Corporate Counsel, Intellectual Property Attorney, Patent Chemical
Founded in 1866, The Sherwin-Williams Company is a global leader in the manufacture, development, distribution, and sale of paints, coatings and related products to professional, industrial, commercial, and retail customers. The company manufactures products under well-known brands such as Sherwin-Williams®, Valspar®, HGTV HOME® by Sherwin-Williams, Dutch Boy®, Krylon®, Minwax®, Thompson’s® Water Seal®, Cabot® and many more. Sherwin-Williams® branded products are sold exclusively through a chain of more than 4,100 company-operated stores and facilities, while the company’s other brands are sold through leading mass merchandisers, home centers, independent paint dealers, hardware stores, automotive retailers, and industrial distributors. The company supplies a broad range of highly-engineered industrial and OEM coatings for wood and general industrial, coil, packaging, protective and marine, and transportation applications worldwide. Our 60,000 employees are diverse, innovative and passionate. With a variety of rewarding and challenging opportunities, Sherwin-Williams is a great place to find a career that takes you places.
This attorney will provide expert advice and counsel on technology agreement negotiation and drafting, patents, trade secrets and related intellectual property issues to multiple research and development groups, and assistance with intellectual property issues in connection with private and government contracts and global markets. This position will report to the Associate General Counsel for Intellectual Property and can be based out of our Cleveland, OH or Minneapolis, MN facility.
The technology agreement, patent and trade secret-focused intellectual property attorney will provide legal advice and services to research and development and product innovation teams, and provide counsel on contracts for private and government-sponsored research, and external technologies. The position requires substantial knowledge of negotiation and drafting of technology agreements in industrial and consumer businesses, detailed knowledge of coatings and polymer chemistry, substantial experience in chemical patent law and advanced chemical and material technologies, and the proven ability to efficiently communicate and work with Ph.D. level chemists and chemical engineers.
Specific responsibilities include:
· Creative negotiation, drafting and managing of intellectual property agreements including non-disclosure and confidentiality agreements, joint development agreements, government-sponsored research and consulting agreements, technology licenses, distributorship agreements;
· Collaboration with scientists, engineers and researchers and technical directors regarding new products, product innovation and improvements;
· Assistance with and review of invention disclosures, research activities and new product innovation;
· Drafting, filing and prosecution of patent applications, U.S. and foreign;
· Evaluation of intellectual property and developing protection strategies;
· Patent research and mapping, freedom-to-practice analysis and opinions;
· IP due diligence for mergers and acquisitions;
· Patent and trade secret dispute and litigation support;
· Trade secret identification, documentation and protection;
· Development and execution of intellectual property protection strategies and related risk management;
· Interaction with and management of outside counsel, U.S. and foreign;
· IP legal assistance, training and support for marketing, sales, general legal and technology personnel and departments
Attorneys at this level are expected to demonstrate the following:
Effectively handles assigned legal activities for business units, functions or legal practice areas.
· Supports projects and teams - Supports or leads projects and teams providing legal support and solutions to the company's business units or corporate departments.
· Provides advice - Provides focused and practical legal advice respecting business operations as well as the impact of current or anticipated laws, rules and regulations.
· 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.
· Compliance - Assists the development and implementation of policies, procedures and control mechanisms to promote compliance with applicable laws, rules and regulations.
· 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.
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 with 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
· May manage or provide work direction or review the work of IC level support staff (paralegals, admins, fellows, law clerks, etc.)
Performs other duties as assigned
· Juris Doctor
· License to practice law required (applicable jurisdiction)
· Excellent academic credentials including bachelor of science or advanced degrees in chemistry or chemical engineering
· Bar admission in Ohio or Minnesota OR eligibility to be licensed in Ohio or Minnesota
· Registered to practice before the U.S. Patent and Trademark Office
KNOWLEDGE & EXPERIENCE:
· Requires 5 years of legal experience
· High level of proficiency with business software and databases
· Experience and knowledge of all aspects of intellectual property with specialization in patents and trade secrets and sub-specialization in chemical technology
· Experience in negotiation and drafting of technology and product development agreements, preferably including experience with large commercial product manufacturers and consumer products
· Extensive experience in managing a high volume of intellectual property matters
· Extensive knowledge of related areas of IP law and business law fundamentals
· Proven ability to manage outside counsel on complex matters in a cost-effective manner
· Extensive experience with coatings and polymer technologies
Equal 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 identify, national origin, protected veteran status, disability, age,
pregnancy, genetic information, creed, citizenship status, marital status or any other
consideration prohibited by law or contract.
VEVRAA Federal Contractor requesting priority referral of protected veterans.