The results of intellectual activity in computer programs

The results of intellectual activity in computer programs


MarketState and law

| 11/15/2020

The results of intellectual activity in computer programs

With the development of modern technologies, the number of the most diverse IT– projects. However, not all IT-companies think about the proper and
timely registration of intellectual rights to their products, services and related results of intellectual activity and means of individualization, which in their essence are the main
assets of each
IT-project. The lack of correct registration of intellectual property rights significantly complicates the company’s interaction not only with counterparties, but also with
investors, and can serve as a serious obstacle to successfully attracting investments for the development of the project. The authors of the material tell you what to think about
IT-project for
stages of launching and development when registering intellectual rights.

First of all, it is worth determining what is included in the complex of intellectual property that constitutes an intangible asset of an IT project. It usually consists of the following protected results
intellectual activity and means of individualization:

– computer programs (including the code of sites on the Internet),

– Database,

– inventions, patents and industrial designs,

– Web site,

– secrets, production (know-how),

– brand name, trademarks and service marks, commercial designations.

With this material, dedicated to the contractual registration of intellectual rights to computer programs, we begin a cycle of materials.

Computer programs

The key asset of almost any IT project is software, therefore, it is worth approaching the registration of intellectual rights to it with special care. From the point of view of legislation, any software
is an computer program (Further “PCComputer programs are subject to copyright, they are granted legal protection as literary works.
understand that any software product, including its source text and object code – an online platform, computer game, smartphone application, “firmware” of any device – from the point
view of the law is a computer program.

There are several reasons for the emergence of an IT project of exclusive rights to a PC:

– creation of a personal computer by the company’s employees;

– creation of a personal computer by attracted contractors under civil law contracts;

– Reimbursable purchase of previously created computer programs.

Creation of a computer program by company employees

If the personal computer is created by the employees of the company, then the result of the employee’s intellectual activity is considered an official work (Art. 1295 of the Civil Code of the Russian Federation). The copyright belongs to the employee and
exclusive right to the employer. At the same time, the labor contract may provide for a different procedure for the distribution of rights. However, it must be understood that the employing company needs
to obtain the exclusive right to the corresponding result of intellectual activity in full in order to be able to use it at the discretion of the company.

At the same time, there are certain nuances of the correct registration of labor legal relations with employees of IT companies. Often, in the process of legal audit of IT companies, we are faced with the fact that their
corporate lawyers follow the path of least resistance and take as a basis employment contracts with programmers standard forms of employment contracts from various databases, without taking into account
specifics of registration of relations. Therefore, for the competent registration of labor relations in an IT company, you should pay attention to the following points:

1. Labor contracts concluded with employees creating the results of intellectual activity must necessarily contain provisions that the main labor function of such an employee
is the creation of the results of intellectual activity in accordance with the instructions of the employer, and that the creation of intellectual property – in this case, the results of intellectual
activity in the form of a personal computer – is an essential obligation of the employee under the employment contract.

2. The job description must be attached to the employment contract, which prescribes the procedure for setting tasks for the employee and the competence of the employee.

3. The labor contract must provide for the procedure for transferring to the employer the exclusive right to the work created by the employee, as well as provisions on how
disposal of such a work if the employer received the exclusive right to it, but did not start using it within the period established by law (clause 2 of article 1295 of the Civil Code of the Russian Federation).

4. The employment contract must contain provisions on the payment of royalties to the employee as the author of the corresponding result of intellectual activity – which may be indicated, including
number, as a percentage of the employee’s wages.

5. If the company plans to protect itself as much as possible from unfair actions of employees, it is necessary to develop a Regulation on the company’s trade secret and introduce it into the company with its help
trade secret regime.

Creation of a computer program by involved contractors

In the event that a PC is created by a third-party contractor, then such software is considered a product created by order (1296 of the Civil Code of the Russian Federation). The exclusive right to the computer program belongs by default
to the customer. However, in the contract to be concluded, it is worth securing that the exclusive right to all results of intellectual activity created under the contract belongs by default to the customer. IN
in the absence of such provisions, the contractor will be able to use the software created under the contract for his own needs on the terms of a free non-exclusive license during the entire period of validity
exclusive right. If the created PC has significant commercial potential, then its use by a contractor-developer on the basis of such a license may harm commercial
realization of personal computers.

Also, in the concluded agreement, it is necessary to provide for the procedure for transferring exclusive rights to the created results of intellectual activity and fix the moment of transition
rights to them. In the case of a phased acceptance of work under a contract, it is advisable to complete each stage by transferring exclusive rights to the corresponding development result by signing an act
acceptance and transfer. At the end of the contract, the parties should draw up a general act of acceptance and transfer, which will fix the transfer of the exclusive right to the entire developed result
intellectual activity in full.

In addition, agreements with external contractors should include various guarantees and assurances from the developer. First of all, it is worth including the provisions that the created result
intellectual activity does not violate the exclusive rights of third parties to any intellectual property of such persons. In conjunction with such a guarantee, you can also prescribe and
responsibility for its violation in the form of contractual forfeit.

Finally, if a personal computer is ordered from an individual author, it is very important to remember that such a person has personal non-property (moral) rights, alienation and refusal of which are null and void by virtue of law.
These rights include the right of authorship and the right of the author to a name (Article 1265 of the Civil Code of the Russian Federation), the right to inviolability of a work (Article 1266 of the Civil Code of the Russian Federation), the right to publish a work (Article 1268 of the Civil Code of the Russian Federation),
the right of revocation (Art. 1269 of the Civil Code of the Russian Federation). In order for these rights not to be violated, the author’s order agreement must contain at least the following authorizations:

1. permission to publish;

2. permission to publish and use the work by the customer-rightholder both with and without indicating the name of the author at the discretion of the rightholder;

3. permission to make changes to the work, its processing and modification.

Paid purchase of previously created computer programs

Often, IT projects can use previously created PCs to create their own product. Such use must be formalized by concluding an alienation agreement with the copyright holder
exclusive right. In such contracts, the object, the rights to which are transferred (for example, the corresponding PC), as well as the procedure for the transfer of exclusive rights and
remuneration of the copyright holder. The transfer of exclusive rights under the contract must be confirmed by an act of acceptance and transfer of both the PC itself and the exclusive right to it in full.

It should be noted that a company that sells its PC to yours may also have an incorrect transfer of exclusive rights to it from third-party developers and / or employees. By
for this reason, before the company is going to purchase someone else’s PC, a full audit of the entire contractual structure associated with it (labor contracts, contract, etc.) should be carried out in order to
assess whether the selling company is the copyright holder of the PC not only in words, but also on paper.

In the following materials, we will talk about the existing ways of protecting your computer program, the correct design of individualization tools for an IT project, and models of commercial implementation
products such as licenses and SaaS. See you!

Mikhail Tretyak,

the leader IP/IT-firm practices Digital Rights FROMenter,

Daniil Fedorov,

firm lawyer Digital Rights FROMenter

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Journal: IT-News Magazine, Magazine Subscription



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