Many businesses in Singapore would be familiar with the Productivity and Innovation Credit (PIC) Scheme, given the attractive tax incentives that the scheme offers eligible businesses for protecting their intellectual property (IP) and enhancing their IP management strategies.
Under the PIC Scheme as it currently stands:
The Six Qualifying Activities include, in particular, registration of patents, trade marks, designs and plant varieties. Under this head, businesses were allowed to claim the tax reliefs and cash payouts for costs incurred in the filing of applications to register their IP and prosecuting the applications to grant.
However, apart from merely filing and prosecuting the applications, a business may be required to institute or defend proceedings before the relevant Registry in order to secure protection for its IP.
Take, for example, a trade mark application:
Accordingly, the costs incurred in these proceedings could also rightfully be regarded part of the costs for obtaining registration of IP.
In line with this thinking, the Intellectual Property Office of Singapore (IPOS) recently announced that the PIC scheme will now also cover costs incurred in certain IPOS proceedings including, for example, trade mark oppositions, invalidations and revocations in attempts to overcome citations by the Registrar, defending the trade mark application in an opposition after acceptance, ex parte hearings. IPOS's notice did not expressly mention patent, design and plant varieties proceedings, but these are likely to also be covered seeing as the PIC scheme also covers these other types of IP.
The PIC scheme will not cover costs incurred for proceedings that a business was party to either prior to the application for registration of its IP, or after the application has proceeded to registration or has been refused by the Registrar. Accordingly, the understanding is that the starting or defending of proceedings must be connected to the process for registering the IP.