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. Thishigh visibilityposition will involvethe 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 companys business units or corporate departments.
• Collaborateswith scientists engineers and researchersand technical directors Discusses new products product innovation and improvements andtrade 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 noveltyassessment patent application preparation and prosecution.
• Negotiatesdraftsandmanagesof intellectual property agreements including non-disclosureand confidentialityagreementsjointdevelopmentagreementsgovernment-sponsoredresearchandconsulting agreements and technologylicenses.
• Assists withand reviews invention disclosures research activities and new product innovation.
• Evaluatesintellectualpropertyanddevelopsprotectionstrategies providing effectiveguidancewithregard toIPrisksandstrategies.
• Provides IPduediligenceformergersandacquisitions.
• Provides patentandtradesecret disputeandlitigationsupport.
• Conducts IPeducation/trainingandsupportformarketingsalesR&D and otherdepartments.

(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 Companys 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 Companys 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.
• Musthavethelegalrighttoworkinthecountryofemploymentwithoutneedingsponsorshipnow or in the future for employment visa status.
• Mustbeatleast18yearsof 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%