The decree of November 28^th 2017, published in the Official Journal on February 6^th 2018, replacing the previous inter-ministerial decree of July 30^th 2015, regulates the so-called 'Patent Box', i.e. the optional tax regime for incomes deriving from the use of software protected by copyright, industrial patents, designs and models, as well as processes, formulas and information related to experiences acquired in the legally protected commercial or scientific industrial field.

All the subjects holding business incomes can opt for the optional tax regime, on condition that they carry out research and development activities. The decree defines such activities as:

• "fundamental research, meaning the experimental or theoretical work carried out to acquire new knowledge, to be subsequently used in applied research and design activities;
• applied research, meaning the planned research to acquire new knowledge and skills, to be used to develop new products, processes or services or make improvements to existing products or processes, in any area of ​​science and technology; experimental and competitive development, meaning the acquisition, combination, structuring and use of existing knowledge and skills from a scientific, technological, commercial and other nature in order to develop new products, processes or services or improved. This definition also includes the other activities aimed at the conceptual definition, concerning new products, processes or services, and the tests and trials necessary to obtain the authorizations for the placing on the market of the products or the use of processes and services. Experimental development includes the construction of prototypes and samples, the demonstration, the creation of pilot products, the testing and validation of new or improved products, processes or services, and the construction of the plants and equipment necessary for this purpose;
• design, meaning the activities of conception, planning and development of products, processes and services, including the external appearance of them and of each of their parts;
• the creation and implementation of software protected by copyright;
• preventive research, tests, studies and interventions also aimed at the adoption of anti-counterfeiting systems, the deposit, the obtainment and maintenance of the related rights, renewal of the same at maturity, the protection of them, even in an associated form and in relation to counterfeiting prevention activities and the management of disputes and related contracts ".

The parties who can not opt ​​for the optional tax regime are the companies subject to bankruptcy and liquidation procedures, as well as to the extraordinary administration procedures for companies in crisis.

However, perhaps the biggest news brought by this decree concerns the objective scope of the facilitation: company trademarks were removed from the list of intangible assets eligible for the Patent box. In fact, as far as trademarks are concerned, only the companies that have applied for the regime in the years 2015 and 2016 can continue to benefit from the facilitation.

Starting from the financial year of 2017, the option must be exercised in the declaration of income, it has a duration of five tax periods and it is irrevocable and renewable.

Compared to Ministerial Decree July 30, 2015, the new decree contains two additional articles, dedicated to the discipline of the “Grandfathering” and the “Exchange of information for the options on trademarks”.

The grandfathering clause governs the handling of the trademark removal. In particular, it envisages that the option exercised for the first two tax periods subsequent to the one in progress as at 31 December 2014 may concern the trademarks, including the collective brands, registered or in the process of being registered. This option has a duration of five tax periods or, if requested after June 30, 2021, is valid for a shorter period and is not renewable.

Starting from 2017 and all subsequent tax periods, will have to provide in the income declarations, in addition to the standard elements, the indication of foreign countries in which are fiscally resident companies that exercise direct control over the subject itself; the related companies from which the subject has received compensation for the exploitation of the business trademarks subject of the option. The decree also specifies when the two subjects are to be considered related.

With regard to the article on the exchange of information for trademark options, the same provides for ways to ensure the spontaneous exchange of information on the options exercised for trademarks. It is expected that for countries with which the exchange of information is in force, and which are members of the Inclusive framework on Beps, the Revenue Agency must inform the tax administrations of the countries of tax residence of the controlling and related companies the name of each person who has exercised the option for trademarks. The names must be communicated within three months from receipt of the tax return relating to the tax period in which it benefited from the subsidy resulting from the use of the trademarks.