Associate Counsel - Intellectual Property

Sherwin-Williams•Cleveland, OH

1d•Onsite

About The Position

This position is responsible for the management of assigned legal activities in support of a $23 billion global manufacturing company. This high visibility position will involve the management of intellectual property, specifically patents and trade secrets. The position will involve tasks and responsibilities generally performed by lawyers in law firms and corporate legal departments. This role will report to Sherwin-Williams Global Headquarters located at 1 Sherwin Way, Cleveland, OH 44113, USA. This position is also eligible for bonus based on performance and subject to the terms of the Company’s applicable plans. Job duties include contact with other employees and access confidential and proprietary information and/or other items of value, and such access may be supervised or unsupervised. The Company therefore has determined that a review of criminal history is necessary to protect the business and its operations and reputation and is necessary to protect the safety of the Company’s staff, employees, and business relationships.

Requirements

Must have a Juris Doctor
Must have a license to practice law in Ohio
Must have a license to practice before the U.S. Patent and Trademark Office
Must have an undergraduate degree in chemistry, chemical engineering, polymer science, or materials science
Strong work ethic combined with diligence and the ability to act independently and adapt to changing priorities.
Demonstrated experience clearly articulating complex legal concepts to a lay audience.
2-5 years of legal experience including patent application drafting, patent prosecution, and searching.
PC skills; Microsoft Office applications (Word, Excel, PowerPoint); and other applications.
General working knowledge of legal software.
Must have the legal right to work in the country of employment without needing sponsorship now or in the future for employment visa status.
Must be at least 18 years of age.

Nice To Haves

Advanced degree in chemistry, chemical engineering, polymer science, or materials science
Demonstrated experience in a corporate legal department as an in-house attorney, providing guidance and counseling to both business and research and development partners in connection with patents and trade secrets.
Proven ability to manage outside counsel on complex matters in a cost-effective manner.
Familiarity with patent research tools.
Experience training employees on substantive legal topics in intellectual property.
Deep understanding of coating technologies.
Experience with trademarks and copyrights.

Responsibilities

Effectively handles assigned legal activities for business units, functions, or legal practice areas: Supports projects and teams, providing legal support and solutions to the company's business units or corporate departments.
Collaborates with scientists, engineers and researchers, and technical directors – Discusses new products, product innovation and improvements, and trade secrets.
Provides focused and practical legal advice on patents, trade secrets and related intellectual property issues to multiple research and development groups, and assistance with intellectual property issues in global markets.
Provides Proactive guidance - Stays abreast of new regulations and emerging legal risks; provides proactive advice and counsel to business units and corporate functions that may be impacted.
Substantiates positions - Researches, develops, and coordinates implementation of legal solutions.
Mitigates risk - Identifies and analyzes existing and emerging legal risks. Develops and implements business-focused strategies to manage risks.
Ensures Compliance - Assists the development and implementation of policies, procedures, and control mechanisms to promote intellectual property compliance with applicable laws, rules, and regulations.
Provides freedom-to-practice searches, novelty assessment, patent application preparation, and prosecution.
Negotiates, drafts, and manages of intellectual property agreements including non-disclosure and confidentiality agreements, joint development agreements, government-sponsored research and consulting agreements, and technology licenses.
Assists with and reviews invention disclosures, research activities and new product innovation.
Evaluates intellectual property and develops protection strategies, providing effective guidance with regard to IP risks and strategies.
Provides IP due diligence for mergers and acquisitions.
Provides patent and trade secret dispute and litigation support.
Conducts IP education/training and support for marketing, sales, R&D, and other departments.
Demonstrates the development of core legal expertise and support for legal affairs of business units or enterprise-wide functions: Develops understanding of the operational model by which the supported business unit or enterprise-wide function operates.
Supports clients on a cost-effective basis.
Manages outside counsel in an efficient and cost-effective manner, as necessary.
Primary Business Partner Engagement: Engages, communicates, and advises mid-management and operational business level of such clients.
Develops understanding of how legal support affects objectives, risks, and returns of business clients.
Supervisory Responsibility: Provides work direction or review the work of individual contributor level support staff (paralegals, admins, fellows, law clerks, etc.).