Patent Box case studies
At GovGrant we work with clients to identify patentable intellectual property assets, cost effectively manage patent applications and maximise your Patent Box corporation tax saving.
Our unique blend of in-house commercial, technical and Intellectual Property (IP) expertise enables GovGrant to offer an unparalleled service to our clients.
Here are a few examples of our recent work, illustrating how we were able to help our clients identify, protect and commercialise their IP and increase business asset value.
Click on the subject headings below to read the relevant case studies.
Packaging machinery manufacture
GovGrant had worked with a machine manufacturer to identify their R&D expenditure. We realised that this manufacturer had developed a new flow wrapping machine that was being delivered to a customer for evaluation. Even though the engineering team had made significant innovations on that equipment it hadn’t been identified as a potential patent.
GovGrant was able to advise of the the need for a Non-Disclosure Agreement between the manufacturer and their client. We were able to help negotiate this on their behalf. We also filed a patent application covering the numerous innovations contained within the machine.
The GovGrant difference: For a client who had not thought they had invented anything on the new machine, GovGrant were able to identify and protect their IP, increase company asset value and create an Patent Box opportunity.
Milking equipment manufacturer
GovGrant was handling an R&D tax relief claim for an equipment manufacturer We became aware that their European distributer wanted to launch our client’s new equipment at an upcoming industry event. This would reveal details of the innovation and intellectual property before any protection was put in place. We advised on how to protect this manufacturing innovation through filing a patent and negotiating a Non-Disclosure Agreement.
The GovGrant difference: GovGrant had to act quickly. We needed to protect our client’s IP through a Non-Disclosure Agreement, an IP audit and assessment of the innovation, the identification of patentable inventions, the drafting of a fully loaded and technically detailed patent application and filing of the patent application before our client’s innovation was made public.
For more information on Filing for patent protection before public disclosure please contact us
Under the Patent Box, a company claiming any corporation tax relief must own the patent. But, for a variety of reasons, the ownership of IP and the chain of title may not be straightforward. This can mean that companies won’t be entitled to benefit from the scheme.
The GovGrant difference: GovGrant has been able to resolve issues of ownership, effectively removing a barrier to our clients’ eligibility for tax relief under Patent box. Often the ownership issue has been a “show stopper”, but we can handle the reassignment of Patent ownership with the Intellectual Property Office. In addition we have helped clients gain formal IP assignment from subcontractors, even when the original contract did not include an IP ownership clause.
For more information on Intellectual Property ownership and chain of title please contact us
GovGrant worked with an electronics firm who qualified for R&D tax relief every year, but who had never applied for patents. GovGrant’s IP audit did, however, identify patentable innovation on a product that was already in the market. It is often assumed that once a product is in the public domain that it won’t be applicable for a patent.
The GovGrant difference: Our solution was to look for and find hidden “trade secrets” in the existing product, enabling us to draft a technically detailed, narrow scope patent application with the UK Intellectual property Office. Our client ultimately profited from both patent grant and sizeable Patent Box corporation tax relief on profits from product sales.
For more information on Patent for a product already in the market please contact us
Our client had one patent with only 1 year of patent life remaining. When GovGrantvisited the client’s facility we were able to identify a number patentable inventions around hidden and undisclosed processes and trade secrets. These featured in 80% of their products and allowed patents to be created.
The GovGrant difference: GovGrant managed the client’s Intellectual Property Office application for 3 new 20 year patents, enabling 98% of the company’s business revenue to be covered by patents. This meant that they were eligible for Patent Box corporation tax relief every year of the product’s future life. As is often then case the client had not recognised the processes or trade secrets as being inventive.
For more information on A patent with limited remaining life please contact us
Systems technology firm
GovGrant had an award winning technology client who had developed a new product, effectively it was a by-product from one of their existing technologies. They had applied to the European Patent Office but the innovation had been deemed not to be patentable.
The GovGrant difference: Although the application to the Intellectual Property Office has been submitted a number of years ago it had not yet been reviewed. We identified a technical “blade of grass“ that was contained in one line of the UK application that had not featured in the EPO application. Our IP insight, specialist skill set and the persistence of the client paid off. The Intellectual Property Office application was finally approved on its new narrow scope argument, because there was “no prior art” and because the inventive element was not obvious 3 years ago.
A glazing firm had filed for a new patent. However the process was stuck as the inventive claims were rejected and the application was deemed as withdrawn by the Intellectual Property Office.
The GovGrant difference: Our combined technical and IP expertise enabled us to identify one technical feature in every manufactured product that was shown in the patent application, but not originally deemed as an innovation by the client. We were able to resurrect the application around that one narrow feature and gain Intellectual Property Office patent grant. We also added IP asset value to the company for the owner.
For more information on Rescuing ‘Dead’ patent applications please contact us
Dairy equipment manufacturer
In working with one of our R&D scheme clients to develop and file a product patent application, GovGrant was aware that a large European supplier to their industry were interested in the clients inventive and competitively differentiating technology.
The GovGrant difference: Ownership and rights are two different things. By signing a worldwide licencing-out agreement with the supplier our client is able to increase their revenues with the Patent Box, as the interested company did not need to own the patent, but did need the rights to use it in the form of a licence.
For more information on Developing a Patent for licensing out please contact us
PVC extrusion manufacturer
A GovGrant client identified what they thought to be an innovative process used in their manufacturing cycle. GovGrant believed that this process had elements that were potentially patentable.
The GovGrant difference: In this case we identified and applied for a Patent on one inventive process step. As the inventive step affected all products during their manufacturing stage, GovGrant was able to significantly broaden the scope of revenues that went into the client’s Patent Box claim.
Contaminated land cleaning company
A land cleaning company already had a patent on one of their machines but looked to us to broaden the scope of their revenues under the Patent Box. Our strategy was to advocate for a “patented method or process”, rather than the patented machine itself. This worked on the basis that customers are in fact buying “clean earth”, it is the process rather than the machine that is inventive.
The GovGrant difference: In order to have a successful patent explanation our objective was to identify and validate a set of claims around a product and a system. This enabled a Patent Box tax relief claim for the “widget” itself as well as the “system” that manufactures and/or uses the widget. In this way the client could then claim Patent Box tax relief on all revenues generated from this patented process. As an added bonus the HMRC paid out in 2 days from Patent Box claim as the claim “fitted the box”.
For more information on Innovation Harvesting: broadening the scope of revenues that go into a Patent Box claim please contact us
A true innovator does best, what he doesn’t know best.