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Stanley N. Cohen Papers 1948-2016
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95 14
Cohen/Boyer patent information, 1983

Handwritten "MEMO TO THE FILE" dated 12/21/83 from K2 to S74-43, cc to S. Cohen, UC re DNA Cloning; in upper right date stamped "DEC 27 1983" and "file" written by SNC; text: "Per Bert: "Formal matters re BR will be resolved early Jan -- Will likely receive Notice of Allowance in Feb Will possibly/probably get issued patent in March"

Four sheets of paper stapled together: 1) Unsigned letter from Katharine Ku to Daniel P. Weingarten, GIBCO Laboratories, Life Technologies, Inc., in upper right "S. Cohen" handwritten, stamped "DEC 29 1983" and "file" written by SNC; text: "We were surprised and puzzled by your letter of December 16. . . . All the current issues surrounding the pending patent application have been resolved."; 2) Signed letter dated December 16, 1983 from Weingarten to Neils [sic] Reimers, cc to M.J. Barrett, Ph.D. and K.E. Blackman, Ph.D.; in upper right, date stamped "DEC 29 1983" and below that stamped 'STANFORD UNIVERSITY DEC 20 1983 TECHNOLOGY LICENSING"; "I have spoken to Dr. Barrett about some of the issues you raised in our meeting in early October regarding the Cohen-Boyer patent. dr. Barrett called to my attention a letter he wrote to you dated January 7, 1983, which pointed out several significant errors in the submission by the authors under rule 131." asks if issues resolved; 3) Unsigned letter dated June 17, 1983 from Katharine Ku to James Barrett, President, Bethesda Research Laboratories, "file" written in top right, " . . . I had wanted to have the opportunity to respond in person to your letter of June 7, 1983, regarding the DNA cloning patent. The attorney handling the prosecution brought the information you presented forward to the Patent Office. It is now part of the record. For your information, I have excerpted the relevant portion from the recent response."; 4) Photocopy of 14 lines of printed text, handwritten in upper right is "Excerpt from Response to Jan 21, 1983 Office Action", text, "It is noted that consideration of the declaration under Rule 131 has been held in abeyance. . . . The error has to do with referring to pSC101, where the results which are reported refer to pSC105. However, once the issue concerning Professor Helling's inventorship is resolved, the declaration becomes moot, since the articles coauthored by Professor Helling would no longer be relevant. . . ."

Two stapled stacks of paper that have been paper-clipped together: 1) Legal documents: log sheet identical to one in second stack, except that this sheet has one newer activity, for CLIENT: Stanford University, TITLE: PROCESS AND COMPOSITIONS FOR BIOLOGICALLY FUNCTIONAL MOLECULAR CHIMERAS, "Amendment / Petition to make special" Official Date and Forwarded to Client 9-20-83, in upper right stamped "STANFORD UNIVERSITY SEP 22 1983 TECHNOLOGY LICENSING", handwritten "Roger Stanley", date stamped "SEP 28 1983" and handwritten by SNC: "file Cohen-Boyer patent"; attached are two USPTO Forms, both signed by Bertram I. Rowland on September 20, 1983: five-page AMENDMENT "Cancel Claims 18, 20-22, 24-28, 30-37, 64, 77, 78, and 80-87, without prejudice to their renewal and in light of the following claims." then adds Claims 88-98; also attached is two-page PETITION TO MAKE SPECIAL 37 CRF [sic] �1.102, " . . .to make the application special, to allow for early issuance. As the Commission is aware, this application has assumed extreme public interest. . . . Furthermore, a number of novel issues were raised during the prosecution, which issues may help other patent counsel to evaluate patentable subject matter in the rapidly growing field of recombinant DNA technology. Also, this application was previously allowed, and allowance withdrawn at the last moment."

Two stapled stacks of paper that have been paper-clipped together: 2) second stapled stack of paper has cover sheet identical to the one mentioned above, except that there is one fewer line on the log sheet; newest item is "Office Action", Official Date 9-30-83, Forwarded to Client 9-16-83; stapled to log sheet is USPTO Form responsive to communication filed on 4/28/83 and 7/5/83, "Notice of References Cited by Examiner, PTO-892" and "Examiner Interview Summary Record"; lists pending, cancelled, allowed, and rejected claims, with four pages of details, list of references: Lobban thesis, 1972 and Hogness, 1975

Photocopy of article, "New Technique to Produce Proteins May Alter Biotechnology Industry," by Jerry E. Bishop, Wall Street Journal, November 10, 1983, page unknown; at top of page, handwritten {looks like Ku's handwriting}: "- not plasmid - no replication system - DNA doesn't replicate", and "11/2/83 Stanley: Niels said you'd like copy of this -- sounds fishy, eh? Kathy", date stamped "DEC 6 1983", "Cohen-Boyer patent file" handwritten by SNC; article describes new technique by Fred Russell Kramer of Columbia

Unsigned, undated form letter from Katharine Ku to DNA Licensees; handwritten at top; "Subject: License Agreement Between [1] and Stanford University Covering U.S. Patent No. 4,237,224 By Stanley N. Cohen and Herbert Boyer"; letter begins, "We wish to bring you up to date with respect to the prosecution of Patent Application Serial No. 959,288, the "product" application relating to the DNA cloning methods described in the U.S. patent indicated above. The Patent Office has notified us that the claims which cover recombinant plasmids and other vectors able to replicate in prokaryotic host organisms are allowable."; text also includes, "In a continuation application, we will continue prosecution with the Patent Office of claims with respect to yeast and other eukaryotic unicellular organisms as hosts. . . . An attachment lists the claims of the application that have been deemed allowable."; attached are unsigned letter dated December 12, 1983 with handwritten edits and writing at top of page, "Stanley - Please make the appropriate changes ASAP. Thanks. -- K." and written in SNC's handwriting, "Cohen/Boyer patent file" and two-page document listing Claims 88-98

Letter dated November 18, 1983 under letterhead of "Law Offices of Wegner & Bretschneider" in Washington, DC, which closes "Respectfully submitted, HAROLD C. WEGNER, PETITIONER by Ronald R. Snider Reg. No. 24,962 (signed by Snider)" to "Hon. Commissioner of Patents and Trademarks" requesting immediate decision re having patent file opened; attached are 1) memo dated September 14, 1983 from Linda S. Paine to Harold C. Wegner, "In summary, Mr. Tarring of the PTO Solicitor's Office had no firm idea of when he would review the Petition, but indicated that the status should be checked again in October." and 2) a page from 37 CFR [sic] �1.114 with underlining of "If there is no objection the petitioner is permitted to see the entire parent application"

Legal documents: log sheet, for CLIENT: Stanford University, TITLE: PROCESS AND COMPOSITIONS FOR BIOLOGICALLY FUNCTIONAL MOLECULAR CHIMERAS, newest item is "Notice of Allowability", Official Date 10-11-83 and Forwarded to Client 10-18-83, in upper right stamped "STANFORD UNIVERSITY OCT 19 1983 TECHNOLOGY LICENSING", handwritten "cc: S. Cohen T. Crotte", date stamped "OCT 21 1983" and handwritten by SNC: "file"; attached are USPTO Form signed by primary examiner Alvin E. Tanenholtz allowing Claims 88-98, a one-page "Examiner's Amendment to the record" and "Examiner Interview Summary record that interview occurred 10/6/83 of Bert Rowland by Al Tanenholtz

Legal documents: log sheet, for CLIENT: Stanford University, TITLE: PROCESS AND COMPOSITIONS FOR BIOLOGICALLY FUNCTIONAL MOLECULAR CHIMERAS, newest item is "Decision on Petition filed 9/21/83", Official Date 9-30-83 and Forwarded to Client 10-19-83, in upper right stamped "STANFORD UNIVERSITY OCT 20 1983 TECHNOLOGY LICENSING", handwritten "cc: S. Cohen", date stamped "OCT 26 1983" and handwritten by SNC: "file"; attached "Decision on Petition Filed September 21, 1983", mailed September 30, 1983, signed by Robert F. White of USPTO, "applicants' petition is hereby granted", Rowland's name and address typed at bottom of page

Signed letter dated March 17, 1983 from James H. Dautremont, Intellectual Property Counsel, The University of Michigan to Honorable Commissioner of Patents and Trademarks, front page has large red "CONFIDENTIAL" stamp; text describes letter from Robert B. Helling seeking to be named a joint inventor of SN959288; attached signed and notarized letter dated March 16, 1983 from Robert B. Helling to Alvin E. Tanenholtz, Primary Examiner, USPTO, front page has large red "CONFIDENTIAL" stamp, text states Helling's claims to be a joint inventor, notarized by Mike Dutzer on March 18, 1983, no attachments to Helling's letter

Legal documents: log sheet, for CLIENT: Stanford University, TITLE: PROCESS AND COMPOSITIONS FOR BIOLOGICALLY FUNCTIONAL MOLECULAR CHIMERAS, newest item is "Office Action", Official Date 8-30-83 and Forwarded to Client 9-69-83, in upper right stamped "STANFORD UNIVERSITY SEP 20 1983 TECHNOLOGY LICENSING", date stamped SEP 22 1983" and handwritten by SNC: "File Cohen-Boyer patent"; attached USPTO Form responsive to communication filed on 4/28/83 and 7/5/83, "Notice of References Cited by Examiner, PTO-892" and "Examiner Interview Summary Record"; lists pending, cancelled, allowed, and rejected claims, with five pages of details, list of references: Lobban thesis, 1972 and Hogness, 1975

Signed letter dated September 7, 1983 from SNC to Bertram I. Rowland, "Enclosed is a reprint of my 1975 paper describing the co-transformation procedure claimed in the Columbia University patent. I think you will agree that the paper is pretty explicit in anticipating what Science and Nature report as Columbia's claims."; no enclosure

Unsigned 10-page letter under letterhead of "Law Offices of Wegner & Bretschneider" in Washington, DC from "Harold C. Wegner Reg. No. 25,258" to Honorable Commissioner of Patents and Trademarks, Attn: Solicitor (Henry Tarring, Esq.; Katharine Ku's business card stapled to top of first page and handwritten "Stanley Cohen", on top right of first page date stamped "AUG 29 1983" and handwritten by SNC "Cohen-Boyer patent"; letter text begins, "This is a request under 37 CFR �1.14(e)(2) for access to United States patent application Serial No. 959,288"

Signed letter dated August 4, 1983 from Katharine Ku to Daniel P. Weingarten, GIBCO Division, The Dexter Corporation, "Re: Stanford Docket S74-43, "DNA Cloning"" and "Stanford Docket S82-64, "DNA Hybridization Probes"; offers GIBCO/Dexter "a license to the Cohen/Boyer DNA cloning invention; particularly since Dexter recently acquired Bethesda Research Laboratories, we feel that BRL's and/or Dexter's activities no doubt involve recombinant DNA."

Signed letter from Katharine Ku to Brian McCarthy, California Biotechnology Inc., cc: J. Newman, M. Petit, S. Falkow, T. Merigan, F. Murad; in upper right, "S. Cohen" handwritten, date stamped "AUG 9 1983" and handwritten by SNC, "Cohen/Boyer patent"; text, "Stanford has many technologies which CBI may be interested in licensing," including "Stanford Docket S82-64, "DNA Hybridization Probes"; no attachment

Photocopy of a page from New Scientist, June 30, 1983 with article, "Decision due in billion-dollar patent row," by Barry Fox; stapled to front is small handwritten note, "7/11/83 Stanley: In case you haven't seen -- this article is just trying to sensationalize a non-issue (Ziff). Kathy", note date-stamped "JUL 14 1983" and handwritten by SNC, "Cohen/Boyer patent file"; article begins, "The US Patent Office will decide sometime in the coming month whether a short article, published in New Scientist 10 years ago, invalidates potentially the most valuable patent application ever filed."

Unsigned two-page form letter from Katharine Ku to "[Adr]" ; "Re: License Agreement covering Cohen/Boyer DNA Cloning Invention; U.S. Patent No. 4,237,224 and Application Serial No. 959,288; handwritten at top, "5/19 Stanley -- Is this acceptable? Please let me know if you have changes -- Kathy"; in SNC's handwriting, "not satisfactory -- file I have spoken with Kathy Ku" and handwritten comments by SNC and Ku; text begins, "We have recently submitted Stanford's Response to the present Office Action on pending patent application serial No. 959,288. The main points of the Office Action and the Response are summarized below"

Binder clip holding four documents. First document is 33-page "AMENDMENT" signed by Bertram I. Rowland on April 27, 1983

Binder clip holding numerous documents. Second document is six-page "DECLARATION" signed by SNC on April 20, 1983; attached are SNC articles, "The Stanford DNA Cloning Patent", 1982; "The manipulation of genes," 1975; "The transplantation and manipulation of genes in microorganisms," 1980;

Binder clip holding numerous documents. Third document is four-page "DECLARATION" signed by Herbert W. Boyer on April 19, 1983

Binder clip holding numerous documents. Fourth document is four-page "DECLARATION UNDER RULE 132" signed by David S. Hogness on April 26, 1983.