Job Details

Intellectual Property/Patent Paralegal

Job Number: 17000HMQ
Minneapolis, Minnesota
Job Field: Corporate
Travel: No
Schedule: Full-time
Posted: 2/2/2018

Description

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.

 

JOB SUMMARY:

 

The Intellectual Property/Patent Paralegal and Trademark position is responsible for providing legal and administrative support to in-house IP counsel.  Legal support includes, without limitation, those tasks and responsibilities generally performed by IP paralegals in law firms and corporate legal departments.

 

Intellectual Property/Patent portfolio management, documentation, docketing and maintenance:

·       Acquire and maintain knowledge of company systems, tools and processes and procedures related to the documentation and protection of IP assets worldwide.

·       Collaborate with business units and corporate departments on the collection, preparation and filing of documents and related correspondence for IP assets.

·       Assist attorneys with IP filings, correspondence and docketing and daily practice management.

·       Possess and maintain knowledge of systems and procedures for protection of IP assets with government and administrative agencies worldwide.

 

Intellectual Property/Trademark Support:

·       Conduct computer searches to determine availability of proposed trademarks.

·       Prepare and file domestic trademark applications, affidavits and renewals.

·       Coordinate with foreign counsel to file foreign trademark applications, affidavits and renewals.

·       Prepare documents necessary to assert or defend trademark oppositions and cancellations.

·       Monitor U.S. publications for potential infringement of the Company’s trademarks.

·       Maintain electronic docketing system for trademark activities.

·       Docketing (including processing IP communications to and from outside/foreign counsel and the USPTO and docketing due dates as necessary), document preparation (including filing papers, draft responses, information disclosure statements), electronic filing, foreign and international IP filings (including corresponding with foreign associates), coordinating annuities, assisting attorneys with IP filing metrics, cost reduction projects and internal process efficiencies (including maintaining a best practices handbook for IP matters).

 

Administrative Support:

·       Administrative support may include, without limitation, the oversight and use of electronic matter management, docketing, billing and budgeting systems, the processing of new matters and the preparation of various reports and analyses.

 

 

POSITION REQUIREMENTS:

 

FORMAL EDUCATION:

 

Required:

·       High school diploma or equivalent

·       Paralegal Certification OR Associate Degree in Paralegal Studies

 

Preferred:

·       Bachelor’s Degree or equivalent experience

 

 

KNOWLEDGE & EXPERIENCE:

 

Required:

·       Minimum 1 year of IP legal or administrative experience

·       Familiarity and expertise with IP rules, regulations and procedures

 

Preferred:

·       More than five years of job-related experience.

 

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.