FAVOURABLE TAX REGIME PROVIDED UNDER PATENT BOX DECREE ALSO APPLIES TO SOFTWARE UPDATES

14/03/2017

With resolution no. 28/E the Agency responds affirmatively with regard to a query put forward by a computer software company concerning the possibility of applying the favourable tax regime provided under the Patent Box Decree to incomes deriving from activities involving the concession of use of the product, where such activities involve implementation, update, personalization and customization of the software, considering that the norm compulsorily requires the undertaking of research and development activities.


 

Article 1, paras 37 to 45, of the Law of 23 December 2014, no. 190 (so-called “Financial Act 2015”) provides for an optional favourable tax regime (so-called “Patent Box”) for incomes deriving from use of “software protected by copyright, patents, trademarks, designs and models, as well as processes, formulae and information concerning experience acquired in the industrial, commercial or scientific field that are legally protected” with the objective of incentivizing investments in the fields of research and development. This optional regime is regulated by Decree of the Minister for Economic Development, in concert with the Ministry for Economic Development and Finances of 30 July 2015 (so-called “Patent Box Decree”).

A company specialized in software development asked the Italian Revenue Agency for clarifications with regard to the proper identification of activities that may considered favourably from a tax standpoint; in particular, the applicant asked whether it is correct to consider subject to said favourable tax regime the activities involving initial licensing, assistance and maintenance fees, realization of so-called modifications of application software developed by the above mentioned company and registered at the Special Public Register for Computer Programmes held at the SIAE.

The Revenue Agency clarified that software protected by copyright is one of the immaterial assets which allow companies to benefit from the optional favourable tax regime. That includes all computer programs in whichever form they are expressed as long they are the original product of the intellectual creation of the author. Secondly, the Agency confirmed that the activity involving concession of use of the right to utilize immaterial assets is subject to the aforementioned regime; on this point, the Agency emphasized that in order to accede to that regime, in compliance with the so-called “nexus approach”, the company must undertake activities of development, maintenance and enrichment of the software concretely carried out via the implementation, update, personalization and customization of the software. The Agency also specified that activities like staff training, basic help desk of so-called “second level”, telephone support, the periodic fee for use of application software in the cloud, etc. – which involve a purely instrumental use of the software, that fall outside the scope of its protection – do not fall within the favourable tax regime in so far as they do not represent an exclusive use of authorial prerogative.

FAVOURABLE TAX REGIME PROVIDED UNDER PATENT BOX DECREE ALSO APPLIES TO SOFTWARE UPDATES

14/03/2017

With resolution no. 28/E the Agency responds affirmatively with regard to a query put forward by a computer software company concerning the possibility of applying the favourable tax regime provided under the Patent Box Decree to incomes deriving from activities involving the concession of use of the product, where such activities involve implementation, update, personalization and customization of the software, considering that the norm compulsorily requires the undertaking of research and development activities.


 

Article 1, paras 37 to 45, of the Law of 23 December 2014, no. 190 (so-called “Financial Act 2015”) provides for an optional favourable tax regime (so-called “Patent Box”) for incomes deriving from use of “software protected by copyright, patents, trademarks, designs and models, as well as processes, formulae and information concerning experience acquired in the industrial, commercial or scientific field that are legally protected” with the objective of incentivizing investments in the fields of research and development. This optional regime is regulated by Decree of the Minister for Economic Development, in concert with the Ministry for Economic Development and Finances of 30 July 2015 (so-called “Patent Box Decree”).

A company specialized in software development asked the Italian Revenue Agency for clarifications with regard to the proper identification of activities that may considered favourably from a tax standpoint; in particular, the applicant asked whether it is correct to consider subject to said favourable tax regime the activities involving initial licensing, assistance and maintenance fees, realization of so-called modifications of application software developed by the above mentioned company and registered at the Special Public Register for Computer Programmes held at the SIAE.

The Revenue Agency clarified that software protected by copyright is one of the immaterial assets which allow companies to benefit from the optional favourable tax regime. That includes all computer programs in whichever form they are expressed as long they are the original product of the intellectual creation of the author. Secondly, the Agency confirmed that the activity involving concession of use of the right to utilize immaterial assets is subject to the aforementioned regime; on this point, the Agency emphasized that in order to accede to that regime, in compliance with the so-called “nexus approach”, the company must undertake activities of development, maintenance and enrichment of the software concretely carried out via the implementation, update, personalization and customization of the software. The Agency also specified that activities like staff training, basic help desk of so-called “second level”, telephone support, the periodic fee for use of application software in the cloud, etc. – which involve a purely instrumental use of the software, that fall outside the scope of its protection – do not fall within the favourable tax regime in so far as they do not represent an exclusive use of authorial prerogative.

FAVOURABLE TAX REGIME PROVIDED UNDER PATENT BOX DECREE ALSO APPLIES TO SOFTWARE UPDATES

14/03/2017

With resolution no. 28/E the Agency responds affirmatively with regard to a query put forward by a computer software company concerning the possibility of applying the favourable tax regime provided under the Patent Box Decree to incomes deriving from activities involving the concession of use of the product, where such activities involve implementation, update, personalization and customization of the software, considering that the norm compulsorily requires the undertaking of research and development activities.


 

Article 1, paras 37 to 45, of the Law of 23 December 2014, no. 190 (so-called “Financial Act 2015”) provides for an optional favourable tax regime (so-called “Patent Box”) for incomes deriving from use of “software protected by copyright, patents, trademarks, designs and models, as well as processes, formulae and information concerning experience acquired in the industrial, commercial or scientific field that are legally protected” with the objective of incentivizing investments in the fields of research and development. This optional regime is regulated by Decree of the Minister for Economic Development, in concert with the Ministry for Economic Development and Finances of 30 July 2015 (so-called “Patent Box Decree”).

A company specialized in software development asked the Italian Revenue Agency for clarifications with regard to the proper identification of activities that may considered favourably from a tax standpoint; in particular, the applicant asked whether it is correct to consider subject to said favourable tax regime the activities involving initial licensing, assistance and maintenance fees, realization of so-called modifications of application software developed by the above mentioned company and registered at the Special Public Register for Computer Programmes held at the SIAE.

The Revenue Agency clarified that software protected by copyright is one of the immaterial assets which allow companies to benefit from the optional favourable tax regime. That includes all computer programs in whichever form they are expressed as long they are the original product of the intellectual creation of the author. Secondly, the Agency confirmed that the activity involving concession of use of the right to utilize immaterial assets is subject to the aforementioned regime; on this point, the Agency emphasized that in order to accede to that regime, in compliance with the so-called “nexus approach”, the company must undertake activities of development, maintenance and enrichment of the software concretely carried out via the implementation, update, personalization and customization of the software. The Agency also specified that activities like staff training, basic help desk of so-called “second level”, telephone support, the periodic fee for use of application software in the cloud, etc. – which involve a purely instrumental use of the software, that fall outside the scope of its protection – do not fall within the favourable tax regime in so far as they do not represent an exclusive use of authorial prerogative.

LA TASSAZIONE AGEVOLATA PREVISTA DAL DECRETO PATENT BOX SI APPLICA ANCHE AGLI AGGIORNAMENTI SOFTWARE

14/03/2017

Con risoluzione n. 28/E l’Agenzia risponde positivamente al quesito proposto da una società attiva nel settore della produzione di programmi per elaboratori elettronici circa l’applicabilità del regime di tassazione agevolata stabilito dal Decreto Patent Box ai redditi derivanti da attività di concessione in uso del prodotto, qualora consistano in attività di implementazione, aggiornamento, personalizzazione e customizzazione del software, in considerazione dell’obbligatorietà, prevista dalla norma, di svolgere un’attività di ricerca e sviluppo.


 

L’articolo 1, commi da 37 a 45, della legge 23 dicembre 2014, n. 190 (c.d. “legge di stabilità 2015”) prevede un regime opzionale di tassazione agevolata (c.d. “Patent Box”) per i redditi derivanti dall’utilizzo di “software protetto da copyright, da brevetti industriali, da marchi d’impresa, da disegni e modelli, nonché da processi, formule e informazioni relativi ad esperienze acquisite nel campo industriale, commerciale o scientifico giuridicamente tutelabili”, con lo scopo di incentivare gli investimenti in attività di ricerca e sviluppo.

Tale regime opzionale è stato disciplinato con decreto del Ministro dello Sviluppo Economico, di concerto con il Ministero dello Sviluppo Economico e delle Finanze del 30 luglio 2015 (c.d. “Decreto Patent Box”).

Una società attiva nello sviluppo di software ha chiesto chiarimenti all’Agenzia delle Entrate in merito alla corretta individuazione delle attività che potrebbero considerarsi agevolabili; ed in particolare l’istante ha chiesto di conoscere se fosse corretto considerare assoggettabili alla tassazione agevolata le attività di licenza iniziale, canoni di assistenza/manutenzione, realizzazione delle c.d. modifiche del software applicativo dalla stessa sviluppato e registrato presso il Registro Pubblico Speciale Programmi per Elaboratore tenuto dalla SIAE.

L’Agenzia delle Entrate ha in primo luogo chiarito che, tra i beni immateriali che consentono alle imprese di accedere a tale regime opzionale di tassazione, vi è anche il software protetto da copyright – per tale intendendosi tutti i programmi per elaboratore in qualunque forma espressi purché originali quale risultato di creazione intellettuale dell’autore. In secondo luogo l’Agenzia ha confermato che l’attività di concessione in uso del diritto all’utilizzo dei beni immateriali è agevolabile; sul punto ha sottolineato, inoltre, che per potere godere del regime di tassazione agevolato la società, in osservanza del principio del c.d. “nexus approach”, deve svolgere attività di sviluppo, mantenimento ed accrescimento del software che si sostanzino in attività di implementazione, aggiornamento, personalizzazione e customizzazione del software. L’Agenzia ha infine specificato che le attività come la formazione del personale, il basic help desk di c.d. “secondo livello”, il supporto telefonico, il canone periodico per l’utilizzo di software applicativi in cloud, ecc. – che configurano una forma puramente strumentale all’utilizzo del software, estranea al perimetro della sua tutela – non costituiscono attività agevolabili in quanto non rappresentano un esercizio esclusivo di una prerogativa autoriale.

PAYMENT OF COMPENSATION IN CASES OF UNLAWFUL ANTITRUST DAMAGE: ENACTMENT OF THE NEW LEGISLATIVE DECREE N. 3/2017

08/03/2017

On 3 February 2017 the new legislative decree no. 3/2017 came into force. The new decree implements directive 2014/104/EU and regulates claims for compensation in cases of infringement of the right to fair competition caused by a company or an association of companies. The decree introduces new and relevant elements with regard to the procedural requirement of legitimacy to commence proceedings, the payable damages, the efficacy of the AGCM decision and territorial competence.


 

By means of decree no. 3/2017, a new set of rules has been introduced which, both with regard to the substantive and procedural law, regulates claims for payment of compensation in cases of infringement of the laws on fair competition.

To begin with, the decree regulates “the right to compensation in favour of whosoever has suffered damage deriving from an infringement of the right to fair competition”. Included within that definition – in accordance with art. 2 of the decree – are articles 101 and 102 of the Treaty on the Functioning of the European Union and articles 2, 3 and 4 of Law no. 287/1990 (concerning unlawful agreements and abuse of a dominant position), as well as any other provision, national or European, aimed at achieving the same objectives established for the above mentioned norms.

Proceedings may be commenced by any person, natural or legal, or entity without legal personality, who has suffered damage caused by an infringement of the right to fair competition. More precisely, legitimacy to commence proceedings will be accorded both to the direct and indirect acquirers of the author of the infringement. The decree, therefore, implements the principles providing for a wide legitimacy to commence proceedings, which has already been recognised by European case law.

With regard to the claim for compensation, the decree clarifies that, firstly, it includes actual damage, loss of profits and interests, but excludes so-called punitive damages which exist in certain Anglo-Saxon jurisdictions. The decree also provides that compensation must be determined on the basis of arts. 1223, 1226 and 1227 of the civil code. In this regard, the following should be observed: i) the judge may ask for assistance from AGCM by formulating specific requests concerning the tendencies followed in cases of quantification of damages; ii) the judge may also ask for assistance on the issue of existence of the damage caused by an infringement of the right to fair competition, where said infringement involves a cartel.

The rules on the order of exhibition are also particularly relevant. They seek to overcome information asymmetry which is the main impediment for the obtainment of compensation by parties that have suffered antitrust damages. Upon petition filed by the parties, the judge may order the exhibition of evidence that he or she considers relevant not only to the parties concerned as well as to other third parties, but also to the competition authority (with regard to evidence contained in the file of the proceedings). The judge may proceed in such way with reference to the competition authority only in a residual case, that is when neither the parties nor the third parties can reasonably provide evidence, and provided that the order is considered proportionate.

An additional and important novelty is represented by the evidentiary efficacy of the decisions taken by the competition authority, which have already been considered by the case law. Pursuant to art. 7 of the decree, the infringement of the right to fair competition can be considered definitively ascertained, with respect to the author, when it has formed object of a decision of the AGCM that has become definitive. Such ascertainment is binding with regard to the nature of the violation and its extent, although issues related to the causal link and existence of the damage are excluded, as they will need to be proven by the claimant and ascertained by the court.

In that regard, finally, said proceedings will fall within the non-derogable competence of the Intellectual Property Divisions and will be dealt with exclusively by the courts of Milan, Rome and Naples.