Analyzing common mistakes when registering software with Rospatent

A computer program is a set of data and commands presented in objective form, intended for the operation of a computer and other computer devices in order to obtain a specific result, including preparatory materials obtained during the development of the computer program and the audiovisual displays generated by it.

Computer as an IP object: requirements for registration

In accordance with paragraph 1 of Article 1262 of the Civil Code of the Russian Federation, the copyright holder, during the term of the exclusive right to a computer program or a database, may, at his own discretion, register such a program or such a database with Rospatent.

Based on the results of the application review, the copyright holders receive a certificate. This certificate can be conditionally called a patent for a computer program. At the same time, according to the previously mentioned article, computer programs, including operating systems, software packages and databases do not require mandatory registration, since copyright for them arises automatically at the time of creation of the work. A computer program is equated to works of literature, science or art and is protected by copyright.

Benefits of having a certificate for a computer program

However, patent attorneys recommend registering such a program with the federal executive body for intellectual property in order to more effectively protect your interests in the event of disputes. After all, the registration certificate is, among other things, the main proof of exclusive rights to this intellectual property object, and also makes it possible to officially transfer, sell rights and actively distribute them, and also makes it possible to join the Unified Register of Russian Programs for Electronic Computers and Databases of the Ministry of Digital Development of Russia or the Register of Eurasian Software.

It should be noted that the register of Russian software and the register of Eurasian software are intended to expand the use of domestic IT products and products from the states of the Eurasian Economic Union (EAEU) in Russian government bodies. Software copyright holders are provided with measures of state support.

Materials provided for registration of a computer program

Thus, for state registration of a computer program, an application for registration is submitted, which must contain:

• a statement indicating the copyright holder (applicant), as well as the author, if he has not refused to be mentioned as such, and the place of residence or location of each of them;
• deposited materials identifying a computer program in the form of source code (code fragment) written in any programming language;
• abstract;
• a payment order confirming payment of the relevant state fee;
• a power of attorney for a representative, it must be notarized if the representative does not have the status of a patent attorney in the specialization "computer programs and databases".

In this case, the source code is deposited in a volume sufficient to unambiguously identify the program, and the choice of deposited fragments of the source code lies with the applicant; additional materials, for example, audiovisual displays generated by the program, are deposited at the request of the applicant.

Despite the fact that computer programs are not subject to verification, i.e., to an examination on the merits, as is the case with other objects of intellectual property (inventions, utility models, industrial designs), it is not always easy to send the program code to the department along with a brief description (abstract).

10 Common Mistakes Applicants Make When Submitting Documents for Computer Registration on Their Own

As a rule, when submitting an application independently, developers make a lot of mistakes. Let's look at the most common ones.

1. Indicate in the title a verbal trademark belonging to third parties. Provide unacceptable generic concepts such as: "System", "Platform", "Complex", "Method", "Algorithm", which imply the presence of a design, i.e. "hardware" or an implemented method, and not software as such.
2. Describe the conflicting grounds for the emergence of rights to the registered object: “the applicant is the author’s employer” and/or “the transfer of rights by the author or his successor to the applicant” and/or “the transfer of rights by the employer to the applicant and/or the right of inheritance”.
3. Submit a lengthy abstract containing more than 900 characters.
4. They confuse the date of creation and the date of the first release of the registered object.
5. Specify the program volume as a non-whole number, including in unacceptable units of measurement.
6. If the authors want to be indicated in the application and mentioned in the publication or want to be indicated in the application only, but do not want to be mentioned in the publication, then they do not provide the Rospatent with the original consents for the processing of personal data and consents to be mentioned in the publication from each author.
7. Incorrectly provide a brief description of the author’s creative contribution to the creation of the registered object, indicating, for example, instead of writing part of the source text, functions performed by the employee such as: preparation of technical specifications, creation of program architecture, project management, provision of technical support, which are not related to the creation of the “work” as such.
8. Do not delete personal data from the registered object.
9. The application is signed by the deputy head of the commercial organization without presenting a power of attorney (original or certified copy) or other document confirming the authority of the signatory. It should be noted that documents without the presentation of a power of attorney (original or certified copy) and its mention or other document confirming the authority of the signatory, can be submitted for registration only if they are signed by deputy ministers, deputy heads of state institutions, vice-rectors of higher education institutions and certified by the seals of organizations.
10. The fee is not paid correctly if several individuals and/or legal entities are indicated as applicants, since the amount of the fee for individuals and legal entities is different, while the amount of the state fee shares for several applicants is calculated by dividing the amount of the state fee by the number of applicants.

In connection with the above, even for such a seemingly simple procedure, we recommend contacting specialists - patent attorneys, competent interaction with whom will allow you to exclude the sending of requests for formal examination by the Rospatent and obtain a certificate for a computer program in the shortest possible time.

Before filing an application for registration of a computer, all application materials for state registration of a computer program are sent to the attorney for approval by the applicant, and only after this is the state fee paid and the application is submitted to Rospatent through the personal account of the patent attorney.

In practice, the process of reviewing an application and assigning a registration number to a computer program, if all requirements for procedures, materials and actions are correctly met, takes no more than 10 days.