Federal Income Taxation of Patent and Know-How Transfers

An individual taxpayer's maximum tax rate on ordinary income is fifty percent, while his maximum tax rate on long-term capital gains is only twenty percent as a result of the deduction from gross income allowed for a portion of such gains. Consequently, proper tax planning in the preparation of licensing agreements may result in the receipt of the proceeds of the license being taxed at favorable capital gains rates. Since the late 1970's, the tax law governing licensing agreements for intellectual property has become settled. As most licensing agreements are prepared by intellectual property specialists rather than by tax practitioners, a safe channel through the “rocks and shoals” of the tax law must be carefully plotted. Through careful planning and draftsmanship it is possible to guarantee sale treatment and the resulting taxation at capital gains rates for virtually any transaction. Without planning, however, a neglected word or a seemingly innocuous provision may defeat efforts to achieve the desired tax result. In part, this trap for the unwary is due to overly technical requirements based on archaic case law, a failure to clearly identify the patent “property,” and poorly reasoned opinions that have ignored both precedent and basic concepts. Further complication arises from statutory overlap in this area. Capital gains treatment for patent transfers may be obtained under Internal Revenue Code sections 1221 and 1222, under section 1231, and under section 1235. This article will focus on the application of the regular capital gains provisions to transfers of intellectual property, and more specifically to patent rights and know-how