IP Offshoring: The Pros, Cons and Potential Cost Savings

globes-business-silhouetteOver the past several decades, companies have taken advantage of technology like telephones and the internet to greatly increase international operations. This has led to developing and exploiting more intellectual property offshore.  When services are not performed for a company in the United States, it is called “offshoring.” It considers the “where” services will be performed. This is different from “outsourcing” which considers the “who” will provide the services to the company. They are not performed by the company, but by a third party and may be done domestically or offshore. Offshoring is considered a subset of outsourcing.

There are two main business strategies of offshoring, called the captive form model and independent contractor model. The captive firm model is when a company hires their own employees and managers in the foreign country, train the local people and have exclusion control and responsibility over those people. The foreign entity works for the single firm and requires a very large investment and the liability falls on that firm to open the office. As a result, the firm has greater control over the people and personnel, training, and confidentiality.

In the independent contractor model, there is almost no commitment from the domestic firm because the work is done by an independent contractor who usually accepts work from multiple parties.

An example of offshoring is when assets like IP are held in a foreign jurisdiction, often with a lower or zero worldwide income tax rate. As an IP strategy, the process is relatively simple: incorporate an offshore company and then transfer to it the title to the IP with the right to sub-license and exploit in other countries. The new offshore holding company can then receive franchise fees and royalty payments from, for instance, the US parent company, accumulating income in that low-tax jurisdiction.


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When a company is deciding where to offshore, it should match the operational goals of the company to the location being exploited. This simply means that if the company has ownership rights in Europe they would likely want to transfer them to a European IP company. Additionally, it may not be enough that a country is a signatory to TRIPS, since that agreement only provides the minimum standards for protection and typically enforces the national laws of the foreign country. Other considerations will come into play.

Some advantages to offshoring include lower taxes, increased confidentiality and a lower capital requirement. However, to achieve these benefits significant planning is required to avoid pitfalls like double taxation, illegality and incompatible foreign laws.

Taxes: One of the most beneficial advantages to offshoring is minimizing taxes. Non-resident companies can often be tax exempt or get lower levels of taxation. Yet, foreign governments may require a tax ruling to get the favorable breaks. Often the IP has to be exploited and maintained – meaning developed and marketed — within the foreign country. On the down side, double taxation occurs when revenues, let’s say royalty payments, are taxed in the offshore jurisdiction and are also subject to withholding taxes in the domestic country. As a result, they are taxed in both countries. One solution to this problem would be to incorporate the offshore holding company in a country with a double tax treaty network where dual resident companies pay taxes in only one country, such as Switzerland, Holland, Ireland, Malta and Luxembourg.

Confidentiality: Another advantage is that in some countries companies are not required to publish financial information or facts about directors and shareholders. A majority of the offshore jurisdictions will not disclose information to third parties unless there is a suspicion of terrorist or criminal activities. Furthermore, many countries have laws that are similar to British law and provides duties on the employees with penalties for misappropriating information. Unfortunately, however, when confidential information is sent to a non-U.S. attorney who is not subject to U.S. privilege law, the action could be considered a waiver of privilege or confidentiality. This is particularly the case with the independent contractor model when the independent contractor has access to confidential technology and is highly motivated with no legal requirement to preserve secrecy.

Costs: Costs can also be reduced with an offshore strategy. Although the IP company would need to have employees maintaining, improving and exploiting the IP, the staff or physical office costs may be less, minimizing overhead and expenses. For example, work can be billed at a lower rate of $30/hour in India as opposed to $300/hour for a junior associate in the United States. This can free up scarce domestic resources, like attorneys who have hefty workloads. Also, setting up an offshore company can be relatively fast and easy, and usually registration costs are less than in the domestic country. Furthermore, having these employees typically satisfy treaty residence requirements that permit reduced withholding tax rates on royalties, dividends and interest.

Legality: Another hazard to avoid is ensuring the offshoring strategy is not illegal. High-tax countries, like the United States, monitor offshore jurisdiction IP dealings and it is obvious to them when the main goal of the company is to save on taxes. The domestic company must pay royalties at an arm’s length (what a hypothetical, independent third party would pay) so if it charges royalties in excess to the lower taxed holding company, it may be illegally reducing the tax base of the higher-tax domestic jurisdiction. This may be mitigated if the offshore company is made a foreign partner or financial supporter during the creation of new IP which would allow it to register as an owner or co-owner. If the offshore holding company does not participate in the creation of the IP and later buys or becomes an assignee, transfer pricing regulations may apply which requires a fair market price and the possible payment of capital gains taxes.

Additionally, when using an offshoring strategy, the company may not use the IP as though it were still in the domestic country because the holding company is considered an independent business entity. This means that the domestic company should look to see what the offshore country laws require. For instance, several countries have compulsory licensing laws, which could force a patent owner to grant licenses to third parties with terms and conditions mandated by the foreign state.

Quality: Another consideration is the quality of the work product of foreign labor. For instance, when it comes to patents, every word in the patent can matter and could have an effect in enforcing it. One way to ensure a positive outcome would be to make certain the labor is properly trained and that their work is then carefully reviewed by a U.S. attorney. Finally, from a valuation standpoint, the foreign IP may be perceived as a lower quality product which may not justify the cost savings.

If done properly, an offshore IP strategy can have major benefits. But, a company must carefully consider the pros and cons in order to ensure the potential cost savings, which can be huge.

The Author

Angélique McCall

Angélique McCall is a graduate of Syracuse University College of Law. She has worked as a Patent Examiner Extern at the United States Patent and Trademark Office (USPTO). Angélique also has wide-ranging experience in domestic and international corporate administration. She served as a project manager for scientific microbiological research in cooperation with the United States Department of Agriculture. Angélique holds a Bachelor of Science in Biological Sciences from Virginia Tech in addition to a Masters Degree in Business Administration from Marymount University.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. David Hemperly May 25, 2016 12:26 pm

    Great article Angélique! I’m curious if you, or anyone here, are aware of any outsourcing companies currently in existence that presenting both the option to manage projects on a client’s behalf with that outsourcing firm’s off-shored employees, as well as having option to utilize that same outsourcing firm to build, hire, and train a client’s own dedicated offshore team, with the appropriate security and infrastructure in place whereby that team sits/works separately/independently with no interaction with those other employees doing work for the outsourcing company’s other clients? Thanks in advance, David dhemperly@allcovered.com

  2. Anon May 25, 2016 6:29 pm

    Your “legality” section is missing a critical piece – the export license control system.

  3. Night Writer May 26, 2016 7:04 am

    “a lower rate of $30/hour in India as opposed to $300/hour for a junior associate in the United States. This can free up scarce domestic resources”

    Yes patent attorneys this is true and our jobs are really not that secure. What I am seeing is the slow development of firms in India to replace us. Lots of major corporations play a little trick of hiring people in India and shipping the office action and invention disclosures to them to do and then have an attorney here review it and fix it up a bit. That is becoming very common.

    “This can free up scarce domestic resources …” This one sentence is the death knell of every American worker. The only reason we have not been marginalized like factory workers is some legal protections in place for legal work. For example, if you are an alien you have to reside in the US to practice before the PTO.

    Everyone should be terrified of this. Just one or two little changes and the patent bar would be decimated.

  4. Night Writer May 26, 2016 7:05 am

    @2 Anon indeed it is.

  5. Night Writer May 26, 2016 7:19 am

    By the way, this isn’t coming from me alone. There are many people that say the same thing. Noam Chomsky is one of them that says that our current structure protects professionals and not blue collar workers. That the notion that education is the savior is illusory in that it is only based on the legal protections given professions.

    So, anyway, I think this is a key part of the presidential election. Trump saying that we need more protectionism and Clinton being a believer of the free market system. The reality is that people like Krugman do not defend this trade agreements. It is like deregulation where they simply say it must be true that free trade is better. Clinton is one of those lazy puppets that obeys the pseudo-intellectuals and just smirks that if Krugman believes it then it must be true.

    Anyway, this is at the core of patents too. We have the pseudo-intellectuals (Lemley, who now makes more money invalidating patents) saying that patents are bad–no proof given and contrary to empirical data, but Obama obeys.

  6. Ternary May 26, 2016 12:54 pm

    There is this myth about “quality.” Despite what consumers believe, it is not the purpose of industry to provide the highest quality for the lowest price. The profit principle dictates to provide products and services of the lowest acceptable quality for the highest possible price. The IP community has been experiencing this trend for a while also. In general, companies are not particularly interested in the highest possible quality of patents. The backlash is now being felt with a vengeance.

    “This can free up scarce domestic resources, like attorneys who have hefty workloads.” Especially at $300 (or more) per hour. Clearly, outsourcing is not intended to alleviate the time pressures of patent attorneys, but rather to improve profits and cash-flows. Software and other engineers have been going through this experience for quite a while now, while they are being “relieved” of their workload (nice euphemism, though).

    The financial and MBA types of managers have little grasp of engineering quality, except where it affects profitability. Almost any engineer has experienced idiotic directives from “management” that makes no technical sense whatsoever.

    Industry will continue to look for low cost alternatives in patent prosecution. It is just a fact of life we have to live with. And we will continue to see low quality patents until current invalidation practices finally sink in. I have suggested earlier an “old school” approach of development teams of patent attorneys and patent engineers. This allows spending up to 50 hours on a patent application for about $ 8000 or less. But there is little appetite for that in the legal community. What I most likely see happening, is a European style prosecution: with high technology content and very expensive prosecution cost, at least $15-$20k per. Cheap patents will not be worth anything as they are being invalidated left and right. This will shrink the need for patent professionals, with an increase in cost and quality and an almost complete elimination of independent inventors from the IP landscape. Like Europe, mainly corporate and for the few by the few.