Bochner PLLC launches European services

Each of our attorneys has extensive experience in preparing patent applications and prosecuting patent applications in particular patent offices around the world. We have launched a range of services in Europe that leverages the specific legal training and expertise of attorneys licensed to represent clients before the European Patent Office, the European Union Intellectual Property Office, and the national intellectual property offices of European countries.  We believe that a coordinated and unified delivery of services ensure that each clients’ patent, industrial design, and trademark registrations, considering the specific legal requirements of each legal jurisdictions in which registration is sought, is vital from the decision to seek IP protection and at each stage of the registration process.  We also believe that this approach delivers optimized levels of protection while also minimizing the lifetime costs of registration.  Working in teams from the preparation of the initial application for registration, through the entire registration process, and post-issuance ensures that our attorneys secure IP rights that stand scrutiny for each client, add value, and an appropriate return on investment in IP development.

Bochner PLLC’s clients value cross-border synergies and so we are building a network of local IP counsel across the globe.

Fixed Price and On-Demand IP Counsel Services

Recent studies have demonstrated that intangible assets represent the greatest value component of S&P 500 businesses, and that for technology businesses the most significant share of that intangible asset value is represented by intellectual property.  Although many larger businesses employ dedicated teams of patent and trademark attorneys, very few businesses have a senior IP professional on the Board of Directors or at a sufficiently senior level within the business to advise senior executives and the C-suite on business-critical decisions involving intangible assets or to align the development and management of these assets to business and commercial goals.  And, for businesses with finite resources, and competing demands for those limited resources, IP is frequently an afterthought which is addressed using expensive external legal advisors on an ad-hoc, and as needed, basis.

Bochner PLLC’s on-demand IP Counsel service provides support when necessary for a fixed monthly price and is tailored to each client’s specific requirements. We ensure that key stakeholders have full visibility of the businesses’ intangible assets, and that the development of the IP portfolio can be appropriately aligned to business and commercial goals.  Our goal is for clients to receive professional advice and support to reach informed IP decisions while still retaining full control of their IP assets. 

Services include:

  • IP Strategy – supporting senior executive teams in the development of a formal IP strategy that clearly illustrates how IP assets, such as patents, industrial designs, and trademarks, can be leveraged to create value;
  • IP Policies – the development, implementation and optimization of IP management policies for the management of patents, industrial designs, trademarks, copyright, know-how and trade secrets;
  • IP Management & Reporting – the harvesting of internally and externally acquired IP assets, the coordination of external IP counsel in multiple jurisdictions, budget management, and the internal reporting of IP portfolio development activities to key stakeholders;
  • IP Training – the development of bespoke training solutions relating to the management and deployment of IP assets;
  • IP Transactions – advising on the drafting and negotiation of legal agreements with parties, and the valuation of IP assets, in transactions involving the acquisition, disposal, or licencing of IP assets or in connection with commercial partnerships, joint ventures, and across supply chains;
  • Trade Secret Management – know-how and trade secrets are frequently a neglected IP asset despite representing the greatest share of IP value in a technology businesses IP portfolio – Bochner PLLC’s experts can help you to identify, record, and implement effective procedures for trade secret management that reduce the risk of loss or misappropriation.
  • Tax & Transfer Pricing – supporting the creation, protection, deployment, and valuation of internally developed IP assets used across enterprise groups and for the effective integration of externally acquired IP assets.

IP Professionals that understand the language of Transfer Pricing

Transfer Pricing is an accounting practice for valuing transactions involving goods, services, or intangibles (including intellectual property assets) between related legal entities.  It establishes the prices paid for goods, services, and intangibles exchanged between affiliates, subsidiaries or commonly controlled legal entities that are part of the same larger enterprise group.

A TP event occurs when goods or services are exchanged between two or more related entities of the same business group and the relevant transaction should be based upon arm’s length principles where the price charged by the selling group entity for goods or services to a related acquiring group entity is the same as would be charged to an unrelated legal entity.  TP is intended to prevent enterprise groups charging a higher price to group legal entities located in high-tax countries (reducing profit) and/or charging a lower price (increasing profits) to group legal entities in low-tax countries.

A commonly held belief is that the legal owner of an asset is entitled to any returns derived from the exploitation of that asset.  However, OECD Transfer Pricing Guidelines prescribe that the ‘economic ownership’ of an intangible asset depends on which group entity or entities perform so-called ‘DEMPE functions’.  But this is misleading! The OECD guidelines do not actually refer to ‘economic ownership’, merely to compensating group entities for their respective contributions to the Development, Enhancement, Management, Protection and Exploitation of intangibles.  A DEMPE analysis also does not just relate to the performance or control of functions; it looks at the assets deployed, and the risks assumed by the respective group entities.

The decisions and intentions of associated group entities regarding the allocation of rights in intangibles must be documented and priced in advance of any intercompany transaction event. From a practical perspective, intercompany agreements need to be designed, and the underlying policies implemented across the enterprise group, at an early stage.  The agreements need to work holistically and to be aligned to operational reality.  From an intellectual perspective that means that key decisions about how, where, and by whom IP assets are created, developed, and deployed across the enterprise group need to be factored into decision-making.

Bochner PLLC’s professionals have knowledge and practical experience of the intellectual aspects of transfer pricing and are able to speak the language of transfer pricing with finance, tax, and transfer pricing managers and their professional advis