PolyOne, a $3+ billon world-class, global provider of polymer solutions with materials used in everyday products ranging from sports equipment to medical devices to electronics and more, is seeking an Associate Counsel, Intellectual Property. Under the guidance of the General Counsel and reporting to the Senior Counsel, Intellectual Property, this person will provide a full range of intellectual property legal support for portions of PolyOne’s businesses globally. As part of the company’s small in-house IP legal team, this position will play an integral role in building and managing a global IP portfolio aligned with commercial and technical objectives, identifying and advising on IP-related risks and other issues associated with development and sale of new products and other business activities, and promoting awareness of and compliance with IP-related policies and best practices throughout the global organization.
This position will be based at PolyOne’s global headquarters located in Avon Lake, Ohio, a suburb of Cleveland. Relocation assistance for this position is negotiable.
- Prepares, files, and prosecutes patent and trademark applications in the United States and coordinates with foreign counsel to file and prosecute the same outside the United States
- Drafts, negotiates, and advises on IP-related agreements and agreements containing IP provisions, including confidentiality agreements, development agreements, services agreements, license agreements, supply agreements, etc.
- Counsels internal clients regarding a full range of IP issues, including patentability, product clearance / freedom-to-practice, protection and use of trade secrets and confidential information, trademark protection and clearance, copyright protection and use, etc.
- Conducts patent and trademark searches, analyzes the search results, and effectively communicates relevant advice or information to internal clients
- Supports IP-related aspects of M&A activities as assigned
- Supports aspects of IP-related litigation, IP-based oppositions, and other disputes as assigned
- Develops and delivers IP-related training to internal clients as assigned
- Acquires in-depth knowledge of PolyOne’s products and technologies and gains familiarity with relevant products and technologies of PolyOne’s customers, suppliers, and competitors
- Works collaboratively with existing IP team, other attorneys and staff within the Legal department, and individuals throughout the global organization from functions including Technology, Marketing, Product Management, Sales, Sourcing, Global Trade, Mergers & Acquisitions, Tax, Finance, etc.
- Performs special projects/duties as assigned
To succeed in this position, an individual must be able to perform each job duty satisfactorily and productively. The requirements listed below are representative of the knowledge, skills, and/or abilities required. Reasonable accommodations may be made to address gaps in experience for an otherwise qualified candidate who is willing to learn. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential duties.
In addition to the PolyOne Competencies required for all jobs, the following qualifications are required for this job.
Required Education & Special Qualifications:
- Juris Doctor degree from ABA accredited Law School
- Bachelor and/or advanced degree(s) in Chemistry, Chemical Engineering, Materials Science, Polymer Science, or similar fields
- Licensed to practice law in the State of Ohio (or another state and qualified for corporate counsel registration in Ohio)
- Registered to practice before the United States Patent and Trademark Office
Required Length & Type of Experience:
- 5+ years of intellectual property legal experience, including a balance of patent preparation and prosecution for chemical technologies, IP-related agreements and transactions, and IP-related counseling and opinions
- Demonstrated knowledge of or familiarity with all aspects of intellectual property law with a focus in and substantial experience with patents, trade secrets, and confidential information; at least some experience with trademarks is preferred
- Demonstrated knowledge of and experience with the Patent Cooperation Treaty and familiarity with patent practice and procedure in Europe (EPO) and China (SIPO)
- Experience with polymer technologies is preferred
- Experience with a global, publicly-traded organization is preferred
Required Knowledge, Skills & Abilities:
- Strong legal, business, and technical acumen
- Detail-oriented, motivated, confident, and approachable
- Excellent written and oral communication skills, including the ability to interface and communicate effectively at all levels of the organization
- Excellent business judgment, problem solving, negotiation, follow-through, and time management (including docket management) skills
- Excellent analytical skills, including an ability to review technical information and data to identify patentable subject matter
- Exceptional document drafting skills (candidate should be prepared upon request to provide a writing sample including at least one published patent application and at least one publicly available office action response that were principally authored by the candidate)
- Ability to provide timely and pragmatic legal advice that guides the business to successful outcomes
- Ability to quickly learn and comprehend complex technical subject matter
- Ability to function autonomously while possessing sufficient judgment to understand when to seek assistance from or provide updates to management and/or stakeholders
- Ability to function in a fast-paced environment and operate efficiently and effectively to manage time pressures and meet deadlines
- Ability to take on progressively greater responsibilities
- Awareness of cultural differences between the United States and other countries; familiarity with a language other than English is a plus
- Each position at PolyOne focuses on 12 competencies in the areas of Personal and Strategic Skills as well Thought Rigor and demonstrating an Action Bias. Each position ties to specific competencies and levels of proficiency which help individuals excel at their current role as well as chart their growth path with the company through our Career Planning process.
This position is global in scope.
The characteristics listed below are representative of the physical and environmental demands required by an individual to successfully perform the essential duties of this position. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential duties.
- Requires standing and sitting for prolonged periods of time, talking, listening, and thinking
- Typical work is in an office environment where the noise level is low to moderate
Equal Opportunity Employer
We offer a competitive salary, incentive and benefit plan to eligible employees. Benefits include medical, dental, vision, life insurance, disability, spending accounts, and 401(k).
PolyOne Corporation is a drug free workplace. PolyOne is an equal opportunity employer. We maintain a policy of non-discrimination in providing equal employment to all qualified employees and candidates regardless of race, sex, sexual orientation, gender identity, age, color, religion, national origin, disability, genetic information, protected veteran’s status, or other legally protected classification in accordance with applicable state and local law. *LI-BS1
Apply online by visiting this link: https://polyone.referrals.selectminds.com/jobs/intellectual-property-associate-counsel-1289. Writing samples (published patent application and publicly available office action response) upon request.
Employer Type: Law Firm
Job Location: Cleveland, Ohio