Gretchen L. Temeles, Ph.D.
Associate
Duane Morris LLP
30 South 17th Street
Philadelphia, PA 19103-4196
USA
Phone: +1 215 979 1848
Fax: +1 215 689 4948
Email: gltemeles@duanemorris.com

Gretchen L. Temeles, Ph.D., practices in the area of intellectual property law with a focus on patents in the biotechnology and pharmaceuticals industries. She has extensive experience in patent filing strategies and portfolio management, confidentiality agreements and material transfer agreements, freedom-to-operate searches and non-infringement and invalidity opinions and has performed due diligence for patent licensing transactions. Dr. Temeles has worked with large and small organizations in a wide range of life science technologies including genetic engineering, immunology, biologics, vaccines, pharmaceuticals, probiotics, diagnostics, tissue engineering and transgenic plants and animals.

Dr. Temeles is a 2009 graduate of Temple University Beasley School of Law and a graduate of Yale University (Ph.D., Biology, 1987) and the University of Pennsylvania (B.A., cum laude, 1974).

Areas of Practice

• Patents
• Intellectual Property Law

Professional Activities

• Ben Franklin Technology Partners of Southeastern Pennsylvania
  - Life Sciences Technology Advisory Committee
• Pharmaceutical Consulting Consortium, Inc.
  - Vice President, Recruiting, 2010
  - Advisory Board, 2009-present
• University of Pennsylvania, Center for Technology Transfer
  - Triage Committee, 2004-2005

Admissions

• Pennsylvania
• U.S. Patent and Trademark Office

Education

• Temple University Beasley School of Law, J.D., 2009
• Yale University, Ph.D., Biology, 1987
• University of Pennsylvania, B.A., cum laude, 1974

Experience

• Duane Morris LLP
  - Associate, 2010-present
• Fish & Richardson P.C.
  - Associate, 2010
  - Technology Specialist, 2005-2010
• Message Pharmaceuticals
  - Project Manager, Compound Characterization, 1999-2004
  - Project Manager, Cell-Based Assay Systems, 1997-1999
  - Research Scientist, 1996-1997
• Gen Trak, Inc.
  - Contract research position in molecular diagnostics, 1996
• University of Pennsylvania, Department of Biology
  - Postdoctoral Fellow, 1990-1995
• University of Pennsylvania, Department of Human Genetics
  - Research Associate, 1985-1990
• Merck Sharp and Dohme Research Laboratories
  - Postdoctoral Researcher, 1982-1985

Selected Publications

• Author, "Who Owns U.S-Government-Funded Inventions?," GenericsWeb newsletter InnSight, August 2011
• Co-author, "Supreme Court Rules That Federally Funded Inventions Are Not Automatically Owned by Universities," Duane Morris Alert, June 8, 2011
• Co-author, "Intellectual Property Law and Employees," Bloomberg Businessweek, November 16, 2010
• Co-author, "Beyond KSR: How the Courts and the United States Patent and Trademark Office Have Decided Biotechnology and Chemistry Cases," Industrial Biotechnology, Volume 3, Number 3: 198-202 (2007)
• Co-author, "Use of cDNA Arrays to Assess Translational Regulation of Gene Expression Reveals VHL-Mediated Repression of TNF- α Synthesis," Molecular and Cellular Biology 23: 2316-2328 (2003)
• Co-author, "Transient Polyadenylation of a Maternal mRNA Following Fertilization of Mouse Eggs," J.Reprod. Fertil. 109: 223-8 (1997)
• Co-author, "Temporal Pattern of IGF-I Expression During Mouse Pre-Implantation Embryogenesis," Molecular Reproduction and Development 37: 21-26 (1994)
• Co-author, "Stage-Specific Expression of a Family of Proteins That Are Major Products of Zygotic Gene Activation in the Mouse Embryo," Developmental Biology 144: 392-404 (1991)
• Co-author, "Modulation of Protein Expression Associated with Chemically Induced Differentiation of Neuroblastoma Cells. Fifth Symposium on Advances in Neuroblastoma Research," Prog. Clin. Biol. Res. 366: 157-163 (1991)
• Co-author, "Immortalization of Stimulated Lymphocytes by Transfection with Oncogenic DNA. Proceedings of the First International Symposium on Biotechnology: Monoclonal Antibodies in the Treatment of Human Disease," IRL Press, McLean, Va., pp. 55-67 (1987)
• Co-author, "Mutant ras-encoded Proteins with Altered Nucleotide Binding Exert Dominant Biological Effects," Proc. Natl. Acad. Sci. U.S.A. 83: 952-956 (1986)
• Co-author, "Yeast and Mammalian ras Proteins Have Conserved Biochemical Properties," Nature 313: 700-703 (1985)
• Co-author, "Expression and Characterization of ras mRNA's from Saccharomyces cerevesiae," Molecular and Cellular Biology 4: 2289-2305 (1984)
• Co-author, "Saccharomyces cerevesiae Synthesizes Proteins Related to the p21 Gene Product of the ras Gene Found in Mammals," Molecular and Cellular Biology 4: 23-29 (1984)
• Co-author, "TNF-α RNA stability and mRNA translation Are Not Coordinately Regulated," RNA Society of North Carolina Meeting, October 2001
• Co-author, "TNF-α mRNA Levels Show a Biphasic Expression Pattern That Results from Both Transcriptional and Post-Transcriptional Events," American Society for Biochemistry and Molecular Biology Meeting, Boston, 2000
• Co-author, "Analysis of CNI-1493 and Destabilizing Elements in TNF-α mRNA," American Society for Cell Biology, Washington, D.C., 1999
• Co-author, "Specific Factors from DU-145 Prostate Carcinoma Cells That Bind cis-acting Elements in the 5'UTR of the IGF-I Receptor," American Society for Cell Biology, Washington, D.C., 1999
• Co-author, "CNI-1493 and Destabilizing Elements in TNF-α," RNA Society Meetings, Madison, Wisconsin, 1998
• Co-author, "Identification of Regions in the 5'UTR of the IGF-I Receptor mRNA That Bind: Proteins: An Approach to Prostate Cancer," 'Proteins that bind RNA' meetings, Avalon, New Jersey, 1998

Selected Speaking Engagements

• Moderator, "IP On a Shoestring- Maximize What You Need to Do with IP," 2011 NJTC Regional Commercialization Conference, Newark, Delaware, December 8, 2011
• "Vanderbilt v. Icos: A Blockbuster Drug and One of the Murkiest Concepts in the Muddy Metaphysics of Patent Law," Fish & Richardson Biotech Forum, June 15, 2010
• "Maximizing IP Value," Pharmaceutical Consultants' Consortium meeting, Immunomic Therapeutics, Chesterbrook, Pennsylvania, June 14, 2010
• "Protecting bioengineering inventions," Introduction to BioEngineering class, Temple University, Department of Engineering, Philadelphia, Pennsylvania, February 23, 2009
• "Takeda v. Alphapharm: Obviousness, Drug Discovery and Brown Fat," Fish & Richardson Biotech Forum, July 17, 2007
• "IP Considerations for Startup Companies," Biotechnology Entrepreneurship Symposium, Louisiana State University Health Sciences Center and Wharton Small Business Development Center, Malvern, Pennsylvania, April 24, 2007
• "IP Considerations for Startup Companies," Delaware Biotechnology Institute, Tech Breakfast, Newark, Delaware, April 18, 2007