經濟合作暨發展組織（OECD，Organization for Economic Cooperation and Development）與20國集團（G20），最近公布了一份能夠有效地打擊損害稅收之行為的詳細報告，而其中之部分細節便與智慧財產權減免稅務制度有關。其之結論是，諸如專利權這般可以刺激研發的租稅減免制度，就整體而言是有利的租稅計劃，然而例如商標之其他與行銷有關的智慧財產權資產，則不應該享有租稅優惠。該份報告主要的建議內容是，國家或益與智慧財產權之間必須要有清楚而明確的關聯。儘管這在未來也許會導致複雜的計算，但是作者仍特別指出，參與的企業仍然可能會為了要拓展來自於選擇性租稅優惠並獲益之機會，而選擇此一方案。該份報告之目的主要是為了要調和在不同的司法管轄區域或國家之間的稅收制度，而這種調和過程也可能會降低整體之複雜性。
Possible added benefits of valid patent rights Stefano John NAIP Education & Training Group / European Patent Attorney
There has been a growing interest from the field of accountancy over the last few years in intangible assets, especially IP and especially patent rights. This is because businesses have become aware that these intangible assets can be used to recover extra income for the business if used and assessed wisely.
The classic reason for any interest was in evaluating the worth of patents and patent portfolios. Evaluating the value of such assets has always been more an art than a science and, as the events involving the bankruptcy of Kodak in 2012-13 have shown, evaluating their value is even more difficult as a standalone asset. When Kodak was still an active corporation, its patent portfolio had been estimated to be over 2 billion USD. This is not too extraordinary if one considers how much was paid for Motorola Mobility’s and AOL’s IP portfolio. Yet when Kodak filed for bankruptcy a relatively short period afterwards, its entire portfolio went for less than a tenth of the estimated total. Some commentators have blamed this on an over-estimation by US banks keen on obtaining a high price for the portfolio, but the truth may be, at least partly, more prosaic. The value was much higher when Kodak was going concern; not when it was in the hands of liquidators who had to disburse its assets after liquidation to recover at least some money back (and maybe the technology had moved on in the time in between). Hence valuing patent portfolios has to always be done within a very specific window of time and relative to how it will be used.
The example of Kodak also shows that evaluating patent rights is not a simple job of evaluating the worth of an asset as just an asset that can be left to only banks and their accountants, but that it should require in depth evaluation by patent professionals.
A further reason for the growing interest in patent rights is their worth as means of reducing the tax liability for a company in a certain country. In the last couple of years, at least 12 countries have introduced tax exemption regimes (patent box) on profits that can be associated with IP rights, especially patents. The purpose of doing this was to incentivize businesses to carry out research and produce innovations which could then be protected by IP rights by businesses in that specific country with the added benefits that that practice could bring to the country as a whole. However, some companies have been accused of practising aggressive tax-avoidance by using IP rights, even patents, as income-producing assets held in low-tax areas/countries to avoid paying higher corporation tax for the same company in other areas/countries where the starting income is made. The extent to which the tax avoidance can be characterized as “aggressive” remains strictly connected to the worth of the patent and the manner in which the tax laws are drafted.
The OECD, in conjunction with the G20 group of major economies, has now recently published a detailed report on countering harmful tax practices more effectively and some of it details rules regarding tax exemption regimes for IP. Its conclusions are that tax regimes which incentivize research, such as patent rights, are, on the whole, beneficial schemes; while other marketing-related IP assets, such as trademarks, should not qualify for the tax benefits. The report's main recommendation is that there needs to be a clear link between the revenues and the IP right. While this will probably complicate such calculations in the future, the authors noted that the companies involved may still choose this in order to exploit the opportunity to benefit from an optional tax benefit. The report’s purpose is to harmonise such tax regimes among different jurisdictions and countries, and such harmonization may also lead to an overall reduction in complexity.
As a result of this report, it might be interesting to see if companies will invest more in patents and in assessing their value more with an eye on avoiding tax. One example of this changing trend regarding the worth of patents following this report is that Germany, which was critical of such tax regimes previously (especially UK’s patent-box), has now indicated it is considering introducing a similar patent box regime in Germany.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
