Office to SNC, cc Chris Canellos and Iris Brest, Controller's Office and Kathy Ku, OTL, "Subject: Payments on Patent" re "your request to characterize the payments on your invention as "installment payments for technology" rather than "royalties" as described in letter from Maggie Feinstein; two pages, not attached to each other
Letter dated January 10, 1994 from SNC to Floyd Grolle, OTL re funds paid to SNC in connection with Cohen-Boyer patent "The records of the University should indicate that the funds are given as payment for technology, instead of being termed "patent royalties" "
Memo dated September 13, 1994 from Maggie Feinstein, OTL Accountant to SNC, cc Floyd Grolle and Kathy Ku, "File Boyer/Cohen patent" written by SNC in upper right, re "FY 93-94 Installment Payment for Cohen-Boyer Technology"; text: per Chris Canellos a letter from SNC needed to ensure SNC's 1993-1994 "check reflects that it is an "Installment Payment for Technology" rather than a payment for "patent royalties.";
Letter dated April 12, 1994 from William T. Davis, Associate Director of University of California Office of Technology Transfer to Katharine Ku, Director of Stanford University Office of Technology Licensing, handwritten "To Stan Cohen" in upper right and in SNC's handwriting, "File"; text re "clear consensus that the University of California will not endorse or participate in any effort to extend the DNA Cloning patents"
Letter dated February 11, 1993 from Katharine Ku, Director of Stanford University Office of Technology Licensing to William Davis, Associate Director of University of California Office of Technology Transfer, cc to SNC, David Korn, and Larry Horton,stamped in upper right RECEIVED FEB 15 1993; "file" written by SNC in upper right; text re info provided to Stanford by Bertram Rowland, "Bert believes that the University of California would need to endorse and participant [sic] in any effort to extend the DNA Cloning patents"
Printout of United States Patent 4.468,464, "Biologically Functional Molecular Chimeras", Inventors: Cohen and Boyer, August 28, 1984
Memo dated November 15, 1993 from Kathy Ku to Dean David Korn, cc Peter Van Etten, Larry Horton, Stan Cohen, Floyd Grolle re Extension on Cohen/Boyer patents; stapled to memo is a two-page letter dated November 9, 1993 from Bertram I. Rowland to Katherine [sic] Ku re "Private Relief Bill to Patent Extension," Stanford reference S74-043 which begins, "I am enclosing a memorandum prepared by Bred Field describing his investigation of opportunities to obtain patent extensions"; attached to letter are a memo and a bill: five-page memo dated October 22, 1993 from Bret Field to Bert Rowland re "Private Relief Bill to Extend the Term a Patent [sic]" and the four-page text of a bill, "AS REFERRED IN THE SENATE H.R. 5475", Version 4 of "AN ACT Providing policies with respect to approval of bills providing for patent term extensions, and to extend certain patents" passed by the House of Representatives on August 4, 1992
Listing of Cohen-Boyer Licensees 10/12/92; 195 licensee companies
Two-page memo dated January 27, 1992, from Donald Kennedy, Stanford President to SNC, stamped "RECEIVED FEB-4 1992"; refers to recent conversation: "I was glad of the opportunity to talk with you about royalty matters." concludes "we should not return to the royalty arrangement described in your 1975 contract as you interpret it", recaps Stanford's royalty policy in 1975 and DK/SNC royalty discussion in 1979 or 1980 which led to new policy described in attached memo (three pages) dated April 17, 1980 from Niels Reimers to SNC, cc to Adrian Arima, Donald Kennedy, Gerald Lieberman, William Massy and Kent Peterson
Memo dated October 25, 1991 from David Korn, Vice President and Dean to SNC, "Patent file" handwritten by SNC in upper right corner, "Subject: Patent Royalties", responding to SNC memo of October 23; "the 15% tax generates funds well in excess of OTL expenses, but it was Bob Byer's [Dean of Research/Vice Provost Robert L. Byer] and Jim Rosse's [James Rosse, Provost] decision to use the overage as a research innovation seed fund under the authority of the Dean of Research . . . I would suggest that you bring your concern directly to the Provost's attention, perhaps copying me on any written communication, and see whether you can make more progress than I did."
Fax cover sheet dated October 4, 1991 from Mark Lampert to SNC "Attached is the letter which we sent to Stanford." and two-page letter dated September 6, 1991 from Greg Sabouri [no letterhead, no job title listed] to Jon Sandelin, Acting Director, Office of Technology Licensing; proposal that "(1) Oppenheimer will acquire from a 30% to an 80% interest in Stanford's portion of the Cohen-Boyer royalties. (2) The price will be based on a $70 million valuation of the entire royalty stream."
Two-page memo dated November 22, 1991 from Katharine Ku to SNC, cc R. Byer, P. Devaney, P. Van Etten, A. Arima; "Re: 15% OTL allocation"; "In response to your request that we interpret the royalty-sharing agreement as signed by you and Stanford in June, 1975 with respect to the OTL 15% deduction, I have conferred with the Dean of Research's office and the Legal Office. . . . It is our unanimous opinion that the fifteen percent allocation for OTL is a flat 15%, rather than a changing percentage up to 15%."; this document is immediately followed in the files by another copy of the same document (IMG_0083.jpg), identical except that on the first one the OTL letterhead and fax stamp are not visible at the top of each page
Memo dated November 22, 1991, faxed from STANFORD TECH. LIC. on November 22, 1991, from Katharine Ku to SNC, cc R. Byer, P. Devaney, P. Van Etten, A. Arima; "Re: 15% OTL allocation"; "In response to your request that we interpret the royalty-sharing agreement as signed by you and Stanford in June, 1975 with respect to the OTL 15% deduction, I have conferred with the Dean of Research's office and the Legal Office. . . . It is our unanimous opinion that the fifteen percent allocation for OTL is a flat 15%, rather than a changing percentage up to 15%."; two pages; this document is immediately preceded in the files by another copy of the same document (IMG_0082.jpg), identical except that on the first one the OTL letterhead and fax stamp are not visible at the top of each page
Spreadsheet with handwritten "10-1-91 FG" at lower right; in upper right of page are handwritten "10-18-91 To Stan Cohen: FYI from K Ku" and date stamp "OCT 23 1991"; contains two charts: "COHEN-BOYER ROYALTIES . . . ACTUAL & ESTIMATED" covering 1987-1991, and "LISTED BELOW ARE THE ESTIMATED COHEN-BOYER ROYALTIES FROM FISCAL 1991-92 THRU 1997-98"; this document is immediately followed in the files by another copy of the same document (IMG_0085.jpg), identical except that on the second one "Stan Cohen: FYI" is highlighted in yellow
Spreadsheet with handwritten "10-1-91 FG" at lower right; in upper right of page are handwritten "10-18-91 To Stan Cohen: FYI from K Ku" and date stamp "OCT 23 1991"; contains two charts: "COHEN-BOYER ROYALTIES . . . ACTUAL & ESTIMATED" covering 1987-1991, and "LISTED BELOW ARE THE ESTIMATED COHEN-BOYER ROYALTIES FROM FISCAL 1991-92 THRU 1997-98"; this document is immediately preceded in the files by another copy of the same document (IMG_0084.jpg), identical except that on the second one "Stan Cohen: FYI" is highlighted in yellow
Memo dated October 23, 1991, marked "Personal and Confidential", from SNC to David Korn, "Subject: Cohen/Boyer Patent Royalties: 15% deduction by the University"; "the fifteen percent deduction for the University is intended to be a "ceiling" sufficient to reimburse the University for its indirect costs, not an automatic deduction. . . . From my reading of the agreement, the funds being deducted by the University in excess of the true indirect costs of the OTL legitimately belong to the School of Medicine, the Departments of the Inventor (in the case of the Cohen/Boyer patent, Medicine and Genetics), and the Inventor."
Letter dated July 5, 1989 from Katharine Ku to Serle Mosoff, General Counsel of Enzo Biochemical, cc to D. Dunner, "file" written by SNC in upper right and date stamped "JUL 10 1989"; "Re: Stanford Docket S74-043, "DNA Cloning", "Thank you for the signed License Agreement originals covering the Cohen-Boyer patents.", handwritten at bottom of page, "bcc: Stan Cohen: They were difficult to get "onboard" but they finally signed. Kathy";
Memo dated January 13, 1989 from SNC to Sally Hines, OTL re Patent Royalties; request to assign rights to receive royalties from patents to "Stanley N. Cohen and Joanna L. Cohen Family Trust, Stanley N. Cohen, Trustee."
Letter dated March 7, 1989 from Katharine Ku to Thomas D. Zindrick, The Dow Chemical Co., at top right "To Stan Cohen" handwritten and date stamp "MAR 10 1989"; "file" written by SNC, "Re: Stanford Docket S74-043, "DNA Cloning"; "We are delighted Dow has joined as a Cohen-Boyer licensee. Enclosed is a fully executed copy of the Agreement"; agreement is not attached to this letter, though photocopy shows paperclip
Handwritten spreadsheet with "9-29-88 FG" written in lower right; stamped "CONFIDENTIAL"; "File Cohen/Boyer patent" written by SNC in upper right; "EXPECTED EARNED + MINIMUM ROYALTIES (FROM COHEN-BOYER LICENSE" columns for 1988-89, 1989-90, and 1990-91
Printout of United States Patent 4,740,470, "Biologically Functional Molecular Chimeras", Inventors: Cohen and Boyer, April 26, 1988
Letter dated October 6, 1988 from Katharine Ku to Joanne Thierstein, "Warner Lambert" [sic], at top right "Stan Cohen" handwritten, date stamped "OCT 11 1988", and "Cohen/Boyer patent file" written by SNC; "Re: Stanford Docket S74-043, "DNA Cloning"; "Enclosed is a fully executed License Agreement covering the DNA cloning technology. I am absolutely delighted your perseverance paid off and that Warner-Lambert is now a licensee of the Cohen-Boyer patents."; agreement is not attached to this letter, though photocopy shows paperclip
Letter dated March 20, 1989 from Katharine Ku to Hiroshi Iwai, Takara Shuzo Co., Ltd., at top right "3/20 Stan Cohen FYI--Kathy" handwritten, date stamp "MAR 22 1989", and "Cohen/Boyer patent file" written by SNC; "Re: Stanford Docket S74-043, "DNA Cloning"; "We are delighted to have Takara Shuzo become a Cohen-Boyer licensee. Enclosed for your files is a fully executed License Agreement covering the DNA cloning technology."; agreement is not attached to this letter
Handwritten note dated September 8, 1988 from Floyd Grolle to SNC, attached is "most recent "roster" of Cohen-Boyer licensees"; attached is two-page chart listing of 84 licensees "as of 9-1-88": columns are Licensee, Location, Credits, and Type
Two-page chart dated September 1, 1988, "Cohen-Boyer Licensees (Current & Former)" listing 84 current and 14 former licensees: columns are Licensee License Date, and Cancel Date
Photocopy of Science, August 19, 1988, p. 907, containing article "A Bit of Science History Is Lost" by Gregory Byrne about demise of The Waikiki Delicatessen, "the birthplace of modern biotechnology"; possibly sent to SNC by Floyd Grolle: "SCIENCE" handwritten in green ink at bottom of page and yellow post-it with "!!" in green ink are consistent with green ink and handwriting of Floyd Grolle on other documents in this collection
"PMA Report: Biotechnology Products in the Pipeline" from Biotechnology, Vol. 6, September 1988, p. 1004 ff., 4 pages; stapled behind is a copy of Science article "A Bit of History Is Lost" (IMG_0100.jpg)
Letter dated July 12, 1988 from Bertram I. Rowland to Kathy Ku, cc to "Inventor(s) with copy of patent; "I enclose the original and seven copies of the U.S. Letters Patent No. 4,740,470 which issued on April 26, 1988 . . . Please sign and return to me the enclosed copy of this letter to indicate receipt of this original Letters Patent", describes annuities due to keep patent in force and "Product made using the claims of the Patent can and should be marked with the patent number."; one copy of patent 4,740,470 attached
Draft of Stanford News Bureau article, "Third Stanford-UC Genetic Engineering Patent Granted"; refers to patent granted April 26, 1988 [No. 4,740,470]; an edit by SNC has been mostly erased; business card of Katharine Ku stapled to front page with handwritten "Congratulations, Stan K" written on card
Patent 4,740,470, "Biologically Functional molecular Chimeras" with Form PTO-194 stapled to front; form says "It will be accepted by the U.S. PATENT and TRADEMARK OFFICE in payment for copies"
Memo dated March 24, 1988 from Floyd Grolle to SNC "Subject: Sales and Royalties Estimates"; "best estimates covering STANFORD FISCAL YEARS 1987-88, 1988-89, and 1989-90" and "March 26, 1986, PRELIMINARY ESTIMATES OF COHEN-BOYER PRODUCT SALES"; attachments as described; stapled document is 10 pages: one five-page original (CONFIDENTIAL stamped in red on memo and tables) and one photocopy
Memo dated March 14, 1988 from Floyd Grolle to SNC "Below are our estimates of Cohen-Boyer royalties anticipated for the Stanford fiscal years of 1987-88, 1988-89, 1989-90, 1990-91 . . The final tabulations/payments for the 1987 calendar year are due April 1, 1988."
