Académique Documents
Professionnel Documents
Culture Documents
International Cross-Border
I.P. Strategies
Sept 6, 2003 2
Global Business Context
Sept 6, 2003 3
Intellectual Property Rights
Sept 6, 2003 4
Intellectual Property Rights
Patents
Trade Secrets
Copyrights
Maskworks
Trademarks
Sept 6, 2003 5
Patents
Sept 6, 2003 6
Trade Secrets
No registration process
Sept 6, 2003 8
Maskworks
Sept 6, 2003 9
Trademarks
Sept 6, 2003 10
Protecting Software / Data
Sept 6, 2003 11
US Patent Practice
First-to-invent rule
Export controls
Sept 6, 2003 12
Other Intangible Assets
Franchises
Governmental permits
Informational base
Business goodwill
Sept 6, 2003 13
US Tax Practice
Business Development Expense §174
Sept 6, 2003 14
Offshore Motivation
Globally-competitive development,
manufacture, sales, or partnerships
Sept 6, 2003 15
Strategic Options
Sept 6, 2003 16
Offshore Development
Sept 6, 2003 17
Offshore Transfer
Sept 6, 2003 18
Key Planning Objectives
Sept 6, 2003 19
Applicable Tax Regime
Sept 6, 2003 20
Transfer Pricing
Sept 6, 2003 21
Foreign Corporations
Sept 6, 2003 22
CFC Rules
Sept 6, 2003 23
IP Contributions
Exceptions:
– Active trade / business by foreign corporation
– Domestic stock transfer, gain recognition
agreement
– Foreign stock transfer, corporate reorganization
Sept 6, 2003 24
Valuation Methods
Excess operating or premium profits
Premium pricing
Market comparison
Replacement cost
Sept 6, 2003 25
Inbound / Outbound Issues
Sept 6, 2003 26
Sale vs. License
IP grant Arbitration
Improvements Language
Currency Political risk
Inflation rates Travel expense
Withholding tax Product liability
Exchange controls Indemnification
Royalties Applicable law
Sept 6, 2003 28
Country Selection
Entitystructure
Funding type
Formation time, documentation
Shareholding meetings
Taxation
Foreign authority information exchange
Sept 6, 2003 29
Cayman Islands
Entity structure: Company unit trust ltd, partnership
Holding
Company
Foreign
Subsidiary
Sept 6, 2003 35
Offshore Company Set-up
US
US Company sets-up
Company Holding Company in
low-tax/treaty(no-
withholding) jurisdiction,
limit US control/interest
Holding
Company
File IP appropriately for
offshore protection,
Foreign
enforceability
Subsidiary
Sept 6, 2003 36
Offshore IP Transfer
Holding Company pays
US
Company US Company for fair-
market-value stake in IP
intangibles
Holding
Company
Cost-sharing agreement
for IP co-development,
financing by US and
Holding companies,
Foreign jointly-owned per
Subsidiary relative contributions
Sept 6, 2003 37
Offshore Subsidiary Licensing
Holding Company
US
Company licenses IP to Foreign
Subsidiar(ies) to collect
royalties from
customers in other
Holding jurisdiction(s)
Company
US Company receives
royalty portion in US
Foreign and accumulate portion
Subsidiary offshore, actively
licenses IP from
Sept 6, 2003
Foreign Subsidiary 38
Offshore Tax Benefits
US Company receives
US
Company tangible asset as
payments on balance
sheet for sale of
intangible IP
Holding
Company
US Company deducts
license to use intangible
asset, may defer
Foreign income repatriation to
Subsidiary tax-efficient time
Sept 6, 2003 39
dennis@iploft.com
Sept 6, 2003 40