An Interview with Li-Hsien (Lily) Rin-Laures

AuthorMichael A. Stramiello
Pages7-64
Published in Landslide® magazine, Volume 12, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
PROFILES IN IP LAW
An Interview with
Li-Hsien (Lily) Rin-Laures
Founder of RinLaures LLC
Dr. Li-Hsien Rin-Laures, known to clients and colleagues as
“Lily,” is a renowned biotechnology and pharmaceutical IP
strategist. She discovered her passion for patent law after
graduating from Northwestern University Medical School,
when she applied to be a secretary at an IP boutique and then
went on to become a patent agent, a Harvard Law gradu-
ate, a Federal Circuit clerk, and general counsel at a publicly
traded biotechnology company. Now a consultant, Lily draws
on her nearly 30 years of patent law experience to help bio-
tech and pharma clients achieve their IP and business goals.
Over the years, she has obtained patents covering nine dif-
ferent FDA-approved drugs and provides strategic advice on
due diligence, licensing, partnering, and IP aspects of public
offerings. Her expertise and leadership have garnered praise
from clients, peers, and the media. In this interview, Lily
shares some of her wisdom and experiences in the IP arena.
What was it like transitioning from medicine to a career in law?
The two elds are similar in that they are both logic-based,
high-pressure elds where your decisions are complex and depend
on many different factors. Learning to write was the hardest part
of transitioning. At rst, I had to write a lot more than I was used
to, and from the viewpoint of an advocate. Then, I had to learn to
write a lot less than I was used to, yet convey the same meaning.
In addition to honing their writing skills, what general
advice would you give to law rm associates?
Get as much exposure to clients as you can so that you can
understand how legal issues are viewed from a client’s busi-
ness perspective. It will help you no matter where you end up.
As a law rm partner, you will ultimately be taking the lead on
counseling clients and bringing in business. If you go in-house,
you will start as a better advisor to your in-house clients if you
know more about how clients think and the questions they ask.
Speaking of going in-house, what should law rm associates
do to improve their chances of landing an in-house job?
The best skill to acquire is the ability to analyze and strat-
egize from the client’s perspective. The best advisors are not
merely good lawyers, but are also strategists who look at the
big picture and who use the legal tools at their disposal to meet
their client’s ultimate business objectives. First, you need to
understand who your internal clients are. Then, you need to
put yourself in the client’s shoes and understand the relative
context of the legal question to the company’s business priori-
ties, budget, internal and external deadlines, risk tolerance, and
impact on other issues like nancing, public reputation, etc. It
can mean thinking about more than just the one legal question
you’ve been asked about, thinking about creating legal solu-
tions rather than legal obstacles, and recommending practical
solutions instead of legally perfect advice that is impossible to
implement. It can also mean presenting the options in a way
appropriate for the audience, e.g., a senior business executive,
a scientic researcher, or a sophisticated in-house lawyer/peer.
These skills are important whether you are at a law rm or you
are in-house counsel dealing with in-house clients.
An equally important skill to acquire is the ability to commu-
nicate with the client—to gure out how to gain their attention
and ask questions to get the information you need to do your job.
It is really sad to do due diligence on a patent portfolio and real-
ize that the patent doesn’t cover the intended product because the
technology evolved over time and the client didn’t keep the law-
yer up to date. This can happen whether the lawyer and client are
both in the same building or in different cities.
In your experience, what’s a more important skill, the abil-
ity to strategize, or to pivot in response to change?
Both are equally valuable, and I can’t really choose
between them. You need a long-term plan and a clear idea of
the client’s priorities, so that you can make day-to-day deci-
sions and recommendations in a way that keeps everyone on
track to meet objectives. However, you also have to be able to
reevaluate your goals and strategies in response to changing
circumstances or an unexpected setback. Ironically, if you’re
really good at what you do and mostly meet with success,
you might not have to deal with an unexpected setback until
later in your career. The ability to pivot in response to chang-
ing environments may be a mid- or late-career skill.
What’s the most valuable skill you’ve gained in the past ve
years?
The most valuable skill that I have gained recently is the abil-
ity to run a small business with a small team on my own, without
a large team of support staff. Cloud-based applications and soft-
ware for email, telephones, document management, billing, and
human resources make this so much easier now than even a
decade ago, leaving me free to do the legal work that I love.
What did you take away from your time as general counsel
of a publicly traded biotech company?
That role was an unexpected opportunity that had a signicant
Continued on page 62
Published in Landslide® magazine, Volume 12, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Patenting
Nature
By Rochelle C. Dreyfuss
Published in Landslide® magazine, Volume 12, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Patenting
Nature
In May 2019, Senators Thom Tillis and Chis Coons proposed legisla-
tion that would overturn judicially created exceptions to § 101 of the
Patent Act for laws of nature, natural phenomena, and abstract ideas.1
Although nonstatutory, these exceptions to patentable subject matter
have deep roots in U.S. law and have long required courts to engage
in the difcult task of distinguishing between an insight about nature
and a “valuable application of it to the arts.”2 The problem is episodic in
that it arises whenever science makes a signicant advance.3 However, in
recent years the issue has surfaced in a particularly virulent form. The cur-
rent batch of exciting discoveries are in the life sciences and personalized
medicine, where the desire for advancement is acute, the cost of bringing
products to market is high, and the public’s interest in access is particularly
urgent. In addition, now that universities have entered the patent business,
the pressure to patent upstream inventions—fundamental science discov-
ered in academia—has increased, as has the frustration of many scientists.4
These factors converged in two U.S. Supreme Court cases. The rst,
Mayo Collaborative Services v. Prometheus Laboratories, Inc.,5 invali-
dated a patent on a diagnostic for identifying the appropriate treatment
of certain autoimmune diseases. The second, Association for Molecular
Pathology v. Myriad Genetics, Inc.,6 held that isolated, naturally occur-
ring DNA associated with early-onset breast cancer was not eligible for
patent protection. Both cases involved areas where research institutions
were especially active: the result in Mayo allowed the Mayo Clinic to
engage in work to improve the diagnostic; the patents at issue in Myriad
were based on discoveries made at the University of California, and, as
in Mayo, the Court’s decision allowed university researchers to continue
to pursue that line of research. However, when these cases are coupled
with two contemporaneous Supreme Court cases on abstract ideas,7 the
concern is growing that the breadth of these judicially created exceptions
presents a signicant threat to the incentive system supporting innova-
tion—hence the proposal to eliminate them.
This article discusses the rationales underlying the judicial decisions
to create and expand exceptions to patent eligibility and then describes
the problems produced by the current case law. It ends with a critique
of the Tillis-Coons proposal.8
Rochelle C. Dreyfuss is the Pauline Newman Professor of Law at New York
University School of Law and codirector of its Engelberg Center on Innovation
Law & Policy. She is currently the Arthur Goodhart Visiting Professor of Legal
Science at the University of Cambridge in the United Kingdom. She teaches and
writes in the areas of patent law and international intellectual property law. She
can be reached at rochelle.dreyfuss@nyu.edu.
Image: GettyImages

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