Patent Box - Patent Strategy Considerations

• Published date: 08 February 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: J A Kemp LLP
• Author: Mr Martin Jackson

The Patent Box makes the existence of a patent more attractive, whatever the breadth of the patent's claim, so long as it covers the product (or process or service). A company may wish to optimise its strategies both for filing and prosecuting patent applications and for patent and patent application abandonments bearing in mind the tax savings available through the Patent Box.

Introduction

The general aim of conventional patent strategy is to provide sufficiently broad protection to prevent competitors from making modifications to a product or process that negate the protection afforded by the patent. For a patent to deliver Patent Box benefits to a company there is no need to achieve broad protection; all that is important is that the patent covers part or all of a product or service, even a small part of a complex product.

Patents directed to features which might be easy for competitors to design around or to omit altogether may now become valuable if they shift profits into the Patent Box. It may now be worthwhile to pursue a patent application for the sole purpose of placing a product's profits in the Patent Box without ever having the intention or expectation of enforcing the patent against a competitor.

A UK patent is relatively inexpensive and quick to obtain, with the inventive step criterion sometimes being easier to meet than at some other patent offices. So a UK patent is ideally suited to bringing profits into the Patent Box.

Filing Strategy

Your patent strategy may mean that all of your products are/will be automatically protected by patents or other qualifying IP rights and that few, if any, steps need to be taken for you to take advantage of the Patent Box, other than claiming the relief. You may however benefit from a change in strategy in prosecuting applications to grant (see below).

If you are a manufacturer, you may not routinely apply for patents for all of your products, including products that are well-established. Without patent protection you cannot put profits relating to the products into the Patent Box. You might consider making changes to the products, not necessarily in a radical way, so that you can apply for a patent to cover part or all of the product and bring it into the Patent Box regime. This includes products that you already have on the market.

It may be worthwhile discussing with designers and developers whether changes could be made to existing and/or new products so that a UK patent could be applied for, for the...