This was originally published on September 19th, 2010.
I attended the Mass Innovation Night Wednesday It is a pretty neat event. Neuron Robotics is making a central control unit to use in robot applications. Another neat start-up was Isabella Products which has a picture frame with a linked e-mail address. I really wish my mother was still around. I would definitely have gotten her one. I was chatting with an attorney who does a lot of start-ups and I was really surprised to find that he wasn’t aware of the special tax treatment available for patents. It’s not the first time that I’ve run into so I thought it might be worth a blog post even though I haven’t noticed any striking developments in that area.
Code Section 1235 applies to inventors and their financial backers. It allows capital gains treatment on payments in exchange for the transfer of a patent even if the payments are over a period of time or contingent on the use of the property. An analogy that can be used for distinguishing capital transactions from ordinary income is that of a tree and its fruit. If you sell the tree that’s a capital transaction. If you sell the fruit that is ordinary income. This distinction and the ways that people try to confound it are sources of much tax complexity which I will discuss from time to time. There is an assumption that when payments for property are spread over time, some portion of the payments represents compensation for the time value of money (which used to amount to something). Another principle is that things that you create yourself are not capital assets in your hands.
Code Section 1235 suspends both these principles when it comes to compensating inventors. Payments that qualify under 1235 are 100% capital gain even though long deferred and the relief is targeted to the creators. The requirements for 1235 treatment are that the taxpayer be a “holder”, which is either the inventor or someone who acquired all rights from the inventor before the invention is reduced to practice. The inventor can transfer rights even before patents are issued and still qualify for capital gains treatment. In one case the courts allowed 1235 treatment for the sale of patentable designs even though no patents were ultimately applied for.
In order to qualify for the treatment, the sale must be of all substantial rights in the patent or an undivided interest in all the substantial rights. This might create a significant business issue since a sale that is restricted to a particular industry or geographic area will not qualify. I think it is possible that 1235 is not thought about a lot, because the end game of a lot of startups is the creation of a public company or being taken over by one. I think this is what accounts for the strange popularity of C corporations. Nonetheless, it can be a great benefit in the right circumstances and should not be neglected.