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Stanley N. Cohen Papers 1948-2016
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Cohen/Boyer patent information, 1984

News release dated August 28, 1984 from Stanford University Medical Center News Bureau, "Cohen-Boyer Genetic Engineering Products Patent Issues" News Bureau contact Laura Hofstadter; handwritten note stapled to first page "8/31/84 Stan: In case you didn't get this--Congratulations! Kathy"; post-it attached to first page, "file - Cohen/Boyer patent" handwritten by SNC

Letter dated December 31, 1984 from Katharine Ku to Mr. Lewin, Agricultural Genetics Co., Ltd. "Re: Stanford Docket S74-043, "DNA Cloning", "We are very pleased that Agricultural Genetics has decided to become a licensee"

Letter dated December 13, 1984 from Katharine Ku to Albert P. Halluin, Cetus Corporation "Re: Stanford Docket S74-043, "DNA Cloning"; "In response to your letter of December 3, 1984, the pending patent application claiming recombinant plasmids in unicellular eukaryotic hosts are covered by the original License Agreement. . . . The post-termination responsibilities of a licensee are detailed in Paragraph 8.6 of the License Agreement; no other residual rights or obligations rest with the licensee, including credits."; December 3, 1984 letter is attached

Clipping of article, "Cohen-Boyer Plasmid Patent: An Analysis of the Issues" by Bruni Kobbe, Genetic Engineering News, November/December 1984, pp. 3,11; post-it attached to first page, "Cohen/Boyer patent file" handwritten by SNC

Letter dated November 15, 1984 from Katharine Ku to Roger Ditzel, Patent, Trademark & Copyright Office, University of California, cc H. Boyer and SNC; "Re: Stanford Docket S74-043, "DNA Cloning", "this letter serves as the annual report setting forth the status of patent prosecution, commercial development, and licensing activity for the fiscal year ended August 31, 1984"

Letter dated December 31, 1984 from Katharine Ku to Donald Perella, Merck & Co, Inc. "Re: Stanford Docket S74-043, "DNA Cloning", "We are very pleased that Merck intends to become a licensee"

Letter dated December 31, 1984 from Katharine Ku to James Barrett, Bethesda Research Laboratories, Inc. "Re: Stanford Docket S74-043, "DNA Cloning", "We are very pleased that BRL/Life Technologies intends to become a licensee"

Photocopy of article "Cohen-Boyer Patent Finally Issued", by Colin Norman, Science, September 14, 1984, p. 1134.

Genetics Technology News, Vol. 4, No. 10, October 1984; "Second Cohen-Boyer Patent Issues", p. 1, no byline, five paragraphs; patent name, number an issue date listed in "Patents" section on p. 11

Photocopy of New Scientist, September 6, 1984, p. 7, containing article, "Gene patent granted: now the real fight begins", by Ian Anderson; "Millions of dollars are at stake, not to mention the future organisation of the genetic engineering industry."

Memo dated May 18, 1984 from Niels J. Reimers to "P. Berg, S. Cohen, A. Kornberg, J. Lieberman, D. Purpura, and I. Weissman", "SUBJECT: "Limits in the Handling of Genetic Engineering"; met with Wolf-Michael Catenhusen, of German Bundestag, involved with "special Bundestag committee set up to deal with "problems relating to new biotechniques." I thought you would be interested in the preliminary report of his committee . . . . Rather than leave the field to Jeremy Rifkin by default, a position paper by those involved in the field, perhaps along the line of Mr. Catenhusen's report, might be worth considering."; attached report (in English)

Letter dated May 16, 1984 from Dorothy Hinden, NIAID to SNC and Fred A. Gustafson, Stanford Sponsored Projects Office; "Frank E. Robbins, Law Office of Robbins and Laramie, Washington, D.C., has requested a copy of your successful grant applications and progress reports from 1969 to 1976 for R01-AI08619 to be used by Mr. Robbins in an evaluation of United States Patent 4,237,224 . . . Please advise us of any portions of your proposal that you believe should be withheld under the exemptions provided by the [Freedom of Information] Act." attached two-page printout "FOIA EXEMPTIONS USUALLY APPLICABLE TO GRANT INFORMATION"

Published copy of Patent 4,468,464, Date of Patent: August 28, 1984

Photocopy of article, "A patent on everything", no byline, The Economist, September 8, 1984, pp. 72,75. "The latest--and so far two most important--patents are so broad that other companies could be shut out of the industry unless they license the technology or take on an expensive legal fight."

Form letter template from Katharine Ku containing handwritten date "9/6/84" and handwritten note "9/6/84 Stan: If you're interested in the list of companies we are contacting, here 'tis. K" letter text says Patent 4,468,464 issued on August 28, 1984; "We understand that ___ has been using the basic technology of recombinant DNA in your research and development.", invites them to become licensees; attached to letter is 29-page "DNA Form Letter A Address List"

Issue of Science News, Vol. 126, September 8, 1984; stapled to front is note from editor Joel Greenberg, "You may be interested in the article on page 150 Any comments would be welcome."; attached to note is post-it with "Cohen/Boyer patent file" handwritten by SNC; article "Gene engineering: Patent for products" by J. A. Miller on p. 150

Two copies of Patent 4,468,464, with attached handwritten note referring to three copies, "9/4/84 Stan: Here are 3 copies for your file. I'm so excited that we got the hard copies -- Kathy"

Draft of news release from Stanford University Medical Center News Bureau, on first page of draft "Cohen/Boyer patent file" handwritten by SNC; "Cohen-Boyer Genetic Engineering Products Patent Issues", News Bureau contact Laura Hofstadter; small note attached to first page, "8-28-84 To Stan Cohen From Laura Hofstadter Draft attached of news release final version"

Draft of news release from Stanford University Medical Center News Bureau about newly issued Patent; small note attached to first page, "7-27-84 To Stan Cohen From Laura Hofstadter The latest version" with "file" handwritten by SNC; news release begins, "A patent covering genetically engineered molecules that can be used to generate biological products was issued today (Aug. 7)"; patent was issued August 28, 1984

Draft of news release from Stanford University Medical Center News Bureau about newly issued Patent; small note attached to first page, "July 19, 1984 To Stan Cohen From Laura Hofstadter This draft incorporates the changes you suggested. My notes from a discussion with Bert Rowland indicate that the patent does state plasmid explicitly, though he thinks it means any circular piece of DNA with a replication system and a structural gene from a source that doesn't normally exchange information with the host that recognizes that replication system. Would this mean viral vectors are included? L"; draft contains numerous handwritten comments by SNC

Draft of news release from Stanford University Medical Center News Bureau about newly issued Patent; letter clipped to front of draft: dated July 18, 1984 from Katharine Ku to Frank Adams, UOP, Inc., states minimum annual advance for 1984 not yet received, "this letter serves as written notice of termination to UOP by Stanford, effective October 15, 1984"; small note clipped to front of letter refers to the news release draft behind the letter; note reads, "July 17, 1984 To Stan Cohen From Laura Hofstadter In anticipation of news interest when the new patent is issued, I've drafted this news release. Niels, Kathy and Bert have already seen it. Please let me know if you find any factual errors--Thanks"

Letter dated June 27, 1984 from Katharine Ku to John Chester, National Science Foundation, at upper right of letter "File Cohen/Boyer patent" handwritten by SNC; "Thank you for your call in April, informing us of the request by Robbins and Laramie for information under FOIA . . . . As we discussed, there does not seem to be anything in the file that would be confidential. For your information, we expect the product patent to issue August 7 with U.S. Patent No. 4,464,473."; handwritten note at bottom of letter, "7/6/84 Stan: Niels said you were concerned about this letter. Chester reassured us that he would keep the information confidential. I'm sorry that I told him (in light of your reaction) but since NSF is a "sponsor", I had thought it was appropriate. I shall keep quiet till Aug 7! K."

Letter dated June 27, 1984 from Katharine Ku to John Chester, National Science Foundation, handwritten note in upper right, "Stanley Cohen FYI -- K2 " and "Cohen/Boyer patent file" handwritten by SNC; "Thank you for your call in April, informing us of the request by Robbins and Laramie for information under FOIA . . . . As we discussed, there does not seem to be anything in the file that would be confidential. For your information, we expect the product patent to issue August 7 with U.S. Patent No. 4,464,473."

Photocopy of "Gene Splicers Square Off in Patent Courts" by Jeffrey L. Fox, Science, Vol. 224: 584-586.; in upper left of page one "Cohen/Boyer patent file" handwritten by SNC

Legal documents: log sheet for CLIENT: Stanford University, TITLE: PROCESS AND COMPOSITIONS FOR BIOLOGICALLY FUNCTIONAL MOLECULAR CHIMERAS, notice of Allowance and Request for Expedition, Official Date and Forwarded to Client 4-18-84; attached two-page USPTO Form, "Notice of Allowance and Issue Fee Due", addressed to Bertram I. Rowland, Issue Fee Due July 5, 1984, SC/Serial No. 05/959,288, Fee Due: $500.00; behind form is one-page "REQUEST FOR EXPEDITION", "for the following reasons: 1. This application has been made special due to its early filing date and its national importance; and 2. there have been numerous requests for public access to the file wrapper.", signed by Bertram I. Rowland on April 18, 1984

DECISION REFUSING REJECTION UNDER 37 CFR STAMPED, "COPY MAILED MAR 29 1984 COMMISSIONER'S OFFICE" Re Serial No. 05/959,288, "Dr. Helling's Assertion of Inventorship" and "The Inaccuracy Regarding The Method For Preparing Plasmid pSC101"; signed by Alfred L. Leavitt, Special Program Examiner and initialed by Conferee M.A. Antonakas

Handwritten note, "3/21/84 Bert says it's still in Leavitt's group ? to Tanenholtz by End of Month -- means we hope to get Notice of Allowance in May and will maybe issue in July or August. Sigh. K"

Letter dated March 15, 1984 from Roger G. Ditzel, Director of Patent, Trademark and Copyright Office at University of California to Katharine Ku, cc to SNC and Herbert W. Boyer; re Amendment No. 1 to Agreement Concerning Administration of Rights in Invention is enclosed. "The effective date of this Amendment is March 1, 1984."; no attachment

Letter dated March 14, 1984 from Katharine Ku to Albert P. Halluin, Cetus Corporation; refers to Halluin letter of February 27, "You expressed concerns about the validity/enforceability and scope of the claims of U.S. Serial No. 959,288."; attached are February 27, 1984 letter from Halluin to Ku and three drafts of a response from Ku, each draft with a note to SNC asking for his feedback

Letter dated March 7, 1984 from Katharine Ku to Roger Ditzel, "Re: Stanford Docket S74-43, "DNA Cloning", re Amendment No. 1 to Agreement Concerning Administration of Rights in Invention enclosed for UC signature; Amendment attached

Memo dated February 1, 1984 from Nancy Holt to Bert Rowland, "Enclosed is the signed declaration of Stan Cohen regarding" Biologically Functional Molecular Chimeras; attached to memo are signed letter dated January 30, 1984 from Bertram Rowland to SNC, "Enclosed for your signature is a ribbon copy of your declaration, revised in accordance with your changes of January 27, 1984." and three-page "DECLARATION OF STANLEY N. COHEN" re pSC101 signed by SNC on February 1, 1984

Binder clip holding numerous documents. First is memo dated January 27, 1984 from Nancy Holt to Bert Rowland, "Enclosed is the declaration for BIOLOGICALLY FUNCTIONAL MOLECULAR CHIMERAS as Stan Cohen has edited it; attached are two drafts of first two pages of declaration, one with extensive handwritten edits by SNC; after memo is letter dated January 25, 1984 from Bertram I. Rowland to SNC and Herbert Boyer, "Enclosed for your review and comments is the proposed response to be filed in the subject application." with three attachments, all of which are unsigned: 1) p. 3 of SNC Declaration (pp. 1-2 probably pages with handwritten edits), 2) two-page Boyer Declaration, 3) and 10-page "RESPONSE TO REQUIREMENT FOR INFORMATION" which begins, "In response to the Requirement for Information of January 6, 1984" and ends with signature line for Rowland. Letter dated December 16, 1977 from Bertram I. Rowland to Niels Reimers, cc SNC, recapping Rowland's interview with patent examiner Alvin E. Tanenholtz, ". . . while he was willing to allow claims which describe a basic method for producing transformants, he was not willing to allow any of the other claims" and mentions new work that questions whether pSC101 was the vector, "As to this matter as well as other matters, consideration should be given whether we should revise the application before refiling it as to the plasmid claims." Unsigned copies, with no attachments, of a January 20, 1975 form letter from Rowland to each of the following: Robert B. Helling, John F. Morrow, Annie C.Y. Chang, Charles Yanofsky, Howard M. Goodman, Vickers Hershfield, Michael A. Lovett, Donald R. Helinski, re "Pat. appln. for PROCESS AND COMPOSITION FOR BIOLOGICALLY FUNCTIONAL MOLECULAR DNA CHIMERAS - S. Cohen and H. Boyer . . . . You are a co-author and, therefore, I am requesting your cooperation in signing the accompanying disclaimer, disclaiming being a co-inventor." Unsigned copies of a January 28, 1975 form letter from Rowland to each of the following: Robert B. Helling, Annie C.Y. Chang, Charles Yanofsky, Howard M. Goodman, Vickers Hershfield, Donald R. Helinski, Michael A. Lovett, and John F. Morrow, each letter has a cc to SNC and Boyer, re "Pat. appln. for PROCESS AND COMPOSITION FOR BIOLOGICALLY FUNCTIONAL MOLECULAR DNA CHIMERAS - S. Cohen and H. Boyer"; "My prior letter has apparently been subject to an unintended misunderstanding. . . . In using the term "on behalf of" I intended that Professors Cohen and Boyer were the inventors, but did not intend that I was employed by them. The request for a patent application was initiated by Stanford University and the University of California who are the assignees and have the financial interest in the patent application. As I am sure you are well aware, the Universities are sorely stressed for funds and the patenting of research developments which have commercial potential is becoming an avenue for obtaining additional funds. In recognition of the needs of the University, when the research is funded by governmental agencies, the government normally allows the Universities to license patents covering government-sponsored research and receive the funds. . . . The issuance of the subject patent will in no wise inhibit any researcher, either academic or commercial, from carrying out additional research in the areas covered by the patent. Should a development be commercialized and come within the ambit of the subject patent, Stanford and UC would have the opportunity to receive royalties from such commercial use. I am enclosing a copy of the letter sent to me by Stan Cohen explaining his understanding of the purpose and intent of the Universities in filing the subject patent application. I would also like to add that prior to becoming a patent attorney, I received my doctorate in organic chemistry and was employed as a research chemist. I am personally sensitive to the interest and the needs of the academic community and am appreciative of their concerns."