Client: TomTom
REF: 21830
TomTom IP Portfolio Management

Founded in 1991, TomTom provides location technology for drivers, carmakers, enterprises and developers. The company’s highly accurate maps, navigation software, real-time traffic information and APIs enable smart mobility on a global scale, making the roads safer, the drive easier and the air cleaner. From cloud to mobility, analytics and smart cities, TomTom harnesses location data to empower businesses, governments and developers to create ground-breaking and location-aware technologies. The company has also become a trusted partner for innovative and future-proof navigation technology for the global automotive and technology industry.

Headquartered in Amsterdam with offices in 30 countries, TomTom has grown from a Dutch-based startup to the world’s leading independent location technology specialist. The business is founder-led, and with a 5000+ strong team of amazingly talented, diverse individuals working relentlessly to create location technologies that are relied upon by hundreds of millions of drivers, businesses and governments.

THE OPPORTUNITY

Based in TomTom’s headquarters in Amsterdam, the Netherlands, the Director IP Portfolio Management will report to the VP Commercial Legal and Litigation. The successful candidate will be responsible for maintaining and expanding TomTom’s registered intellectual property (IP) portfolios to protect its technology and brands.

In particular, the appointed person will be responsible for:

  • Leading and driving the development of intellectual property strategy.
  • Building and fostering strong relationships with the R&D community and the Commercial teams, as well as communicating IP Strategy and its commercial value to the business.
  • Leading and managing a team of IP professionals to provide business-focused IP counselling and support.
  • Ensuring that, in combination with the incumbent’s own efforts, the following IP support functions are successfully provided for the business:
    • Invention harvesting / identifying protectable innovations.
    • Managing patent and registered design portfolios, including the filing of new applications and prosecution of pending applications.
    • Managing trademark and domain name portfolios, including the filing of new applications.
    • Providing technical advice to support responses to patent infringement claims.
    • Monitoring and reviewing third-party patent and trademark publications, online marketplaces, and websites.
    • Performing freedom-to-operate searches to clear desired technical implementations and new brand names and logos.
    • Managing external service providers, including patent and trademark attorneys.
    • Maintaining overviews of TomTom’s registered IP rights and their relevance to its product portfolio.
    • Performing IP training for TomTom’s R&D and marketing teams.

The successful appointee will enjoy an inspiring work environment, as well as the autonomy to build and shape the IP function and IP strategies in order to strengthen TomTom’s commercial success on a global basis. This further creates opportunities for personal development and professional growth.

THE CANDIDATE

The successful candidate is likely to fulfil the following criteria:

  • Qualified European or US patent attorney or patent agent, ideally with a background in software-related inventions.
  • At least 6-8 years of experience working in an IP-orientated environment (e.g. patent or law form, in-house IP team, technology transfer office (TTO), etc).
  • Fluent in English, with other languages being an advantage.
  • Able to build and sustain credibility within an R&D organisation.
  • Comfortable with a continuously changing environment.
  • Comfortable making reasoned risk-based decisions.
  • Fully confident in your technical skills necessary to perform the job.

And preferably:

  • Experience with managing trademarks and domain names.
  • Experience managing a team of IP professionals.
  • Knowledge of modern software development practices.

If you would like to explore this opportunity further, please contact

Rene Chung

Partner

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