Got IP? Get out. For investors thinking of selling, acting in the next few days is critical.

taxAs of the date of this publication, the US House of Representatives and the Senate have passed the “Tax Cuts and Jobs Act” as reconciled by the conference committee. Now that the President has signed the Republican tax bill into law, IP owners may find the tax bill will impact sales of certain intellectual property.

Originally, the US House of Representatives passed its version of the bill on November 16, 2017 (the “House Bill”), which included a provision that would significantly impact the sale of intellectual property. The original corresponding legislation passed by the US Senate (the “Senate Bill”) did not have a similar provision. The reconciled bill generally takes the position of the original House Bill. The legislation was signed into law by the President, with the Tax Cuts and Jobs Act taking effect on January 1, 2018.

The effect of the bill is currently unclear, however, because as drafted the provision creates a clear conflict, it is likely that the Conference Committee’s bill (the “Conference Bill”) will result in the sale of certain intellectual property being taxed at ordinary income tax rates, instead of capital tax rates. Interested taxpayers should take action by the end of the year if: (1) they hold the rights to a self-created patent, invention, model or design, secret formula or process, and (2) are looking to monetize the asset in the near future.

New laws that could affect your disposition of intellectual property as certain self-created property no longer to be treated as a capital asset

Current law:

Currently, a self-created patent, invention, model or design (whether or not patented), or secret formula or process is treated as a capital asset. Thus, any gain or loss recognized as a result of a sale, exchange, or other disposition of the property is taxed at the capital gains rate, a rate more favorable than ordinary income tax rates, provided an asset is held for more than a year. In addition, a creator of musical compositions or a taxpayer who holds a copyright in musical works created by their personal efforts may elect to treat that property as a capital asset.

Prior to the actual commercial use of a patent, both an individual who creates a patent and an unrelated individual who acquires a patent from its creator may treat any gains on the transfer of the patent as long term capital gains. In order to qualify, the transfer must be of substantially all of the rights to the patent and cannot be by gift, inheritance, or devise.

House Tax Bill:

The House of Representative’s version of the Tax Cuts and Jobs Act (H.R. 1) amends I.R.C. Section 1221(a)(3) to exclude certain patents, inventions, models or designs, and secret formulas or processes from the definition of “capital assets.” Thus, any gain or loss from the disposition of a self-created patent, invention, model or design, or secret formula or process will be subject to ordinary income tax rates rather than capital tax rates. However, creators of musical compositions and copyrights in musical works will continue to be able to elect to treat such self-created property as capital assets.

Furthermore, the rule under IRC Section 1235, which allows creators of patents or those who have acquired the patent from its creator to treat the transfer of the patent as a capital asset, would have been repealed and transfers of a patent by the creator would be taxed according to ordinary income tax rates.

How does this reconcile with the Senate Bill from December 1st, 2017?

The Senate Bill does not contain provisions amending IRC 1221(a)(3) and 1235. Since the Senate and House passed two separate and distinct tax bills, a temporary conference committee was created to resolve the difference between the two bills. The committee is tasked with creating one tax bill to send to both chambers for final approval and vote before a final bill is sent to the President for signature. There are specific rules on how the committee can compromise on areas of disagreement. Both the Senate and House leaders chose members to be on the committee that will negotiate the provisions of the tax bill. The House’s committee consists of nine Republicans and five Democrats and the Senate’s committee consists of seven Democrats and eight Republicans.  See Conferees to the House-Senate Conference Committee for the Tax Cuts and Jobs Act, U.S. H.R.,  for a full list of leaders named to the House and Senate’s conference committee.

On December 15, 2017, the conference committee completed its first task, reconciling the two tax bills into one tax bill. The next step is for each chamber to approve the Conference Bill. In this instance, because the House requested the conference committee first, it has the opportunity to approve the Conference Bill or send the bill back for further negotiations. If the House accepts Conference Bill then the Senate can either accept it or reject it, however, the Senate is not permitted to send it back for further negotiations. If both the House and Senate accept the Conference Bill then both the House and Senate vote on it. The House passed the Conference Bill along party lines on December 19, 2017.

Conflict in the Conference Bill:

The Conference Bill follows the House Bill and would include self-created patents, inventions, models or designs (whether or not patented), or secret formulas or processes under IRC 1221(a)(3), which lists the types of assets that are not capital assets. Since the above listed assets would be excluded from the definition of capital assets, they would no longer receive capital tax rate treatment, which is more favorable, and instead would be subject to ordinary income tax rates.  However, the provision under IRC 1221(a)(3) only applies to taxpayers whose efforts created the property.

The Conference Bill did not follow the House Bill with regard to IRC 1235. Thus, as currently drafted, IRC 1235 remains in effect and the Conference Bill would continue to allow holders of patents to treat the sale of the patent as a sale or exchange of a capital asset held for over a year. A holder is defined as (1) an individual whose efforts created the patent, or (2) an individual who has acquired the patent for consideration paid to the creator prior to its commercial use. Thus, transfers of patents by holders, as defined above, may be treated as a sale or exchange of a capital asset subject to long term capital tax rates.

The Conference Bill would result in a conflict between IRC 1221(a)(3) and IRC 1235. The Conference Bill amends IRC 1221(a)(3) and results in ordinary income tax treatment on gains or losses from the sale of self-created patents, inventions, models or designs (whether or not patented), or secret formulas or processes by a taxpayer, whose personal efforts created the property. Transfers of such self-created property by creators will no longer be treated as capital assets subject to capital tax rates. On the other hand, IRC 1235 allows holders of patents, which includes individuals whose personal efforts has created the patent, to treat the sale as a sale or exchange of capital asset. This is in direct conflict with the Committee Bill’s version of IRC 1221(a)(3). Therefore under the Committee Bill, as currently drafted, it is unclear whether the sale of a patent by a taxpayer whose personal efforts resulted in the creation of the patent will be subject to long term capital gain rates as under IRC 1235 or ordinary income tax rates as stated in IRC 1221(a)(3) of the Committee Bill.

Despite the lack of clarity with respect to the treatment of a sale of a patent by its creator, the Committee Bill is clear on the tax treatment of individuals who later acquire the patent for consideration. Under the Committee Bill, taxpayers who pay consideration for a patent from the creator, prior to commercial use, and later sell that patent are able to treat that sale as a sale of a capital asset under IRC 1235. Therefore, the sale of a patent by someone who acquired the patent in exchange for consideration will receive capital gain treatment for the sale of the patent rather than ordinary income tax rates.

In addition, the Committee Bill is also clear on the tax treatment of sales by a taxpayer whose personal efforts created an invention, model or design (whether or not patented), or secret formula or process. Under the Committee Bill, such taxpayers will no longer receive capital gain rates on the sale of the asset and instead the sale will be subject to ordinary income tax rates.

What does this mean for me?

Given that the Committee Bill directly contradicts itself with respect to the tax treatment of the sale of patents by taxpayers whose personal efforts created such property, it is unclear how this Bill will be implemented. It is unclear how gains or losses on a sale of self-created assets by a taxpayer who created a patent will be treated.

However, if you created an invention, model or design (whether or not patented), or secret formula or process, now is the time to act. The sale of such self-created assets by creators will no longer receive capital asset treatment. Therefore, the January 1, 2018 deadline for the proposed provision leaves a limited window of time for taxpayers who wish to benefit from the existing law to do so, since a sale of the above listed assets will be taxed at the ordinary income tax rates, which could result in a tax of up to 37% (compared to a tax of up to 20% for assets subject to long term capital gain rates).

In addition, while corporations do not benefit from reduced capital gains rates, trusts do. Depending on the tax status of their owners, income flowing through tax transparent entities (including S Corporations, LLCs, LPs, and other partnership type vehicles) may also benefit from reduced capital gains rates.

The implications of the Committee Bill is best illustrated by the following example: Fred Watson is the creator of a new soda formula that has not yet gone to market. Fred is considering selling the formula to an international corporation. If Fred sells the formula on December 31, 2017 for $10 million, the formula will be considered a capital asset and taxed at long term capital gain rates. In this case, Fred would pay up to $2 million in taxes on the $10 million sale. If Fred sells the formula on January 1, 2018, Fred could pay up to $3.7 million on the same transaction; paying double the taxes!  Imagine, Fred would have taken home $1.7 million more if he had managed to close just one day earlier without the purchaser being out of pocket an additional penny.

Frankly, the delay better be worth the cost.  For some inventors, this tax result may drive the sale.  It is hard to increase the value sufficiently, find a better buyer or to negotiate a sufficiently better deal to overcome the tax drag

Current ordinary & capital rates for taxpayers married filing jointly:

The following table illustrates the different tax rates that a creator considering selling their invention, model or design (whether or not patented), or secret formula or process will incur if the proposed law explained above is enacted, starting in 2018. For example, a person who created a formula that is in the highest income bracket will pay a 20% tax on the sale of a formula if the sale takes place before January 1, 2018. However, if the sale takes place on January 1, 2018 the creator will be taxed at a 37% rate (provided the proposed law is passed).

Accordingly, the ultimate tax cost will vary based on the magnitude of the sale and the income level of the inventor.  However, in the new year, the main winner will be the US government.

The Author

Steven Moore

Steven Moore is a Partner with Withers Bergman. He focuses on intellectual property enforcement and defense, including court and administrative action – patent office proceedings (ex parte patent reexaminations, inter partes patent review, trademark oppositions) and ITC. Steven is also experienced in procurement, licensing, due diligence and counseling, involving diverse intellectual property issues including advertising compliance, anti-counterfeiting, copyrights, domain names, grey goods, patents (utility and design), privacy and data protection, trade dress, trade secrets and trademarks.

For more information or to contact Steven, please visit his Firm Profile Page.

Steven Moore

Aaron Schumacher is a Partner with Withers Bergman. He advises on international and domestic income and estate tax planning, federal income tax practice and procedure and was based in the Withers Geneva office from 2010 - 2014. Aaron advises on issues relating to tax structuring for investments or companies into the US, tax compliance matters (domestic or international) as well as on international estate and trust related issues.

For more information or to contact Aaron, please visit his Firm Profile Page.

Steven Moore

Shannon Smith-Retzke is a Partner with Withers Bergman. She represents clients in sensitive tax matters, many of which involve negotiations with government agencies. Shannon provides clients with advice on a broad range of tax, trust, estate, and business planning issues. Her work involves planning for wealthy US and international families, with particular emphasis on planning for closely held businesses. Shannon’s planning work for clients involves a range of matters, from creating tax-efficient wealth transfer structures to addressing income tax issues arising from investments and operating businesses. She has advised prominent politicians, business people and well known athletes. She is known globally as one of the go-to attorneys for individuals with US tax or reporting issues and has represented clients from over 20 countries in the last year.

For more information or to contact Shannon, please visit her Firm Profile Page.

Steven Moore

Wonchi Ju is an Associate with Withers Bergman. She focuses on domestic and international tax planning for individuals and closely held businesses.

For more information or to contact Wonchi, please visit her Firm Profile Page.

Steven Moore

Ashley Slisz is an Associate with Withers Bergman. She focuses on tax and estate planning for high net worth individuals and their families.

For more information or to contact Ashley, please visit her Firm Profile Page.

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 12 Comments comments.

  1. LLDC December 23, 2017 7:51 am

    How many people did it take to write this article? It’s not accurate. Most inventors sell the invention as part of a company or LLC. Then, the gains are not taxed as income. You completely missed the mark on the most common way inventors market and sell their inventions.

  2. Tom Adams December 23, 2017 12:34 pm

    LLDC, Thanks for your comment, for the article did not address my concern. My situation is in line with your comment in that I, the inventor, assigned the IP rights of two technologies to the LLC that was created to own, test, and obtain domestic and international patents. Now the LLC is about to license the IPs to another company or to sell the two IPs or the company – the IPs being the LLC’s only assets – so I hoping to see an article that addresses, as you state, ” the most common way inventors market and sell their inventions.”

  3. angry dude December 23, 2017 10:16 pm

    LLDC@1

    “Most inventors sell the invention as part of a company or LLC. Then, the gains are not taxed as income”

    Then how are they taxed if you sell your company for cash, not stock, and put that cash in your US bank account ???

    But the whole article is just inconsequential bs
    In other words, who cares ?

  4. Jim C December 24, 2017 5:47 pm

    My situation is that I have licensed product designs to manufactures who, in turn, pay royalties based on sales. Will this income now be subject to regular income rates?

  5. Michael Patent December 24, 2017 7:08 pm

    I am so glad to see these comments. My plan was always to sell my patent through my LLC. Currently, the patent is owned by me personally though. Do I need to transfer ownership of the patent to my LLC before the new year to be taxed at capital gains rates?

  6. Ghost of E. Scrooge December 26, 2017 10:03 pm

    No free tax advice on this site.

  7. Damien December 28, 2017 12:51 pm

    @Micheal Patent “Do I need to transfer ownership of the patent to my LLC before the new year to be taxed at capital gains rates?” No…. to be taxed at capital gains, you need to license ALL OF THE RIGHTS OF YOUR PATENT. In other words, the only royalties that are capital gains are those from licenses where you are no longer the sole stakeholder.

    If you are simply transferring the patent to your own LLC, that is not a complete divestment of your patent rights. Tax law: https://www.law.cornell.edu/uscode/text/26/1235#

    Case specifically dealing with this issue: https://www.thetaxadviser.com/issues/2014/dec/tax-trends-02.html

  8. After Final December 28, 2017 6:49 pm

    Basically, I tell my clients their expenses for R&D and filing a patent application should be deductible as business expenses, but that I am no tax expert and this is not tax advice, seek advice from your accountant.

    As a practical matter, I think it then makes sense to tax originators of IP at individual tax rates, since some of their expenses would have been deducted at the business level. It also makes sense to tax holders other than originators at capital gains tax rates, since they did not have any deductions in generating the IP (and who would buy IP other than as a capital asset?)

    Just my 2 pesos.

  9. angry dude December 31, 2017 4:05 pm

    After Final@8

    Dude,

    what a screwed up perspective !

    Tax IP originators (aka individual inventors) at higher rate than the subsequent holders of patent rights ??? R U out of you mind ???

    and who would buy IP anyway ?

  10. Damien January 1, 2018 5:52 pm

    @angry dude “Tax IP originators (aka individual inventors) at higher rate than the subsequent holders of patent rights” It has nothing to do with whether they are inventors or not…. it has to do with whether the asset (the patent) falls under the definition of a capital asset to be taxed as such.

    Until all of the rights of the patent are assigned or transferred, the patent is simply NOT a capital asset and therefore income from it cannot be taxed at capital rates. Its not a punishment for patent inventors…. though im sure most authors on this site would hyperbolically disagree.

  11. angry dude January 3, 2018 12:19 pm

    Damien@10

    BS, dude

    patent is originally assigned to its true inventor

    what you are advocating is complete unworkable bs cause I can easily create LLC or Corp and assign my patent to it – then what ?
    Now it’s a capital asset ???
    Just an easy and obvious loophole, unworkable as a policy
    And YES, it is a punishment for independent inventors, dude

  12. Damien January 5, 2018 11:32 am

    @angry dude lol…. fp…. “what you are advocating is complete unworkable bs cause I can easily create LLC or Corp and assign my patent to it – then what ?
    Now it’s a capital asset ???”

    No…. as I said, a patent only becomes a capital asset once ALL OF THE PATENT RIGHTS are transferred. If you simply transfer the patent to a LLC that you control then you have not truly transferred ALL (or mostly all) the rights. I LITERALLY provided you a case where this is exactly what happens (transfer patent to LLC that inventor is in control of) and IRS found that because it was to his own company it was not a complete divestment and therefore did not become a capital asset. Please take time to actually read things before responding.

    “And YES, it is a punishment for independent inventors, dude” No… its not. Its negative for inventors, but that doesnt mean its a punishment. This treats patents THE SAME as all other intangible assets…. they DO NOT become capital assets until they have been fully divested. It has nothing to do with the inventor status.

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