Out-Law Guide 5 min. read
07 Dec 2012, 9:58 am
This guide was updated in May 2017.
Companies liable to UK tax can elect for their profits earned after 1 April 2013 from their patented inventions (and certain other innovations) to be taxed at a lower level of corporation tax. The relief was phased in over four years leading to a tax rate of 10% from 1 April 2017.
However, the regime is modified for patents which come within the regime after 30 June 2016. Transitional rules allow patents which were within the original regime before 30 June 2016 to continue to benefit from that regime until 2021.
See our separate guide to the regime as it applies for entrants on or after 1 July 2016 for details of the modified regime
A company which owns 'qualifying IP rights' or has exclusively licensed in such rights, can potentially benefit from the regime. However, where a company is a member of a group it will need to have either developed the IP rights itself or be actively managing them. This 'active ownership' condition is designed to ensure that passive IP holding companies cannot qualify for the regime. The active ownership condition will not be available under the proposed new regime.
A company will be treated as actively managing its IP rights if it performs a "significant amount of management activity" in relation to all, or almost all, of the qualifying IP rights that the company holds (including any exclusive licences).
This is an ongoing test and it is expected that in practice management activity will involve formulating plans and making decisions in relation to the development or exploitation of IP rights. Some examples of suitable activity will include decisions on whether to maintain protection in particular jurisdictions, grant licences, research alternative applications for the innovation or licensing others to do so.
Whether activity is considered "significant" will be determined in the light of all the relevant circumstances. However, it is clear that the company will not necessarily have to take all the decisions in relation to IP management in order to qualify.
Consequently, where a company has not carried on the development activity itself, it must play an active role in managing the IP rights that it holds. In the event that it is required to demonstrate it has carried out this activity, it should document both the plans and the decision-making process taken by it.
Only companies which elected to enter the patent box for a period before 1 July 2016 will be able to benefit from the existing regime and only to the extent that the IP in question was acquired before 1 July 2016, or 1 January 2016 in the case of an acquisition from a connected company. Companies can elect to be within the patent box within two years after the end of the accounting period in question
Companies within the patent box by the required date can continue to benefit from the current regime until 30 June 2021
Which IP rights are covered?
In addition to patents granted by the UK Intellectual Patent Office and the European Patent Office, the regime includes patents from certain EEA states including; Austria, Bulgaria, Czech Republic, Denmark, Estonia, Finland, Germany, Hungary, Poland, Romania, Slovakia and Sweden.
Certain supplementary protection certification, certain EU plant breeders or plant variety rights and certain EU marketing authorisation rights of medicinal or plant protection products will also be within the regime. For more details see HMRC's guidance.
Only companies and groups which have been properly involved in the innovation leading to the patent or the application of the patented invention can benefit from the regime.
This "development condition" can only be satisfied if the company intending to benefit from the regime (or in certain circumstances a fellow group company) has created, or significantly contributed to the creation of the patented invention or has performed a significant amount of activity to develop the patented invention or any product or process incorporating the patented invention.
It does not matter whether the development activity was carried out before or after the company (or another member of the group) became the holder of the IP right or the exclusive licence for the IP right.
Where the company holding the IP right has carried out the development activity, it must not have become or ceased to be a group member since this time. If the company has become or ceased to be a group member it must have continued with development activity of the same description (although not necessarily on the same invention) for at least 12 months after the change.
Where the company holding the IP right has not itself satisfied the development condition, the right will still be a qualifying IP right provided the company which carried out the development activity was a member, at the time of the development activity, of the same group of companies.
Which profits qualify?
The lower rate of corporation tax will apply to the relevant IP profits ('RIPP') of the company. There are two possible methods for calculating RIPP.
The "standard" method involves the company working out the proportion the relevant IP income derived from its trade bears to its total income. The regime provides for a wide range of income to be IP income and includes income from the sale of items incorporating a patented invention, income from the sale of spare parts for such items, receipt of licence fees or royalties; sale of the IP rights themselves; or compensation received for infringement of IP rights. Where a company uses its patented invention in a way that does not generate income falling within the above categories, it may still have IP income under the notional royalties provisions.
RIPP is adjusted so that it does not include profits the company would have made if it did not have access to unique IP and profits generated from established brands. This is likely to lead to detailed calculations and discussions with HMRC to agree the relevant profit attributable to the IP.
IP profits arising for the period during which a patent is pending can in certain circumstances benefit from the regime.
The alternative method for calculation of RIPP involves "streaming" expenses to relevant IP income on a just and reasonable basis. It is mandatory in some circumstances, but optional to all regime users. Furthermore, in some circumstances it may produce a more beneficial RIPP, especially where relevant IP income produces proportionately more profit than non-IP income streams.
Note that companies which also have IP in the post 30 June 2016 regime will have to use a modified form of streaming.
The patent box regime has been modified for new entrants from 1 July 2016. This is in order to comply with the recommendations of the Organisation for Economic Cooperation and Development (OECD) as part of its base erosion and profit shifting (BEPS) project to reduce international tax avoidance by multinationals.
The key difference between the regimes is that under the new regime the company claiming the relief will have to have incurred expenditure in developing the IP, simply managing the rights will no longer be sufficient. Streaming will also be compulsory. The new regime may be less favourable than the old regime for companies that have bought IP rights or have subcontracted R&D to related parties.
The existing regime will continue until 30 June 2021 for those who were within the regime before 1 July 2016.