Clients rely on our integrated Intellectual Property & Tax Counseling team to address the tax and IP issues that arise from many scenarios involving the ownership and licensing of patents and other IP assets by affiliated companies. The following describes a few such scenarios.

Licensing Structures Used in the Manufacture and Sale of IP-Protected Products. A common issue often addressed by Mayer Brown Intellectual Property & Tax Counseling team is the cross-border licensing of intellectual property covering products that are sold 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 through intercompany licenses, cost sharing arrangements, and other related-party transactions subject to tax rules involving transfer pricing. For example, one tax strategy might be to place the legal ownership of all corporate intellectual property in a non-US affiliate, leaving licenses to make and sell products with US and other affiliates.

• 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.