Associate Counsel - Intellectual Property

CORE RESPONSIBILITIES AND TASKS:

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, including but not limited to the following:

(1) 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.

(2) 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.

(3) 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.

(4) Supervisory Responsibility:

• Provides work direction or review the work of individual contributor level support staff (paralegals, admins, fellows, law clerks, etc.).

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.

POSITION REQUIREMENTS:

Required:

• 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.

Preferred:

• 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.

TRAVEL REQUIREMENTS: (TIME SPENT AWAY FROM HOME OR OTHER TYPICAL OFFICE LOCATION)

• 10%

At Sherwin-Williams, our purpose is to inspire and improve the world by coloring and protecting what matters. Our paints, coatings and innovative solutions make the places and spaces in our world brighter and stronger. Your skills, talent and passion make it possible to live this purpose, and for customers and our business to achieve great results. Sherwin-Williams is a place that takes its stability, growth and momentum and translates it to possibility for our people. Our people are behind the strength of our success, and we invest and support you in:

Life … with rewards, benefits and the flexibility to enhance your health and well-being
Career … with opportunities to learn, develop new skills and grow your contribution
Connection … with an inclusive team and commitment to our own and broader communities
It's all here for you... let's Create Your Possible

At Sherwin-Williams, part of our mission is to help our employees and their families live healthier, save smarter and feel better. This starts with a wide range of world-class benefits designed for you. From retirement to health care, from total well-being to your daily commute—it matters to us. A general description of benefits offered can be found at http://www.myswbenefits.com/. Click on “Candidates” to view benefit offerings that you may be eligible for if you are hired as a Sherwin-Williams employee.

Compensation decisions are dependent on the facts and circumstances of each case and will impact where actual compensation may fall within the stated wage range. The wage range listed for this role takes into account the wide range of factors considered in making compensation decisions including skill sets; experience and training; licensure and certifications; and other business and organizational needs. The disclosed range estimate has not been adjusted for the applicable geographic differential associated with the location at which the position may be filled. The wage range, other compensation, and benefits information listed is accurate as of the date of this posting. The Company reserves the right to modify this information at any time, with or without notice, subject to applicable law.

Qualified applicants with arrest or conviction records will be considered for employment in accordance with applicable federal, state, and local laws including with the Los Angeles County Fair Chance Ordinance for Employers and the California Fair Chance Act where applicable.

Sherwin-Williams is proud to be an Equal Employment Opportunity employer.  All qualified candidates will receive consideration for employment and will not be discriminated against based on race, color, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, disability, age, pregnancy, genetic information, creed, marital status or any other consideration prohibited by law or by contract.

As a VEVRAA Federal Contractor, Sherwin-Williams requests state and local employment services delivery systems to provide priority referral of Protected Veterans.

Please be aware, Sherwin-Williams recruiting team members will never request a candidate to provide a payment, ask for financial information, or sensitive personal information like national identification numbers, date of birth, or bank account numbers during the application process.