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Federal Taxation of Intellectual Property Transfers

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Federal Taxation of Intellectual Property Transfers bridges the gap between intellectual property law and tax law by explaining how to achieve capital gains tax treatment for licensing agreements.

Federal Taxation of Intellectual Property Transfers bridges the gap between intellectual property law and tax law by explaining how to: achieve capital gains tax treatment for licensing agreements; deal with the "sale" requirements for capital gains taxation; qualify for safe harbors; avoid the pitfalls inherent in copyright transfers; and determine when patents, trade secrets, trademarks, copyrights and other intellectual properties qualify as capital assets. This tax-planner's tool also discusses judicial and legislative developments as they relate to capital assets sold or exchanged and provides a full analysis of amortization deduction rules and recovery of acquisition costs.

Book #00597; looseleaf, one volume, 612 pages; published in 1986, updated as needed. 
ISBN: 978-1-58852-036-4

Additional Information
Division Name Law Journal Press
Volumes 1
Product Types Books
Brand Law Journal Press
Jurisdiction National
ISBN 978-1-58852-036-4
Page Count 0
Edition 0
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Fed Tax IP Chapter
(Size: 292.7 KB)

§ 1.01 In General
§ 1.02 Inventor’s Needs
§ 1.03 Congressional Policy

The Statutory Scheme

§ 2.01 Regular Capital Gains Provisions
§ 2.02 Safe-Harbor Capital Gains Provisions
§ 2.03 Treatment of Losses
§ 2.04 Drafting Suggestions

Basic Patent Law Concepts

§ 3.01 Authority to Issue Letters Patent
§ 3.02 Statutory Bars
§ 3.03 Non-Obviousness
§ 3.04 Negative Rules of Patentability
§ 3.05 The Patent Application
§ 3.06 Patent Infringement
§ 3.07 Patent Rights and Transfer Rules
§ 3.08 Title
[1] Nature
[2] Transfers: Assignment v. License
§ 3.09 Assignments
[1] Nature and Requirements
[2] Form and Recording
§ 3.10 Licenses
[1] Nature and Requirements
[2] Shop Rights
§ 3.11 Royalties

Regular Capital Gains Sections

§ 4.01 In General
§ 4.02 Capital Asset Status
§ 4.03 Qualification as “Property”: Patents
§ 4.04 Compensation for Services
§ 4.05 Ancillary Services and Intangibles
§ 4.06 Inventory-Type Property
§ 4.07 “Trade or Business Property”
§ 4.08 Holding Period
§ 4.09 Improvements

The “Sale” Requirement: Major Factors

§ 5.01 Introduction
§ 5.02 Assignment v. License
§ 5.03 The “Substantial Rights” Standard
§ 5.04 Duration
§ 5.05 Mode of Payment
§ 5.06 Fragmentation of Patent Rights
§ 5.07 Geographic Limitations
§ 5.08 Field-of-Use Limitations
§ 5.09 Less Than All Claims Transferred
§ 5.10 Prior Transfers
§ 5.11 Undivided Interests
§ 5.12 Charitable Contributions

The “Sale” Requirement: Other Factors

§ 6.01 Construction of Agreement
§ 6.02 Terminology and Form
§ 6.03 Legal Title or Security Interest
§ 6.04 Payment Terms
§ 6.05 Termination by Transferor
[1] At Will
[2] On Default
§ 6.06 Best Efforts Requirement
§ 6.07 Restrictions on Assignment
§ 6.08 Restrictions on Sublicensing
§ 6.09 Participation in Infringement Litigation
[1] Bringing Actions
[2] Defending Actions
§ 6.10 Termination by Transferee
§ 6.11 Licenses-Back
§ 6.12 Miscellaneous Rights

The “Sale“ Requirement: The Rogue Doctrines

§ 7.01 Introduction
§ 7.02 Controlling Interest in Transfer Negates Sale
§ 7.03 “Pig Theory” Negates Sale
[1] Introduction
[2] Aggregate of Retained Rights
[3] Total Factual Complex
§ 7.04 Operational Control of Transferee’s Business

Trade Secret and Know-How Transfers

§ 8.01 Introduction
§ 8.02 Definitions: Trade Secret and Know-How
[1] Trade Secret
[2] Know-How
§ 8.03 Capital Asset Status: Not Services
§ 8.04 Capital Asset Status: “Property”
§ 8.05 Capital Asset Status: Secrecy
§ 8.06 Capital Asset Status: Novelty
§ 8.07 Know-How: Non-Secret Information Incidental to Transfers of Other Property
§ 8.08 Know-How: Non-Secret, Non-Incidental Information
§ 8.09 The “Sale” Requirement

Trademark, Service Mark, Trade Name, and Franchise Transfers

§ 8A.01 Introduction
§ 8A.02 Definitions: Trademark, Service Mark, Trade Name, Franchise
§ 8A.03 Section 1253: In General
§ 8A.04 Section 1253: Contingent Payments Received by Transferor
§ 8A.05 Section 1253: Significant Power, Right
Joseph E. Olson
Professor Olson teaches at the Hamline University School of Law in St. Paul, Minnesota.

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