State registration of intellectual and exclusive rights. What is the validity period of the exclusive rights of the copyright holder?

There is an opinion that registering copyrights for software is nothing more than a profanity. A very common point of view, however, not without rational grain. Others are confident that the state thus confirms rights, not to mention a host of other advantages. Who is right? Let's figure it out.

Registration of exclusive rights to software in Russia, USA, EU

In Russia, state registration of rights to software products is not mandatory. In paragraph 1 of Art. 1262 Civil Code RF states that “the copyright holder may, at his own discretion, register his program or database in authorized body" This body is called Rospatent.

We are not alone here. In the United States, the requirements for mandatory registration There are also no rights to computer programs. Like us, you can voluntarily claim your rights by depositing materials in the Library of the US Congress. But if this is not done, nothing special will happen - the copyright holder will remain with his rights.

The situation is similar in European Union. Rights to software products are protected regardless of whether they are registered or not. In this regard, the Council of the EU issued a Directive on the Legal Protection of Computer Programs.

How did the registration of exclusive rights to software begin?

It may seem strange, but the approach itself began to take shape back in the 19th century, when there were no traces of computers.

On September 9, 1886, the Berne Convention for the Protection of Literary and Artistic Works was adopted (Russia joined this convention only in 1994). Literary and artistic works were understood as any products of literature, science or art, regardless of the form and method of expression. In this case, copyright in the created work arose upon the fact of its writing. The Convention excluded the need to record the fact of the emergence of a right. The author of a work was considered as such from the moment of creation of this work and had the right to demand protection of his rights until the contrary was proven.

As computers appeared and were created for them software there was a need for legal regulation programs as objects civil rights. For the first time, corresponding changes appeared in US legislation. For programs, as well as for literary and works of art, norms began to spread copyright.

This means that, as required by the Berne Convention, the author’s right to computer program arises from the moment of its creation and is not tied to state registration.

It is important to make a small digression here.

What would happen if...

Along with copyright, there is also patent law. Strictly speaking, at one time, instead of the copyright regime, the patent law regime could have been extended to computer programs. Moreover, even today there are supporters that the regulation of computer programs should be carried out within the framework of patent law.

In patent law, it is not enough to create an invention, utility model or industrial design. You still need to get a patent. And for this it is necessary that the created object meets the conditions of patentability. For example, for an invention, the conditions for its patentability are novelty, certain inventive step and industrial applicability. If the invention does not meet at least one criterion, the inventor will not receive a patent, and therefore will not be able to claim protection for his invention.

If computer programs were governed by patent law, the developer would be required to prove the patentability of his software product. Then obtain a patent, and only after that he could proudly be called the copyright holder of the rights to the computer program.

So, in accordance with the Civil Code of the Russian Federation, the rights to the created computer program arise from the moment of its creation. State registration is voluntary and only reflects the fact that the copyright holder applied to Rospatent and provided required kit documents. It would not be amiss to emphasize once again: the Rospatent inspection is of a formal nature and does not establish the novelty and uniqueness of the computer program.

Are there cases when it is necessary to contact Rospatent? Yes. If the exclusive right to the program has already been registered with Rospatent, then further transfer of the exclusive right requires state registration of such transfer. And if this is not done, the transition is considered failed.

What do we have?

State registration of exclusive rights to software does not provide absolute protection to the copyright holder and does not guarantee that the rights will not be challenged in the future. Rospatent does not establish the origin of the right to the program. By issuing a certificate of registration (as opposed to issuing a patent), Rospatent confirms that the applicant has applied and fulfilled the formal requirements.

Should we register exclusive rights to software or not?

Of course yes. Registration of the program with Rospatent will not be superfluous. There are no downsides, but there are more than enough advantages.

The state fee can hardly be called a significant obstacle (4,500 rubles for an organization and 3,000 rubles for individual), but prices for legal services may vary. However, so is the quality.

What are the advantages:

• a certificate of registration of a computer program issued by Rospatent is official document, and this is already a lot;
• software - intangible asset, for correct display in accounting of which a certificate issued by Rospatent is required;
• the costs of creating software can be taken into account when calculating taxes; capitalizing the program in accounting will help reduce the tax burden;
• in the event of a legal dispute, the one who has registered his rights with Rospatent initially has an advantage;
• the most important thing is that when submitting documents to Rospatent, a fragment is deposited source code program (there are currently no limits on the size of a fragment), and depositing will subsequently significantly help in protecting your rights to the created program.

Thus, despite the fact that registering rights to a computer program is not mandatory and does not have a title-establishing nature, it is simply necessary to do this, since the number of benefits and risks removed significantly outweigh the costs incurred.

1. In cases provided for by this Code, the exclusive right to the result intellectual activity or a means of individualization is recognized and protected subject to state registration of such a result or such a means.

The copyright holder is obliged to notify the federal authority accordingly executive power By intellectual property and the federal executive body for selection achievements (Article 1246) on changes in information about the copyright holder related to state registration of the result of intellectual activity or means of individualization: name or name, location or place of residence and address for correspondence. Risk adverse consequences in the event that such notification to the relevant federal executive body is not made or submitted false information, is borne by the copyright holder.

The federal executive body for intellectual property and the federal executive body for selection achievements may make changes to the information related to the state registration of the result of intellectual activity or means of individualization in order to correct obvious and technical errors By own initiative or at the request of any person, having previously notified the copyright holder.

2. In cases where the result of intellectual activity or a means of individualization is subject to state registration in accordance with this Code, the alienation of the exclusive right to such a result or such a means under an agreement, the pledge of this right and the granting of the right to use such a result or such a means under an agreement, and Likewise, the transfer of the exclusive right to such a result or to such a means without a contract is also subject to state registration, the procedure and conditions of which are established by the Government of the Russian Federation.

3. State registration of the alienation of the exclusive right to a result of intellectual activity or to a means of individualization under a contract, state registration of a pledge of this right, as well as state registration of the grant of the right to use such a result or such a means under a contract is carried out at the request of the parties to the contract.

The application may be submitted by the parties to the agreement or by one of the parties to the agreement. If an application is submitted by one of the parties to the agreement, one of the following documents must be attached to the application at the applicant’s choice:

a notice signed by the parties to the agreement about the disposal of the exclusive right;

an extract from the contract certified by a notary;

the contract itself.

The application of the parties to the agreement or the document attached to the application of one of the parties to the agreement must indicate:

type of contract;

information about the parties to the agreement;

the subject of the contract indicating the number of the document certifying the exclusive right to the result of intellectual activity or to a means of individualization.

In the case of state registration of the grant of the right to use the result of intellectual activity or a means of individualization, along with the information specified in paragraphs seven to nine of this paragraph, in the application of the parties to the agreement or in the document attached to the application of one of the parties to the agreement, the following must be indicated:

the duration of the agreement, if such a period is determined by the agreement;

the territory in which the right to use the result of intellectual activity or means of individualization is granted, if the territory is determined by agreement;

methods of using the result of intellectual activity provided for in the contract or goods and services in respect of which the right to use the means of individualization is granted;

the presence of consent to grant the right to use the result of intellectual activity or means of individualization under a sublicense agreement, if consent is given (clause 1 of Article 1238);

possibility of terminating the contract unilaterally.

In the case of state registration of a pledge of an exclusive right, along with the information specified in paragraphs seven to nine of this paragraph, in the application of the parties to the agreement or in the document attached to the application of one of the parties to the agreement, the following must be indicated:

validity period of the pledge agreement;

restrictions on the right of the pledgor to use the result of intellectual activity or a means of individualization or to dispose of the exclusive right to such a result or to such a means.

4. In the case provided for in Article 1239 of this Code, the basis for state registration of the grant of the right to use the result of intellectual activity is a corresponding court decision.

5. The basis for state registration of the transfer of the exclusive right to a result of intellectual activity or to a means of individualization by inheritance is a certificate of the right to inheritance, except for the case provided for in Article 1165 of this Code.

6. If the requirement for state registration of the transfer of an exclusive right to a result of intellectual activity or to a means of individualization under an agreement on the alienation of an exclusive right or without an agreement, a pledge of an exclusive right, or granting another person the right to use such a result or such a means under an agreement, the transfer of an exclusive right, is not met, the pledge or grant of the right of use is considered void.

7. In the cases provided for by this Code, state registration of the result of intellectual activity can be carried out at the request of the copyright holder. In these cases, the rules of paragraphs 2 - 6 apply to the registered result of intellectual activity and the rights to such result. of this article, unless otherwise provided by this Code.

Commentary to Art. 1232 Civil Code of the Russian Federation

1. The commented article provides for state registration of:

1) results of intellectual activity and means of individualization;

2) transactions;

3) transfer of exclusive rights without an agreement.

Not all objects of intellectual rights are subject to state registration, but only those that require such registration. For example, objects of copyright and related rights are protected regardless of any registration and completion of other formalities, as provided for Berne Convention on the protection of literary and artistic property of 1886. For exclusive rights to these objects to arise, it is sufficient that they are of a creative nature and expressed in some way objective form(oral, written, sound or video recordings, images, etc.). The copyright holder may use the copyright symbol provided for by the 1952 Universal Copyright Convention, which is placed on each copy of the work and consists of three elements: Latin letter“C” in a circle, the name of the owner of exclusive copyright, the year of first publication of the work. Different kinds registration of works and objects of related rights in non-state bodies can have evidentiary value when challenging authorship, but nothing more.

The only type of state registration of copyright objects is the registration of computer programs and databases (clause 7 of the commented article). This registration is also optional and is carried out federal body executive power on intellectual property. The applicant can be either an individual or a legal entity who has received exclusive rights to use a computer program (database) by law (by virtue of creation or by inheritance) or by agreement with the copyright holder. Such registration entails the possibility of transferring all property rights to the program (base) only by registering an agreement on the alienation of the exclusive right. Without registration, the transaction will be void. In some countries, registration of copyrighted works is necessary to ensure legal protection in the courts (for example, in the USA). German law provides that an author who publishes works anonymously or under a pseudonym can register his true name in the Register of Authors maintained by the federal executive authority in the field of intellectual property.

Objects of patent law are subject to mandatory registration, trademarks, appellations of origin of goods.

2. The transfer of rights to inventions is subject to state registration, utility models, industrial designs, trademarks, service marks. Transfer of rights is possible due to various legal facts, for example transactions, reorganizations legal entity and etc.

If the basis for registration is an agreement, registration is carried out by registering the agreement.

When inheriting, the basis is a certificate of the right to inheritance, with the exception of the division of property between heirs on the basis of an agreement. In this case, the agreement may be such a basis.

In addition, the basis for registration may be a court decision.

On state registration, see also comments to Art. 1234, 1235, 1262, 1353, 1369, 1393 - 1397, 1402, 1414, 1439, 1452, 1460, 1480, 1490, 1492 - 1507, 1511, 1518, 1522 - 1534.

3. Clause 2 of the commented article provides for state registration of a pledge of an exclusive right. Part four of the Civil Code of the Russian Federation does not examine in detail the agreement of pledge of an exclusive right, mentioning it only in two more articles 1233 and 1452.

Foreclosure of the collateral is carried out in accordance with Federal law dated October 2, 2007 N 229-FZ “On Enforcement Proceedings”.

The pledge of exclusive rights, primarily patent rights, is provided for by the laws of Great Britain, France, Canada, the USA and some other countries. The most developed are the rules on bail patent rights Netherlands. Many countries have real opportunity obtain a loan secured by exclusive rights. For example, the assets of many computer software companies often include copyrights and trademark rights, so when obtaining a loan, such companies may present rights to the results of intellectual and related activities as security for their rights. At the same time, it is possible to register transactions with objects industrial property V state register, which guarantees the rights of both parties, but does not protect the creditor from the risk of cancellation of rights at the request of third parties (for example, if it later turns out that the trademark was registered with violations).

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Patent law foreign countries. In 2 volumes. T. 1. M., 1987. P. 175, etc.

Transfer of rights and use of intellectual property / Comp. L.G. Kravets. M., 2000. P. 59.

The French Intellectual Property Code provides special norms on the pledge of the right to use the software. According to Art. L. 132-34 the pledge must be registered in a special register kept National Institute industrial property. The entry specifies the precise basis for protection, in particular the source texts and working documents. In Austria and the USA, it is not the exclusive rights, but the patent itself as movable property is the subject of a pledge. The pledge transaction must be registered with the Patent Office.

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US Code of Laws. Part III. Patents and patent rights protection.

The procedure for transferring the right to a Eurasian application or a Eurasian patent, approved by Order of the Eurasian Patent Office of January 18, 2002 No. 2, provides for a pledge agreement for the right to a Eurasian application. The right of pledge arises from the date of concluding the pledge agreement, and the pledge of the right to a Eurasian patent - from the date of concluding the pledge agreement or from the date specified in the pledge agreement, including the date of transfer of the Eurasian patent to the pledgee or to the Eurasian patent office. At the same time, registration of a pledge is voluntary and is carried out on the initiative of interested parties. The essential terms of such an agreement are the subject of the agreement and its assessment, the essence, size and period of fulfillment of the obligation secured by the pledge, as well as an indication of where the Eurasian patent is located. A pledge of the right to an application, unlike exclusive rights, is not provided for in the Civil Code of the Russian Federation.

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Patents and licenses. 2002. N 3.

Personal moral rights authors and performers cannot act as collateral. Property rights to the results of intellectual activity and means of individualization act as a subject of pledge, provided that they can be alienated from their copyright holder. Thus, the right to use the appellation of origin of goods, the right of succession in relation to works of art and other non-transferable rights cannot be the subject of a pledge.

Others intellectual rights, provided for in Art. 1226 of the Civil Code of the Russian Federation cannot be the subject of a pledge due to their limited negotiability.

Part four of the Civil Code of the Russian Federation regulates only the pledge of an exclusive right as a whole, without providing for the possibility of dividing these rights as initial ones, but without prohibiting the foreclosure of derivative rights of use received by the licensee under a license agreement (paragraph 2, paragraph 1, article 1284 of the Civil Code) . Despite the fact that the Civil Code of the Russian Federation does not directly prohibit such agreements, based on the meaning of the exclusive right as absolute, representing a single object, the pledge of individual powers is not provided for.

The basis for the pledge of exclusive rights is an agreement. The pledge of property rights can be carried out either separately from other property or as part of certain property, for example, an enterprise as a property complex.

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Only subject to state registration of the result of intellectual activity is the exclusive right to this result or a means of individualization of legal entities protected. Alienation of rights under a contract, pledge of this right, and transfer under a contract are also subject to state registration. The procedure and conditions for registration are established by the Government of the Russian Federation. In this case, the corresponding agreement is subject to registration. In the case of a compulsory license, the basis for state registration is a court decision. The basis may also be a certificate of the right to inheritance (in case of transfer of the exclusive right by inheritance). The exception is common shared ownership. In this case, the division occurs by agreement of the parties. Failure to comply with the requirement for state registration of an agreement on the alienation of the exclusive right to the result of intellectual activity entails the invalidity of such an agreement. If the requirement for state registration of the transfer of an exclusive right without an agreement is not met, such transfer is considered failed.

2. Disposal of the exclusive right to the result of intellectual activity

2.2. License agreement.

2.3. Transfer of exclusive rights to third parties without an agreement.

2.4. Organizations carrying out collective management of copyright and related rights.

2.1. Agreement on alienation of exclusive rights.

Under the agreement on alienation of exclusive rights one party transfers or undertakes to transfer its exclusive right to the result of intellectual activity or a means of individualization in in full the other side.

Parties to the agreement- copyright holder and acquirer. A person who has an exclusive right acts as a copyright holder. Initially this right arises from the author, but it can, by virtue of law or contracts, pass to other persons. It is necessary to note that several persons may have an exclusive right to a result of intellectual activity or a means of individualization; when concluding an agreement in relation to such an object, a plurality of persons is formed on the side of the right holder.

Form of agreement. The agreement is concluded in writing and is subject to state registration. Failure to comply with these conditions results in the invalidity of the contract. The essence of the agreement is as follows. The acquirer pays the copyright holder the remuneration specified in the contract. If the amount of remuneration is not specified in the contract, the contract is considered not concluded. The exclusive right to the result of intellectual activity passes to the acquirer from the moment the contract is concluded. If the agreement is subject to registration, then from the moment of registration. If an agreement is concluded on the alienation of the exclusive right to inventions, utility models, industrial designs, selection achievements, registered topologies integrated circuits

, registered computer programs and databases, trademarks, then the agreement is subject to state registration. If the acquirer violates the terms of the agreement on the payment of remuneration, the copyright holder has the right to demand in court the transfer of the rights of the acquirer of the exclusive right and compensation for damages if the exclusive right has been transferred to the acquirer. If it has not been transferred, then the copyright holder may unilaterally repudiate the contract and demand compensation for losses caused by the disposition of the contract.

1) significant,

2) ordinary and random. Essential conditions – these are the conditions necessary and sufficient for concluding a contract. If the agreement is essential conditions

the agreement is not reached, the agreement is considered not concluded. Essential terms are:

Item. IN this type The subject of the contract is the exclusive right; other property and especially non-property rights cannot be the subject. The subject of the contract should be determined as much as possible by indicating the object of law. If the object of law is not specified, then the subject of the contract will not be specified.

Reward amount. If the contract does not indicate that it is gratuitous, then it is compensated. According to Part 2, Clause 3, Art. 1234 of the Civil Code of the Russian Federation in the absence of compensation agreement on the alienation of an exclusive right, the conditions on the amount of remuneration or the procedure for determining it, the contract is considered not concluded. At the same time, the rules for determining the price provided for in paragraph 3 of Art. 424 of the Code do not apply.

In addition, the exclusive right may be encumbered. That is, the copyright holder can grant the right to use to third parties by concluding licensing agreements with them or an agreement on the pledge of an exclusive right. Such an encumbered exclusive right may act as the subject of an agreement on the alienation of the exclusive right. The only exception is a clause in the agreement on the pledge of an exclusive right stating that this right cannot be alienated. If, despite such a clause in the pledge agreement, the copyright holder concludes an agreement on the alienation of this right, then the alienation agreement on the basis of Art. 168 of the Civil Code of the Russian Federation must be declared invalid and the consequences of the invalidity of the contract must be applied accordingly.

The parties to the agreement are the copyright holder and the acquirer. A person who has an exclusive right acts as a copyright holder. Initially, this right arises with the author, but it can, by virtue of law or contracts, pass to other persons. It is necessary to note that several persons may have an exclusive right to a result of intellectual activity or a means of individualization; when concluding an agreement in relation to such an object, a plurality of persons is formed on the side of the right holder.

Exclusive rights on different objects intellectual property arise differently. On objects of copyright and related rights, as well as on the topology of integrated circuits, they arise due to the creation of the intangible object. In order for them to be provided legal protection, no procedures are required.

And for objects of industrial property: inventions, utility models, industrial designs, as well as breeding achievements, trademarks, brand names and appellations of origin of goods - an exclusive right arises due to its recognition by the state. It's about on state registration, which is possible if there are appropriate conditions for protection. In this case, the exclusive right is certified by an appropriate document - a patent or certificate, or is otherwise documented. And if the exclusive right to an object of intellectual property arises by virtue of its recognition by the state, by virtue of state registration, then everything that happens next with this right (alienation, granting the right to use the object, pledge), in principle, should be subject to state registration. This is established by paragraph 2 of Article 1232 of the Civil Code. But there is one interesting detail here. If in relation to almost all objects of industrial property state registration of the object itself and the rights to it is mandatory, then in relation to three types of objects it is optional. These are computer programs, databases and topologies of integrated circuits. You can register them or not, this is determined solely by the will of the author. In my opinion, such a system is not very successful and not well thought out. But nevertheless, it existed before the fourth part of the Civil Code, and we did not dare to change it. We simply tried to draw normal conclusions from the relevant rules. After all, what is state registration for? Firstly, in order for the state to carry out this act of recognition of the exclusive right to the result of intellectual activity or to a means of individualization, it certifies that this object is subject to legal protection. Secondly, state registration makes it possible to check who actually owns the exclusive right to specific object whether it is burdened with any rights of third parties or not. You need all this information if you want to acquire the exclusive right or right to use this object. And with regard to many objects of industrial property, in particular with regard to inventions and trademarks, this is what happened and is happening. But in relation to objects whose state registration is voluntary, for example computer programs, nothing like this happened. The program could be registered in voluntarily, but register licensing agreements, agreements on the complete transfer of the exclusive right to a registered program were not required by law. The issue of registering databases was also resolved. And it's a little different with respect to integrated circuit topologies. Registration of these objects was carried out on a voluntary basis, and agreements on the transfer of the right to use them were also registered. But if the exclusive right to a registered topology was alienated, then such an agreement was subject to mandatory state registration. Those who worked on the draft of part four of the Civil Code tried to bring the idea of ​​state registration to its logical conclusion. Therefore, initially the draft included a provision that if you voluntarily registered the exclusive right to a computer program, database or topology, then you are also required to register all subsequent transactions related to this right so that information about them is contained in the relevant register. At the same time, we proceeded from the fact that since registration exists, since we give the opportunity to third parties intending to make some transactions regarding this right, to establish who is the owner of this right, then we need to bring this logic of the legislator to the end. Make it so that relevant register it was possible to find out exactly whether, after the initial registration, the exclusive right to these objects had passed to third parties, whether it was encumbered with a pledge, how many and for what period of licenses had been issued for the right to use these objects. After all, all this information is very significant. However, our aspiration was a 50 percent failure. As intended, only that which is associated with exclusive rights to the topologies of integrated circuits is registered. If the topology is registered, albeit on a voluntary basis, then agreements on the alienation and pledge of the exclusive right to the topology, and licensing agreements, and the transfer of the exclusive right to the topology without an agreement must be registered. This information is entered into the Register of Topologies on the basis of registered agreements or other documents of title, such as certificates of inheritance. And with regard to computer programs and databases, only paragraph 5 of Article 1262 of the Civil Code has been preserved, which obliges to register only agreements on the alienation of the exclusive right to registered computer programs and databases, as well as the transfer of the exclusive right to third parties without an agreement. Neither license agreements nor pledge agreements for the exclusive right to these objects need to be registered. Thus, general norm paragraph 6 of article 1232 of chapter 69 " General provisions"The fourth part of the Civil Code, obliging the registration of all transactions regarding the result of intellectual activity registered, even voluntarily, does not work in relation to computer programs and databases. Clause 5 of Article 1262 of the Civil Code