Taxation of Intellectual Property

May 22 - 23, 2017 - San Francisco, CA

Early Registration Fee $1295 (by April 22) Regular Registration $1495 Groups of 2 or More Save $200 Off Each Registrant

The transfer or intellectual property assets offshore to reduce the taxation of IP has been growing over the last several years.  Our corporate tax rate being one of the highest in the world has provided U.S. corporation an opportunity to reduce their tax obligations. Don't miss this tax update featuring the latest techniques to maximize the value and potential of your intellectual property assets through effective tax planning, including how to reduce taxes on your company’s activities and develop strategies for successful planning in selling or licensing intellectual property assets. This intermediate level conference. 

This seminar is for law firm and accounting firm professionals who advise clients on structuring cross-border transactions, in-house tax executives involved in cross-border planning of intellectual property and intangilbe asset planning and those in IRS audits and appeals of international cross-border issues. Field of Study: Taxes Earn up to 13 CPE/CLE Credits.

Monday, May 22, 2017

8:00 AM - Registration & Continental Breakfast

9:00 AM - Overview of Tax Issues Related to Intangible Assets & Intellectual Property

  • Historical Development
  • Legally protected
  • Non-Legally protected
  • Key Tax Considerations
  • Treatment of transfers of IP
  • Sale versus License of IP
  • Character, Source, Amortization
  • Consideration for related party transactions
  • Statutory and Regulatory Framework
  • Definition of “Intangible Property”
  • “All Substantial Rights” Standard
  • Section 482 – Arm’s Length Standard

Stephen Bates, Principal, Ernst & Young LLP, San Francisco, CA

10:00 AM – Refreshment Break

10:15 AM - Recent Legislative Developments

  • Base Erosion and Profit Shifting (BEPS)
  • Unilateral Actions & UK Diverted Profits Tax
  • Tax Proposals

11:15 AM – Outbound Transfers of Intangibles under Section 482

  • General Considerations
  • IP Migration: Cost Sharing
  • Cost Sharing
  • License of Foreign IP
  • Sales of IP Rights
  • Contribution of IP
  • IP Partnership
  • Financial v. Tax Valuations
  • Post Migration Considerations
  • Subsequent acquisitions of intangibles

Gene Tien, Director of Economics, Baker & McKenzie LLP, Palo Alto, CA

12:30 PM – Networking Luncheon

1:15 PM - Valuation of Intangible Assets

  • When do we value intangible property for tax and/or accounting purposes?
  • Valuation of intangibles for tax purposes
  • Valuation of intangibles for financial reporting purposes

Daniela Ielceanu, Director, PricewaterhouseCoopers LLP, San Jose, CA

2:30 PM – Refreshment Break

2:45 PM – IP Legal Considerations Relevant to Transfers of Intangibles

  • IP Law background: standing; remedies for infringement
  • Issues raised by IP restructuring transactions
  • Best practices

Chris Kotarba, Senior Associate, DLA Piper LLP, Palo Alto, CA

4:00 PM - Research & Development (R&D) Tax Credits

  • Overview & Recent Developments
  • Case Law
  • Regulatory
  • Legislative
  • IRS and State Tax Audit Trends
  • Working with the IRS/Documentation

Mark Macevicz, Quantitative Services Specialist, Ernst & Young LLP, San Jose, CA

Renae Davis, Partner, Ernst & Young LLP, San Jose, CA

5:00 PM - Conference Adjourns for the Day

Tuesday, May 23, 2017

8:00 AM – Continental Breakfast

9:00 AM – Resolving Tax Disputes

Controversies relating to the tax consequences of the use or transfer of intangibles have multiplied and become more complex, especially with the establishment of the Transfer Pricing Practice within the IRS. We will review some of the more illustrative cases and highlight alternative strategies for resolving disputes.

Pat Chaback, Executive Director, Ernst & Young LLP, San Francisco, CA

10:15 AM – Refreshment Break

10:30 AM - Multistate Tax Issues

  • State Tax Considerations
  • Nexus vs Permanent Establishment Threshold
  • Audits

Jim Besio, Executive Director, State and Local Tax, Ernst & Young LLP
C. Michael O'Brien, Senior Manager, Global Indirect and State Tax Services, Ernst & Young LLP

11:30 AM – Outbound Transfers of Intangibles under Section 367(d)

  • What constitutes an intangible in context of 367(d) transactions
  • Foreign goodwill
  • How broadly should the term “contract” be read?
  • Recent developments

Chris Kotarba, Senior Associate, DLA Piper LLP, Palo Alto, CA

12:30 PM - Luncheon

1:15 PM - Managing your Intangible Asset Footprint

This session will discuss best practices for establishing and maintaining your IP structure. Topics will include location, pricing structure, economic substance and how to maintain the integrity of the structure in a changing business and tax enforcement environment.

Zey Nessar, Senior Manager, Ernst & Young LLP, San Francisco

2:30 PM - Conference Concludes

Conference Location

AMA Executive Conference Center, 55 Fourth Street, 2nd Level, San Francisco, CA 94103. Phone: 415 442 6770

Hotel accommodations:

San Francisco AMA Executive Conference Center is located right in the:
San Francisco Marriott Marquis Hotel

55 Fourth Street
San Francisco, CA 94103
(Reference: American Management Association Business Rate)
If you are making your reservation online using the link below, use discount code A10.
Property Details

Speaker Biographies

Stephen Bates is a Principal of National Tax Services at Ernst & Young. Previously, Stephen was a Principal at KPMG LLP as well as an associate at Weil Gotshal & Manges. Stephen received his J.D. from The George Washington University Law School and his B.S. from Northwestern University. 

Jim Besio has over 20 years of experience as a state and local tax consultant, and currently serves as the Indirect Tax Markets Leader for Ernst & Young’s San Jose Office.  Since joining Ernst & Young in 1994, Jim has been involved in a variety of state tax projects including state income tax controversy, ASC 740 tax provision assistance, due diligence reviews, refund and credit studies, as well as business re-location and re-structuring projects. Jim’s industry focus is in the technology sector, where he has served many companies that provide products and services related to computer software, Internet search, web publishing, e-commerce, social networking and gaming, as well as computer chips and hardware.  While Jim’s focus is with the technology sector, Jim works with numerous clients in a variety of diverse industries including: manufacturing, life sciences, consumer retail, private equity and financial/professional services.  In the Cloud Computing space, Jim has assisted clients with respect to many issues including, but not limited to, economic nexus, sales factor sourcing, audit representation, and sales factor sourcing and sales taxability studies.  Jim Besio is a frequent speaker at state tax seminars. Prior to joining Ernst & Young, Jim was a tax auditor with the California Franchise Tax Board where he specialized in multi-state corporate tax audits.  Jim is a CPA, and he received his undergraduate from Santa Clara University, and MBA with an emphasis in Tax from San Jose State University. 

Renae Davis is a Partner in Ernst & Young LLP’s West Region Quantitative Services practice; More than 15 years of experience in tax consulting serving clients from the Bay Area to Seattle in many industries, including automotive, manufacturing, high-technology, utilities, renewable energy, mining and retail; Advises clients regarding research tax credit process, documentation, and audit defense, capitalization, accounting methods and inventory, the Section 199 domestic manufacturing deduction, 263A, and meals and entertainment expenses; Frequent speaker at Tax Executives Institute events, presenter at Ernst & Young tax updates and co-leader of presentations to the Financial Executives Institute; BS in Accounting from Oregon State University and MBA from Portland State University; CPA in Oregon and a member of the American Institute of Certified Public Accountants and the Oregon Society of Certified Public Accountants.

Daniela Ielceanu is a transfer pricing economist and a Director in PricewaterhouseCoopers' San Jose office.  Daniela has helped many multinationals with the planning and execution of tax efficient international operational structuring, and with the design and implementation of their transfer pricing global policies.  Daniela focuses on a variety of industries, including technology (semiconductor, payment processing, software), life sciences (medical devices, pharmaceutical and biotech), and financial services.  She has been involved in the negotiation of Advanced Pricing Agreements with the IRS and foreign tax authorities, and in resolving controversy issues with tax authorities in audit defence environments.  Daniela holds a Ph.D. degree in Economics (Game Theory) from the University of North Carolina at Chapel Hill, U.S.

Chris Kotarba is an International Tax Senior Associate in DLA Piper’s Silicon Valley office. His practice consists primarily of international tax planning and transfer pricing. He has helped numerous high-technology, pharmaceutical, medical device and financial services companies expand globally in a tax-efficient manner. He also has extensive experience in IP migration and deferral structuring, supply chain optimization, withholding and consumption tax planning, inbound planning, cross-border M&A, post-acquisition integration and China tax. He has co-published Intersport and Taxpayer-Initiated Transfer Pricing Adjustments, 21 Transfer Pricing R. 88 (May 17, 2012) and a chapter in Taxation of International Partnerships (IBFD 2014). He received his J.D. from Columbia Law School and an LL.M. in Taxation from NYU School of Law. He is the President of the San Francisco Foreign Tax Club and an Executive Committee Member of the Bay Area Young Tax Lawyers.

Mark Macevicz is a Quantitative Services Specialist at Ernst & Young LLP based in San Jose. With a focus on the software and medical device industries, Mark provides tax advice and planning for a variety of credits, deductions, and depreciation issues. Mark has extensive experience with research tax credits, domestic manufacturing deductions, tax accounting for intellectual property, and the tax treatment of lease transactions. Prior to joining EY, Mark was an Assistant Chief Counsel for the Bureau of Immigration and Customs Enforcement, and was a Supervising Attorney at Santa Clara University’s Katharine and George Alexander Community Law Center. Mark’s experience as a litigator, at both the trial court and appellate levels, routinely helps clients achieve significant tax savings and successful audit outcomes. Mark has studied history at Montana State University-Bozeman, Turkish at Ankara University, law at the University of Minnesota, and accounting at Santa Clara University. He is a CPA and JD licensed to practice law in the state of California.

Leading PricewaterhouseCoopers San Francisco transfer pricing practice, Dr. Sarita Mohapatra is a Senior Transfer Pricing Economist who brings a unique combination of dynamism, expertise and drive to handle the most intricate problems with confidence and finesse. With a PhD in Economics and over eighteen years in the field, Sarita has led high-profile transfer pricing projects in retail and consumer, high technology and shipping industries. Her passion for excellence in client service, technical expertise and collaborative style has inspired her team members to earn a reputation for outstanding client satisfaction. Whether it is intellectual property valuations, cost allocation or documentation studies, APAs, controversy and dispute resolution, Sarita applies her keen intellect and commitment to exceed expectations to all of her work.  Sarita has extensive research and teaching experience in the field of Economics and International Finance. Before embarking on her transfer pricing career in public accounting, Sarita was on the faculty in the Economics department at Utah State University. Sarita enjoys sharing her expertise and is regularly invited to present at industry conferences including those hosted by the BNA Bloomberg and TEI. Her articles and published works have been featured in journals such as Journal of Foreign Exchange and International Finance and Agricultural Finance Review.  Sarita has a Ph.D in Economics from Utah State University and a MBA from Xavier Institute of Management, India.  She holds a Bachelor’s degree in Economics from Utkal University, India.

Mike O’Brien is a tax senior manager at Ernst & Young LLP with 10 years of experience serving public and private companies in various industry sectors including technology, biotechnology and pharmaceuticals, retail and consumer products, manufacturing, and real estate. Mike has spent the entirety of his career at EY in the Global Indirect and State Tax Group. His experiences have primarily focused on state income and franchise taxes with additional experiences in sales and use taxes, value-added taxes, and state credits and incentives. Mike has been involved in mix of diverse state tax engagements including state income tax nexus and apportionment studies, state income tax controversy, state income tax provision assistance, refund and credit studies, and business restructuring projects.  Mike started with EY in the St. Louis office in 2005 and spent 6 years in the Southern California market before transferring to the Bay Area in May of 2013. Mike is a CPA and received both an undergraduate degree and a master’s degree in Accounting, with a specialization in taxation, from Truman State University.

Gene Tien is the Director of Economics at Baker & McKenzie Consulting LLC in Palo Alto. Mr. Tien has worked extensively with US and foreign multinationals on transfer pricing and other economic valuation issues for more than 10 years. He primarily handles the transfer and valuation of technology, with an emphasis on US transfer pricing audit defense and planning. Mr. Tien also works on post-conflict international development pro bono issues mainly relating to Asia — including fiscal aspects of constitutions, fiscal devolution, water rights and developmental aid. He also has extensive research experience on cross-sectional and panel microeconomics, international trade and development topics in Asia. Mr. Tien focuses on applied microeconomics, including the design and implementation of global pricing strategies, intangible valuation and audit defense. In addition to his legal practice, Mr. Tien has written articles on the socio-economic impact of tax policy changes in Asia, as well as trends in US transfer pricing audits. Mr. Tien graduated from Northwestern University and University of Washington.

Zey Nasser is a member of Ernst & Young LLP’s International Tax Services practice and is based in San Francisco.  Previously, Zey was a tax associate at Clifford Chance US LLP.  Zey has more than 16 years of experience providing tax structuring and planning advice for a wide variety of domestic and multi-national clients. Zey has experience in subpart F and foreign tax credit planning, acquisitions and dispositions, spin-offs and foreign in-bound and outbound transactions.  Zey also has experience in hybrid and other cross-border financings and in representing issuers and underwriters in US and Euromarket offerings.  She has worked on a wide variety of international financial and business transactions, including investment funds, carried interest and management co-investment arrangements, private equity investments and joint ventures.  Zey is a tax attorney licensed to practice in California, New York and Washington, DC.  She received an LL.M in taxation, on full scholarship, from Georgetown University Law Center.