Selling IP to USA

[sartois]

Hi,

Bit of an odd one but I am hoping that someone may have experience with this sort of thing.

My day job is typical contracting and supplying my services to a large firm in the city. However there is a company that I used to work for that I deliver training to on a sporadic basis. Basically I designed and developed 2 very bespoke courses for a product that they support. These are very niche courses and twice a quarter they book me to turn up and deliver these. These are very well received and each time I turn up I have a full class and get great feedback. I sell these at 5 times my normal contracting rate so this is quite profitable for me and is basically my Plan B to generate income just in case my normal contract comes to an end and I don't have another contract to go to immediately.

The company I deliver these to is a US company and whilst they have a significant presence in the UK, they are a much larger outfit in the US. The training department in the UK have said that the US want to use this and are asking if they can have the slides, labs, student materials, facilitator materials etc so that a US trainer can deliver in the US.

I spent significant hours (150+) creating these courses and I am not sure I would be keen on just giving them away, but at the same time I am not sure if I can sell them to the US... or can I through my Ltd Company? Could I deliver them myself in the US and bill the US company for my time similar to how I do it currently? Although logistically this would be very challenging with my current workload.

I'm not even sure how to approach this... this time last year I was a Permie and am just getting to grips with being a contractor yet alone going international!

[TheFaQQer]

I spent significant hours (150+) creating these courses and I am not sure I would be keen on just giving them away, but at the same time I am not sure if I can sell them to the US... or can I through my Ltd Company?

You invoice the company, they pay your company. Make sure you treat the VAT correctly for selling overseas, though.

Could I deliver them myself in the US and bill the US company for my time similar to how I do it currently? Although logistically this would be very challenging with my current workload.

I suspect that you'd need a visa to do that, since you would be working in the US, rather than just attending a meeting. You don't want to fall foul of US immigration if you ever plan to visit again.

[Hireonomy]

not sure if this link is any good, Sartois (it is a NI site, but the theory must be the same): Selling your intellectual property | nibusinessinfo.co.uk

Just have a quick google of "selling IP" and see what comes up...

good luck

[jamesbrown]

You invoice the company, they pay your company. Make sure you treat the VAT correctly for selling overseas, though.


I suspect that you'd need a visa to do that, since you would be working in the US, rather than just attending a meeting. You don't want to fall foul of US immigration if you ever plan to visit again.

Agreed on both counts. It probably makes sense to sell to the UK branch, but if you need to sell directly to the US head office for whatever reason, it is probably outside of the scope of UK VAT, because it would be enjoyed in the US (i.e. the place of supply would be the US). Worth checking that with a professional though.

If it is indeed training, as described, and not a presentation to a meeting, you would need a work visa.

Simplest option would be to sell to the UK company. Obviously, there are so simple rules on valuation but, if this were me, I'd price as a multiple of your ordinary rate for each delivery.

[TheFaQQer]

Also, make sure that you are selling a non-exclusive licence to use the materials to train their own staff, no other rights included.

You don't want to sell them the training materials and then have them sell the training course onwards, without giving you some of the money.

[tractor]

Agreed on both counts. It probably makes sense to sell to the UK branch, but if you need to sell directly to the US head office for whatever reason, it is probably outside of the scope of UK VAT, because it would be enjoyed in the US (i.e. the place of supply would be the US). Worth checking that with a professional though.

If it is indeed training, as described, and not a presentation to a meeting, you would need a work visa.

Simplest option would be to sell to the UK company. Obviously, there are so simple rules on valuation but, if this were me, I'd price as a multiple of your ordinary rate for each delivery.

Selling in the US is a nightmare. Best keep it to their UK subsidiary if possible.

.Gov link here

A private sale on Amazon.com might be worth considering.

[malvolio]

Also, make sure that you are selling a non-exclusive licence to use the materials to train their own staff, no other rights included.

You don't want to sell them the training materials and then have them sell the training course onwards, without giving you some of the money.

Precisely. You are selling use of the material for a limited purpose only, not the material itself. Also, be very clear which country's legislation you are using and what penalties are applicable for non-compliance.

I suggest you need the help of a corporate lawyer...

[jamesbrown]

Selling in the US is a nightmare. Best keep it to their UK subsidiary of possible.

.Gov link here

A private sale on Amazon.com might be worth considering.

Agreed on the UK subsidiary, but a nightmare in what sense? I do it all the time, although not selling IP I admit... insurance is a bit of a hassle, but most clients are pragmatic on contractual terms etc.

[jamesbrown]

Also, make sure that you are selling a non-exclusive licence to use the materials to train their own staff, no other rights included.

You don't want to sell them the training materials and then have them sell the training course onwards, without giving you some of the money.

Yes, the OP would benefit from professional input in negotiating the T&C.

[tractor]

...

Agreed on the UK subsidiary, but a nightmare in what sense? I do it all the time, although not selling IP I admit... insurance is a bit of a hassle, but most clients are pragmatic on contractual terms etc.

Unless it has changed, you used to need a visa and a Federal Tax ID which was a nightmare to obtain. I was up on it before, as a colleague used to trade regularly and he had to jump through so many hoops that he began to wonder whether it was worth it - it actually wasn't in the end.

That was why I posted link, because it should be the most up to date info.