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Patent Box and UK secrecy orders

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This is not just any box. This is an HMRC Patent Box

The interaction between the Patent Box regime and UK patent applications subject to directions under section 22 of the Patents Act may seem like a bit of a niche interest area, but never let it be said that IPcopy isn’t willing to poke into the darkest, dustiest corners of IP trivia to get to the truth….

When I joined the patent profession I worked for the Ministry of Defence’s Intellectual Property Department. That fact means that whenever someone runs into a question about the defence industry, Defcons or whether patent applications that are subject to “secrecy orders” can take advantage of the patent box regime all eyes seem to turn towards me.

So, the question having been asked, I did some digging….

The Patents Act 1977 allows for patent applications filed at the UKIPO to be made subject to directions prohibiting or restricting the publication of the information contained therein. This is the so-called section 22 “secrecy order” and it may be applied to information that is either prejudicial to the defence of the realm or to the safety of the public.

Where a section 22 order is in place the patent application can proceed to the stage where it is in order to grant but it is not published and no patent shall be granted unless the order is lifted.

The patent box regime is covered by a new Part 8A to the Corporation Tax Act 2010 which states (s. 357BB(1)) that it applies to patents granted under the UK Patents Act or the European Patent Convention, certain other nationally granted patents, supplementary protection certificates, plant breeders’ rights granted in accordance with Part 1 of the Plant Varieties Act 1997 and Community plant variety rights under Council Reg (EC) No 2100/94.

So on the face of it it’s looking a little grim for patent applications that are subject to section 22 orders. However, fear not because the very next sub-section states that where

1) Directions are in force under section 22 of the Patents Act 1977, and

2) the Applicant has been notified under section 18(4) of the Patents Act that the application complies with the requirements of the Act and the rules, then

the person is to be treated for the purposes of this Part as if the person had been granted the patent under that Act.

So, if you’re really interested in looking into the patent box but you’re worried that your application may be caught by section 22, then fear not. You won’t miss out!

How many applications might this apply to I hear you wonder. Well according to the UKIPO figures for 2011 and 2013 (see page 12 of the report here) a massive total of 42 patent applications out of 15370 applications in 2012 were made the subject of directions under section 22. Out of this total of 42 applications, all of them came from the defence industry. Told you this post was niche!

Mark Richardson   20 May 2014

Further reading

– New Scientist “UK Keeps three times as many patents secret as the US

– HMRC “The Patent Box

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