Tax issues in technology transactions

TAX ISSUES FOR IP ATTORNEYS Roger Royse Royse Law Firm, PC 2600 El Camino Real, Suite 110 Palo Alto, CA 94306 [email_address] www.rroyselaw.com www.rogerroyse.com Skype: roger.royse IRS Circular 230 Disclosure: To ensure compliance with the requirements imposed by the IRS, we inform you that any tax advice contained in this communication, including any attachment to this communication, is not intended or written to be used, and cannot be used, by any taxpayer for the purpose of (1) avoiding penalties under the Internal Revenue Code or (2) promoting, marketing or recommending to any other person any transaction or matter addressed herein. February 14, 2011

PATENT ISSUES 1. All Substantial Rights 2. Sale versus License 3. Sections 721 and 351 4. Section 1235 Capital Gains 5. R&D Partnerships 6. The Associated Patentees Structure 7. Foreign and Domestic IP Holding Companies Partnerships with Lawyers 482 / Cost Sharing New Developments

“ ALL SUBSTANTIAL RIGHTS” Transfer of All Substantial Rights? Generally, no, if: Use of the patent limited geographically within the country of issuance Time period of less than the remaining life of the patent Limited to specific trades or industries Rights that are less than all the rights covered by the patent (prior transfers) Limit on further sublicensing Grant of less than all the claims or inventions covered by the patent Retention of a right to terminate the transfer at will or on condition subsequent For purposes of securing the obligations of the purchaser, can (1) retain right to use the invention in the event of default and (2) hold the legal title to the patent Inventor Company Buyer Company

SALE vs. LICENSE Sale: Must transfer “All Substantial Rights” for sale treatment Sales are generally taxed as capital gains, if holding requirements are met, and individual is not a professional inventor (see Section 1235 discussion) Sales will not result in “personal holding company income” – Rev. Rul. 75-202 Purchaser may amortize under Section 197 if acquired as a part of a trade or business; otherwise Sections 167 and 174 apply Consider Section 1253 for franchises, trademarks, and trade names License: Applies when transferor fails to transfer “All Substantial Rights” Generally taxed as ordinary income to licensor License fee is generally deductible by licensee

SECTIONS 721 AND 351 Non-recognition in both Sections 721 and 351 require a transfer of “property” IRS requires transfer of “All Substantial Rights” for the IP to be considered “property” Case law is more lenient: (1) United States v. Stafford, 727 F.2d 1043 (11 th Cir. 1984) – contribution of letter of intent held to be “property” under Section 721 because parties viewed it as having value; (2) E.I. DuPont de Nemours v. United States , 471 F.2d 1211 (Ct. Cl. 1973) – grant of non-exclusive patent rights to wholly-owned subsidiary was “property” under Section 351

INCORPORATION / FORMATION ISSUES StartUp Inc. [LLC] Technology Services Cash

TAX ISSUES – STARTUP, INC. Code Section 83 Option Grant Sale for Partially Recourse Note Stock Grant Code Sections 351/721 Stock/Capital for “Property” License In

LLC PROFITS INTEREST Under Rev. Proc. 93-27, the receipt of a profits interest is generally not a taxable event for the partner or the partnership. A member has a capital interest if he or she has a share of unrealized appreciation in the partnership's assets. In Rev. Proc. 2001-43, the IRS stated that it would not tax the employee or the partnership on grant of a non-vested profits interest.

PARTNERSHIP EQUITY TRANSFERS FOR SERVICES Proposed Regulations published May 24, 2005 Rev. Proc. 2001-43 and Rev. Proc. 93-27 Will Be Obsoleted Section 83 Applies to Profits Interest Section 83(b) Election Required for Unvested Profits Interest Partnership Deduction in Year of Employee’s Income Inclusion Partnership Recognizes No Income on Capital Shift Safe Harbor Election Forfeiture Allocations Required Effective When Finalized

COPYRIGHT Costs Most copyright costs must be capitalized (no current deduction) Subject to depreciation 195 Startup expenses Inventory costs Software may be depreciated over 36 months Revenues Capital Asset does not include copyright held by person whose personal efforts created it or to whom it was assigned in a carryover basis transaction Personal efforts of corporation? Inventory Software as franchise

TRADEMARKS Acquisition Costs Expenses to develop trademark must be capitalized No depreciable life Section 195 (startup costs) does not apply Section 197 15 year amortization Contingent or periodic payments deductible Section 1253 - Income from Disposition Receipt of amounts contingent on productivity, use or disposition are non-capital Retention of any significant power, right or continuing interest (quality control) results in ordinary income

PATENTS Deduction of R&D Expenses under 174 Section 41 Credits Capitalize and Amortize 1235 Capital Gains Available to Holders Inventor Obtained an interest in the invention before reduction to practice N/A Related Party Transactions N/A Employer of Creator

TRADE SECRETS AND KNOW HOW Section 1235 applies to potentially patentable trade secrets Treatment as Property Transfer of all substantial rights No retained rights to use

SOFTWARE: PATENT OR COPYRIGHT Copyright Not Capital Asset in hands of Creator One year capital gains holding period Patent Sale by Holder qualifies for capital gain transaction 1235 instant capital gains

SOFTWARE Right to copy Transfer other than right to copy Produced for purchaser Transfer of copyright right – sale or royalty Sale or rent Services

PERSONAL HOLDING COMPANY INCOME Personal Holding Company More than 50% owned by 5 or fewer individuals 60% of adjusted ordinary gross income is PHCI Personal Holding Company Income Includes patent royalties Copyright royalties are excluded from PHCI if they are more than half of gross income and the company has little other PHCI Exception for active computer software royalties 15% penalty tax for undistributed PHCI Subchapter S passive income for S corps with former C corporation E&P If PHCI exceeds 25% of gross income, corporate level tax on excess net passive income S election can terminate if excess passive income for 3 consecutive years

BUSTED 351 Shareholders Inventor Patent OldCo wants Inventor’s patent for restricted stock Inventor wants OldCo Stock Can’t do a 351 because of 80% requirement OldCo, Inc.

TAX FREE REORGANIZATION Merger StartUp LLC INCORPORATED Acquiring Corporation

TAX ISSUES – STARTUP, INC. Shareholders Inventor Patent Stock Merger OldCo Stock Step Transaction - sale Continuity of Business OldCo, Inc. NewCo, Inc.

WITHHOLDING 30% on US Source royalties paid to foreigner Lower Treaty Rates Characterization of payment as royalty, service fee or product 1.861-18 Regulations relating to computer programs as sales, licenses, leases, services, or know-how

367(d) SUPER-ROYALTY Section 351 does not apply to transfers of Intangible Property to foreign corporation Transfer of IP treated as sale for contingent payments Commensurate with income from the IP IP Transfer Stock US Parent IP Holding Co.

TRANSFER PRICING Under Code section 482, the IRS can re-allocate income among "controlled" entities to properly reflect income. The prices charged between related parties (“transfer prices”) are required to be arm's length prices. Substantial penalties for understatements of US tax due to transfer pricing adjustments – 20% or 40% of the underpaid taxes, depending on the size of the understatement. Penalty may be avoided if taxpayer has adequate documentation supporting its transfer prices (i.e. a transfer price study)

COST SHARING Buy In Payment Ownership Of Intangibles Split ownership of Intangibles Share costs and exploitation rights No Intercompany Royalty Can migrate intangibles to Low tax country Current Problems: Nonexclusive Technology reverts on termination Capital Technology Distribution Network Foreign Operations Company US Company

CROSS-LICENSE AGREEMENTS What is Cross-Licensing? Typically nonexclusive reciprocal licensing agreements to avoid infringement litigation or to foster research and development projects between companies Notice 2006-34 IRS issued notice to request comments regarding cross-licensing agreements (CLAs) to determine tax / withholding consequences Commentators argued that CLAs were not taxable, and that taxable income was only realized in commercial transactions that arise as a result of the CLA If no income, then no withholding Rev. Proc. 2007-23 Taxation only applies to the extent there is “net consideration” transferred

EFFECTIVELY CONNECTED INCOME Foreign corporations are taxable on income that is effectively connected with a US trade or business Income attributable to a US office or other fixed place of business A U.S. trade or business can be carried on through an agent A foreign corporation's "independent" agent will not constitute a US office but a dependant agent might. The office of a dependant agent is disregarded unless the agent has and regularly exercises the authority to conclude contracts in the name of the foreign company or has a stock of goods belonging to the foreign company from which orders are regularly filled on behalf of the foreign company. US PE Foreign Corporation

SUBPART F US shareholder of CFC is taxed directly on pro rata share of CFC's Subpart F income. Foreign corporation is CFC if more than 50% of its stock, by vote or value, is held by U.S. shareholders at any time during the year.

PASSIVE FOREIGN INVESTMENT COMPANIES (PFIC) Income Test: 75% of gross income is passive Asset Test: 50% of assets produce passive income Interest charge on "excess distributions" from PFICs QEF Election

SUBPART F - EXAMPLE US Co Base Company Cash or Property Ownership 100% Technology Ownership Tax Haven Company 100% Royalty License Manufacturing and Sales Subpart F income includes royalties, except royalties derived in the active conduct of a trade or business if received from a person who is not a related person.

FOREIGN BASE COMPANY SALES INCOME US Co Base Company Cash or Property Ownership 100% Tax Haven Company 100% Sales Manufacturing Sales Subpart F income includes Income from sales of goods when CFC purchases goods and either sells them to, or buys them from, a related party Same country exception

BRANCH RULE Subpart F Income includes sales income if a related person is the seller or buyer Exception for income from sales of goods manufactured or produced by the CFC Manufacturing branches treated as separate corporations if located outside the country of incorporation, and the effective rate of tax on non-branch income is less than the lesser of (i) 90% of rate of country of manufacturing, or (ii) a rate 5 percentage points below country of manufacture rate. US Co 100% Tax Haven Company Manufacturing Branch Sales Branch

CONTRACT MANUFACTURER STRUCTURE US Co Contract Manufacturing [PRC] Manufacturer Local Distributors Products US Sales Service Fees Cash or Property Ownership 100% Contract R&D Service Fees Founder Preferred Shareholder Optionees Technology Ownership Tax Haven Company Ashland Oil v. CIR Vetco Inc. v. CIR Rev. Rul. 97-48 Contract Manufacturer is not a branch Are activities of contract manufacturer attributed to tax haven company?

INTERNATIONAL E-COMMERCE OPERATIONS US Company International Holding Company Server Company Local Country Company License/Royalty Commission/Fees Customer Fees/Sales Royalties Cost Sharing License Deemed Sale

SALES TAX R&D Contracts nontaxable under true object of the contract test Allocation under CA R&TC Sections 6011 & 6012 – sale of drawings and manuals are taxable Transfer via Remote Telecommunication Custom made software: Reg. 1502(f)(2) Publishers Exemption: Reg. 1502(f)(1)(B)

STATE TAX ISSUES California Parent Nevada IP Holding Co. IP Transfer License Back Services Income Employees Admin, legal and commercial Registrations, enforcement R&D, commercialization

STATE TAX ISSUES California Parent Nevada IP Holding Co. IP Transfer License Back Services Income Establishing IP Holding Co: Sub establish a substantial, independent presence in State S, with separate address, telephone, staff, etc Sub’s directors & officers should be different from Parent’s Observe corporate formalities Sub should execute / perform contracts in State S, with State S law governing Parent & Sub should structure licenses in an arm’s length fashion Sub should seek to license its IP to third parties as well as to its affiliates Sub should perform and pay for all maintenance of its IP Prepare to defend tax treatment Other intercompany pricing agreements that reflect additional value added by Sub

CAPITAL GAIN UNDER SECTION 1235 Allows patent “holder” to obtain long-term capital gains treatment regardless of holding period, the method of payment, and the status of the inventor as a professional; could potentially apply to trade secrets or other patentable know-how Requirements Available to “holders” – meaning either the individual who (1) created the patent or (2) acquired an interest therein prior to reduction to practice; look-through for LLC ownership Must transfer “ all substantial rights ” “ Patent” means a patent granted under domestic law, or any foreign patent granting rights generally similar to those under a United States patent; not necessary that patent or application be filed Not available in (1) transfers to “related parties” (25% threshold) or (2) “hired to invent” scenarios

R&D PARTNERSHIPS LDL Research & Development II, Ltd. Partnership had no real prospect of exploiting technology Developer relied on to conduct technology business Only possibility that partnership would ever act Kantor v. CIR Partnership must have realistic possibility of entering its own business Prospect of entering business must be shown at time of expenditure Option to acquire exclusive rights for nominal sum Lack of Capability to enter business Scoggins v. CIR Developer had significant cost option to acquire IP Partnership was capable of developing business if developer did not

R&D PARTNERSHIPS SCOGGINS PARTNERSHIP Partnership or LLC Investors Inventor Option to Buy Non-Exclusive License Shareholders Operating Corporation Tax Advantaged Structure R&D Deductions Capital Gain Treatment Bankruptcy Remote Partnership Liability Protection

ASSOCIATED PATENTEES CHARACTER CONVERTER R&D Partnership “ Sale” of Patent Contingent Payments Developer Corporation Associated Patentees, Inc. : current deduction for payments based on patent’s use or production

IP HOLDING COMPANY STRUCTURES Optionees Founder Preferred Shareholder FOREIGN COMPANY HOLDS IP US Sales US Company 100% Contract R&D Service Fees Local Distributors Products Tax Haven Company w/ Technology Service Fees Contract Manufacturing [PRC] Manufacturer

IP HOLDING COMPANY STRUCTURES US Sales US Company with Technology Contract R&D Product sales 100% Royalty Tax Haven (HK Office) Technology License 100% Products Service Fees Contract Manufacturing (or License) PRC Manufacturer 100% Local Distributors Local Sales DOMESTIC COMPANY HOLDS IP

CLIENT PARTNERSHIP WITH ATTORNEY Inventor Attorney Infringement Claims Legal Services Patent Infringement LLC Litigation Proceeds Defendant Generally, legal expense deduction limited by (1) 2% floor on AGI, (2) alternative minimum tax and (3) itemized deduction phase out Structuring the relationship as a client-attorney partnership may eliminate the client’s tax on the portion paid to the attorney; in a partnership, the client’s gross income will not include legal expenses Can be useful in prosecution of patent infringement claims

CLIENT PARTNERSHIP WITH ATTORNEY Partnership Formalities An Agreement; Conduct of the parties in execution of its provisions; Statements of the parties; Testimony of disinterested persons; Relationship of the parties; Respective abilities and capital contributions of the parties; Actual control of income and purposes for which it is used; and Other facts showing the true intent of the parties (file partnership return). Other Issues Federal tax law determines existence of partnership (not State) State rules of professional conduct (conflicts, partnership with non-attorney) Control of the case

Section 409A Issue Section 409A Issue IP transfer distinguished from services agreement - Boulez v. Comr. , 83 T.C. 584 (1984). Ownership rights are essential in a transfer of IP.

NEW DEVELOPMENTS 2010 Small Business Jobs Act September 27, 2010, President Obama signed into law the Small Business Jobs Act of 2010. The Act doubled the Section 179 immediate deduction for certain new property placed in service during 2010 and 2011. The Act provides for 50% bonus depreciation on new MACRS property with a recovery period of 20 years or less (and certain computer software) placed into service in 2010. The Act increased the capital gain exclusion to 100% on the sale of qualified small business stock acquired between Sept. 27 and the end of 2010.

NEW DEVELOPMENTS 2010 Tax Extender Bill December 17, 2010, President Obama signed into law the Tax Relief, Unemployment Insurance Reauthorization and Job Creation Act of 2010 The Act reduced the Section 179 immediate deduction for certain new property placed in service during 2012 and subsequent years. The Act provides for 100% bonus depreciation on new MACRS property with a recovery period of 20 years or less (and certain computer software) placed into service in the end of 2010 and through 2011, which rate goes back down to 50% for 2012. The Act extended the capital gain exclusion to 100% on the sale of qualified small business stock acquired during 2011. The Act extended the Research Credit through 2011. The Act extends many energy related provisions through 2011.

NEW DEVELOPMENTS IRS – Uncertain Tax Positions December 17, 2010, the IRS released final regulations (T.D. 9510) that allow the IRS to require that certain taxpayers file a schedule disclosing “uncertain tax positions” with their tax returns. The filing requirement will apply to taxpayers based on their asset values, as follows: 2010 – larger taxpayers (assets in excess of $100 M); 2012 – medium taxpayers (assets in excess of $50 MM); 2014 – smaller taxpayers (assets in excess of $10 MM). The IRS disclosure requirement is similar to the disclosure requirement under Financial Accounting Standards (FIN 48). Disclosures will be detailed, and will contain – (i) ranking of size of uncertain positions, (ii) the Code section(s) implicated, (iii) the years applicable, and (iv) statements about the income, gain, loss, timing, valuation, and basis relevant to the uncertain position.

CHARITABLE CONTRIBUTIONS Charitable Contributions of Intellectual Property Section 170 No partial interest, Rev. Rul. 2003-28 Deduction limited to lesser of (i) value or (ii) basis of IP, see Section 170(e)(1)(B)(iii) Additional deductions for qualified donee income received with respect to the contributed property, see Section 170(m)

www.rroyselaw.com PALO ALTO 2600 El Camino Real Suite 110 Palo Alto, CA 94306 SAN JOSE 10 Almaden Blvd. Suite 1250 San Jose, CA 95113 LOS ANGELES 10900 Wilshire Blvd. Suite 300 Los Angeles, CA 90024 SAN FRANCISCO 155 Sansome Street Suite 500 San Francisco, CA 94104

Tax issues in technology transactions

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Tax issues in technology transactions