Qualcomm’s electric vehicle licensing deal shows the value of including know-how in patent transactions

In a transaction characteristic of today’s patent marketplace, Qualcomm announced this week that it has licensed its wireless charging technology for electric vehicles to automotive parts manufacturer Lear Corporation. Under the terms of the agreement, Lear will include Qualcomm’s Halo wireless charging technology among its product offerings for clients including automotive manufacturers and vehicle-charging infrastructure companies.

Most visitors to IAM Market will know that Qualcomm – which came fourth on a list of entities receiving the most US patents last year with 3,209 grants, and owns the 18th largest portfolio of US patents – is far from a stranger to IP licensing. In fact, there are few companies that one would associate with licensing quite as closely as the San Diego outfit. Qualcomm made its name in the telecommunications field, as the developer and disseminator of much of the fundamental technology that underpins today’s wireless communications. It is one of the major owners of patents relevant to wireless 4G standards – owning the largest share of patents seminal to the standard according to 2012 research by patent analytics firm iRunway – while its chipsets incorporating these technologies are also widely used by manufacturers of smartphones, personal computers and other wireless-enabled devices.

But it is the detail of the Lear deal that makes it among the few that stand out from the seemingly innumerable licensing agreements that Qualcomm has likely entered into worldwide over the years. The press release announcing the deal states: “Qualcomm has granted Lear a royalty bearing licence to develop, make and supply WEVC [wireless electric vehicle charging] systems based on Qualcomm Halo technology. Qualcomm Technologies, Inc. will provide technical expertise and engineering support.” Moreover, Qualcomm will provide Lear with “a comprehensive technology transfer package, aimed to enhance their ability to develop commercially and technically viable WEVC systems and to support the future design of improved WEVC systems”.

This deal goes far beyond a patent licence that addresses infringement and freedom–to-operate issues. For Qualcomm, it is a chance to build a potentially revenue-generating business around IP assets it has developed, but which are tangential to its core business. However, by teaming up with Lear – a company which already has a presence and brand recognition in the automotive market – much of the time and cost of building the business are reduced, or even eliminated. For Lear’s part, it gets to offer its customers a ground-breaking new product – and, beyond licence to practice Qualcomm’s patents, they also get the close-to-finished technology they underpin and the know-how required to exploit them.

It hardly needs to be said that the patent deal-making climate the United States and many other parts of the world has become much tougher in recent years. But there may be scenarios where, if strategically appropriate, the offer of value adds – such as broader technology transfer with know-how or branding included, for example – could seal the deal. At the time of writing, there are eight offerings for technology transfer listed on IAM Market (please note that it is up to vendors to decide how to categorise the types of transaction they are interested in pursuing). You can view IAM Market’s current tech transfer packages here.

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