While such strategies can generate significant bottom line value, they can also create significant risks in protecting and enforcing the company’s IP assets. Among other things, a strategy may lead to a cross-border licensing structure that, although tax-efficient, could compromise a company’s ability to recover lost profits or obtain injunctive relief in enforcement actions to protect its intellectual property rights.

To address these issues, the Mayer Brown IP-Tax Team works closely with clients’ tax and IP lawyers to design (or revise) the client’s inter-company agreement structure and thereby preserve both its tax objectives and its IP interests.

Structures Used in the Creation of New IP through R&D Activities. Another focus of the Mayer Brown IP-Tax Team is the use of existing intellectual property in connection with R&D activities seeking to create new intellectual property. This area typically involves three issues: (1) what intellectual property should be made available to the R&D affiliate (or third-party collaborator) as a foundation for the R&D activities? (2) what corporate affiliate should be the owner of the newly-created IP? and (3) what licenses or other agreements should the new owner enter into to enable the client to fully maximize and protect the value of the newly-created IP?

Here again, the Mayer Brown IP-Tax Team works closely with clients’ tax and IP lawyers to design (or revise) the client’s intercompany agreement structure to preserve both tax objectives and IP interests.

Acquisition of New IP through M&A Activities. The Mayer Brown IP-Tax Team also deals with the related-party issues posed by the acquisition of new intellectual property as a result of corporate acquisitions and mergers. The key issues here are (1) what corporate affiliate should be the owner of the newly-acquired intellectual property; and (2) what agreements should be put in place to enable the company to exploit the newly-acquired intellectual property in a manner compatible with existing IP and tax models.

Corporate Employee Agreements. Another practice area for the Mayer Brown IP-Tax Team is a review of the cross-jurisdictional employment agreements used to protect a company’s intellectual property rights. In this practice area, Mayer Brown works with clients to ensure that the corporate employment agreements (1) effectively protect the integrity of the company’s proprietary information; and (2) ensures that any innovations developed within the scope of employment are properly assigned to the company. This work must reflect the important jurisdictional differences in the legal protections available to both the employee and the employer.