INTERNAL REVENUE CODE - 1999

Patents are all about money - spending money to acquire patents, spending more money to get even more money either as royalties or market share. At each and every step, don't forget the IRS, either in taking deductions for your expenses, or paying taxes on your profits. Your local city library will have a complete copy of the Internal Revenue Code, the United States Code Annotated (including the IRS code with references to court decisions), and the Corpus Joris Secundum (similar to the USCA). In general, the tax aspects of patenting and trademarks and copyrights is straightforward. The law firm of Alston & Bird has an update on Intellectual Property Tax Planning, circa November 1999.


The National Association of College and University Attorneys has a paper on the tax treatment of faculty royalties, circa December 2002.

ITEMIZED DEDUCTIONS - Section 174. Research and Experimental Expenditures

(a) Treatment as expenses

(1) In general - A taxpayer may treat research and experimental expenditures which are paid or incurred by her during the taxable year in connection with her trade or business as expenses which are not chargeable to capital account. The expenditures so treated shall be allowed as a deduction. [Note: IRS Reg. 1.174-2(a)(2) allows attorney fees incurred in making and perfecting a patent application may be deducted under special provisions allowing a taxpayer to treat research and development costs as deductions, rather than capital expenditures.]

(2) When method may be adopted - (A) Without consent - A taxpayer may, without the consent of the Secretary, adopt the method provided in this subsection for his first taxable year - (ii) for which expenditures described in paragraph (1) are paid or incurred.

(3) Scope - The method adopted under this subsection shall apply to all expenditures described in paragraph (1). The method adopted shall be adhered to in computing taxable years unless, with the approval of the Secretary, a change to a different method is authorized with respect to part or all of such expenditures.

(e) Only reasonable research expenditures eligible - This section shall apply to a research or experimental expenditure only to the extent that the amount thereof is reasonable under the circumstances.


ITEMIZED DEDUCTIONS - Section 186. Recoveries of damages for antitrust violations, etc.

(a) Allowance of deduction - If a compensatory amount which is included in gross income is received or accrued during the taxable year for a compensable injury, there shall be allowed as a deduction for the taxable year an amount equal to the lesser of (1) the amount of such compsenatory amount, or (2) the amount of the unrecovered losses sustained as a result of such compensable injury.

(b) Compsenable injury - For purposes of this section, the term "compensable injury" means - (1) injuries sustained as a result of an infringement of a patent issued by the United States, (2) injuries sustained as a result of a breach of contract of fiduciary duty or relationship, or (3) injuries sustained in business, or to property, by reason of any conduct forbidden in the antitrust laws for which a civil action may be brought under section 4 of the Act entitled "An Act to supplement existing laws against unlawful restraints and monopolies, and for other purposes", approved 15 October 1914 (commonly known as the Clayton Act).

(c) Compensatory amount - For purposes of this section, the term "compensatory amount" means the amount received or accrued during the taxable year as damages as a result of an award in, or in settlement of, a civil action for recovery for a compensable injury, reduced by any amounts paid or incurred in the taxable year in securing such award or settlement.


ITEMIZED DEDUCTIONS - Section 197. Amortization of goodwill and certain other intangibles

(a) General rule - A taxpayer shall be entitled to an amortization deduction with respect to any amortizable section 197 intangible. The amount of such deduction shall be determined by amortizing the adjusted basis (for purposes of determining gain) of such intangible ratably over the 15-year period beginning with the month in which such intangible was acquired.

(b) No other depreciation or amortization deduction allowable - Except as provided in subsection (a), no depreciation or amortization deduction shall be allowable with respect to any amortizable section 197 intangible.

(d) Section 197 intangible - For purposes provided in this section, the term "section 197 intangible" means (A) goodwill, (B) going concern value, (C) any of the following intangible items: (iii) any patent, copyright, formula, process, design, pattern, knowhow, format or other similar item, (D) any license, permit or other right granted by a governmental unit or an agency or instrumentality thereof, (F) any franchise, trademark or trade name .


INCOME TAXES - Section 483. Interest on certain deferred payments

(a) Amount constituting interest - For purposes of this title, in the case of any payment - (1) under any contract for the sale or exchange of any property, and (2) to which this section applies, there shall be treated as interest that portion of the total unstated interest under such contract which, as determined in a manner consistent with the method of computing interest under section 1272(a), is properly allocable to such payment.

(d) Exceptions and limitations - (4) Certain sales of patents - In the case of any transfer described in section 1235(a) relating to sale or exchange of patents), this section shall not apply to any amount contingent on the productivity, use, or disposition of the property transferred.


INCOME TAXES - Section 861. Income from sources with the United States

(a) Gross income from sources within United States - The following items of gross income shall be treated as income from sources within the United States: (1) Interest, ... (2) Dividends, ... (3) Personal services, ... (4) Rentals and royalties - Rentals or royalties from property located in the United States or from any interest in such property, including rentals or royalties for the use of or for the privilege of using in the United States patents, copyrights, trademarks, secret processes and formulas, good will, trade brands, franchises, and other like property.

(b) Taxable income from sources within United States - From the items of gross income specified in subsection (a) as being income from sources within the United States there shall be deducted the expenses, losses and other deductions property apportioned or allocated thereto and a ratable part of any expenses, losses or other deductions which cannot definitely be allocated to some item or class of gross income. The remainder, if any, shall be included in full as taxable income from sources within the United States. In the case of an individual who does not itemize deductions, an amount equal to the standard deduction shall be considered a deduction which cannot definitely by allocated to some item or class of gross income.


INCOME TAXES - Section 862. Income from sources without the United States

(a) Gross income from sources without United States - The following items of gross income shall be treated as income from sources without the United States: (1) Interest, ... (2) Dividends, ... (3) Personal services, ... (4) Rentals or royalties from property located without the United States or from any interest in such property, including rentals or royalties for the use of or for the privilege of using without the United States patents, copyrights, trademarks, secret processes and formulas, good will, trade brands, franchises, and other like properties;

(b) Taxable income from sources without United States - From the items of gross income specified in subsection (a) there shall be deducted the expenses, losses and other deductions property apportioned or allocated thereto and a ratable part of any expenses, losses or other deductions which cannot definitely be allocated to some item or class of gross income. The remainder, if any, shall be included in full as taxable income from sources without the United States. In the case of an individual who does not itemize deductions, an amount equal to the standard deduction shall be considered a deduction which cannot definitely by allocated to some item or class of gross income.


DOMESTIC INTERNATIONAL SALES - Section 993(c). Export property

(a) Qualified export receipts - (1) General rule - For purposes of this part, except as provided by regulations under paragraph (2), the qualified export receipts of a corporation are - (A) gross receipts ...... (E) dividends ...... (F) interest ......

(c) Export property - (2) Excluded property - For purposes of this part, the term "export property" does not include - (B) patents, inventions, models, designs, formulas, or processes, whether or not patented, copyrights (other than films, tapes, records, or similar reproductions, for commercial or home use), good will, trademarks, trade brands, franchises, or other like property.


INCOME TAXES - Section 1235 - Sale or exchange of patents

(a) General - A transfer (other than by gift, inheritance, or devise) of property consisting of all substantial rights to a patent, or an undivided interest therein which includes a part of all such rights, by any holder shall be considered the sale of exchange of a capital asset held for more than 1 year, regardless of whether or not payments in consideration of such transfer are - (1) payable periodically over a period generally coterminous with the transferee's use of the patent, or (2) contingent on the productivity, use or disposition of the property transferred.

(b) "Holder" defined - For purposes of this section, the term "holder" means - (1) any individual whose efforts created such property, or (2) any other individual who has acquired his interest in such property in exchange for consideration in money or money's worth paid to such creator prior to actual reduction to practice of the invention covered by the patent, if such individual is neither - (A) the employer of such creator, nor (B) related to such creator (within the meaning of subsection (d)).

(c) Effective date - This section shall be applicable with regard to any amounts received, or payments made, pursuant to a transfer described in subsection (a) in any taxable year to which this subtitle applies, regardless of the taxable year in which such transfer occurred.


INCOME TAXES - Section 1239 - Gain from sale of depreciable property between certain related taxpayers

(a) Treatment of gain as ordinary income - In the case of a sale or exchange of property, directly or indirectly, between related persons, any gain recognized to the transferor, shall be treated as ordinary income if such property is, in the hands of the transferee, of a character which is subject to the allowance for depreciation provided in section 167.

(e) Patent applications treated as depreciable property - For purposes of this section, a patent application shall be treated as property which, in the hands of the transferee, is of a character which is subject to the allowance for depreciation provided in section 167.


CAPITAL GAINS AND LOSSES - Section 1253 - Transfers of trademarks, franchises, and trade names

(a) General rule - A transfer of a franchise, trademark or trade name shall not be treated as a sale or exchange of a capital asset if the transferor retains any significant power, right or continuing interest with respect to the subject matter of the franchise, trademark or trade name.

(c) Treatment of contingent payments by transferor - Amounts received or accrued on account of a transfer, sale or other disposition of a franchise, trademark, or trade name which are contingent on the productivity, use or disposition of the franchise, trademark or trade name transferred shall be treated as amounts received or accrued from the sale or other dispostion of property which is not a capital asset.

(d) Treatment of payments by transferee
- (1) Contingent serial payments - (A) Any amount described in subparagraph (B) which is paid or incurred during the taxable year on account of a transfer, sale, or other disposition of a franchise, trademark, or trade name shall be allowed as a deduction under section 162(a) (relating to trade or business expenses). (B) Amounts to which paragraph applies - An amount is described in this subparagraph if it - (i) is contingent on the productivity, use, or disposition of the franchise, trademark, or trade name, and (ii) is paid as part of a series of payments - (I) which are payable not less frequently than annually throughout the entire term of the transfer agreement, and (II) which are substantially equal in amount (or payable under a fixed formula).

(2) Other payments - Any amount paid or incurred on account of a transfer, sale, or other disposition of a franchise, trademark, or trade name to which paragraph (1) does not apply shall be treated as an amount chargeable to capital account.

(3) Renewals, etc. - For purposes of determining the term of a transfer agreement under this section, there shall be taken into account all renewal options (and any other period for which the parties reasonably expect the agreement to be renewed).


Sales and Other Dispositions of Assets - Publication 544

Nontaxable Exchanges - Certain exchanges of property for the same kind of property is the most common type of non-taxable exchange. To be a like-kind exchange, the property traded and the property received must be both: 1) qualifying property, and 2) like property.

Intangible personal property and non-depreciable personal property If you exchange intangible personal property or nondepreciable personal property for like-kind property, no gain or loss is recognized on the exchange. Whether intangible personal property, such as a patent or copyright, is of a like kind to other intangible personal property generally depends on the nature or character of rights involved. It also depends on the nature or character of the underlying property to which those rights relate. Example: The exchange of a copyright on a novel for a copyright on a different novel can qualify as a like-kind exchange. However, the exchange of a copyright on a novel for a copyright on a song is not a like-kind exchange.

Section 197 Intangibles - Section 197 intangibles are certain intangibles acquired after August 10, 1993, and held in connection with the conduct of a trade or business or an activity entered into for profit, whose costs are amortized over 15 years. They include: .... 5) patents, copyrights, formulas, ..... 10) tradenames.