Overview

Our integrated Intellectual Property & Tax Counseling team addresses the tax and IP issues arising from many scenarios involving the ownership and exploitation of patents and other IP assets by affiliated companies. The following describes a few such scenarios.

Structures Used in the Sale (or Licensing) of Product Intangibles. A primary focus of the Mayer Brown Intellectual Property & Tax Counseling team is the cross-border licensing of intellectual property covering products that are manufactured for sale to related and unrelated parties. Because intellectual property is inherently mobile, a tax planning strategy for a multi-national company often involves the migration of intellectual property, which gives rise to issues involving intercompany licenses, cost sharing arrangements, and other related-party transactions subject to tax rules related to transfer pricing. For example, in some cases, a tax strategy will place the legal ownership of all corporate intellectual property in a non-US affiliate, with licenses to US and other affiliates to make and sell products.

Experience

  • Designed cross-border licensing structure and drafted related inter-company license agreements for a multi-national medical device company focused on the manufacture and sale of medical devices in the U.S., Canada, South America, Asia, the Middle East, Europe and Africa.
  • Designed cross-border licensing structure and drafted related inter-company license agreements for a top 20 global pharmaceutical company focused on the manufacture and sale of pharmaceutical products in the U.S., Canada, South America, Asia, the Middle East, Europe and Africa.
  • Designed cross-border licensing structure and drafted related inter-company license agreements for a global technology company focused on travel booking in the U.S., Canada, Japan, and Europe.
  • Designed cross-border licensing structure and drafted related inter-company license agreements for a leading designer, developer and global supplier of broad range of analog and digital semiconductor connectivity solutions.
  • Designed cross-border licensing structure and drafted related inter-company license agreements for a global communications technology company.
  • Drafted inter-company license agreements For a multinational corporation that designs, manufactures and distributes engines, filtration and power generation products.
  • Revised employment agreements in multiple cross-border jurisdictions for a multi-national medical device company.
  • Revised employment agreements in multiple cross-border jurisdictions for a multi-national pharmaceutical company.

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