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Authored by: Jamie Cheung
Did you know?
Despite its name, the ‘patent box’ isn’t just for patents. In fact, it is actually an ‘innovation box’. In our earlier alert ‘Thinking inside the (patent) box’, we highlighted the Hong Kong Government’s patent box regime that seeks to encourage innovation by providing tax concessions. As we mentioned then, the regime covers not only patents and plant varieties, but also copyright subsisting in software. It is one of the most generous regimes in the world, with a 5% concessionary profits tax rate (compared to the usual 16.5%). The regime will apply to a broad range of businesses, not just high-tech sectors such as AI and life sciences.
Why does this matter to you?
Businesses that develop software or products that contain software, even if it is not the main focus of their business, should sit up and take note of the patent box. Nowadays all companies use software in their business but, of course, this alone is not enough to qualify for a tax concession – you must be an ‘eligible person’ deriving ‘eligible IP income’ from the software patents or the copyright subsisting in software.
An ‘eligible person’ is simple enough: in this context, it refers to someone who is entitled to derive ‘eligible IP income’ from the IP. This is broad enough to cover those who do not own the IP that subsists in the software so that even if you are a licensee, you may derive eligible IP income from sub-licensing the copyright to someone else.
So, what is ‘eligible IP income’? The most straightforward example is selling the IP, but it can also include ‘embedded IP income’ i.e., the part of income that is attributable to the value of the IP embedded in a product or service, for example, has your business developed:
Whilst it is early days, and it remains to be seen how the Inland Revenue Department (IRD) will apply the tests of qualifying eligible IP income, innovative companies should start thinking about whether it may be worth electing to the patent box.
Taxpayers must also show that the software patents or copyright subsisting in software are ‘eligible IP’ derived from an ‘R&D activity’. Most routine software development would not qualify as an ‘R&D activity’. “R&D activity” is usually referred to as an activity working to develop new products, new lines and improvements to the present production. Thus, technical developments of software for a new product, production process, tools for production of a product, or improvement may qualify.
If your software is protected by a registered Hong Kong patent, then congratulations! It is most likely ‘eligible IP’ under the patent box. If the remaining requirements are fulfilled, your tax bill on eligible IP income should enjoy the concession tax rate.
However, under the regime, software that does not qualify for patent protection (but is protected by copyright), could still be ‘eligible IP’ for the purpose of the patent box. A detailed case-by-case assessment would be needed to conducted. The amended Inland Revenue Ordinance sets out detailed record-keeping requirements for ‘eligible IP income’, and Inland Revenue Department is preparing guidelines on the conditions for establishing ‘eligible IP’.
Taxpayers should consider conducting an IP audit to see whether they have innovations that could benefit from the patent box incentive and seek advice on what kind of evidence is necessary to prove copyright ownership or exploitation rights. Such evidence should clearly identify the eligible software patent and copyright being applied to the products and services.
Overseas businesses and mainland Chinese entities could consider setting up a Hong Kong company to develop eligible IP (which could also be licensed to parties outside of Hong Kong) to take advantage of the considerable tax concession. Businesses may wish to consider restructuring their IP-holding arrangements and/or business operation models.
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