Assistant to Patent Attorney
The need for the registration of a program for an electronic computing machine and the database, and also the subtleties and nuances at registering them
Everyone knows that the programs for electronic computing machines and the databases are referred to the copyright subject matters and they are protected as literary works. The right to the program and the database arises from the date of its actual creation and it is being valid during the entire life of the author and during 70 years after the death of the author. Consequently, the copyrights arise automatically after the creation of the work and they do not require a mandatory state registration.
Despite this, unlike other subject matters of the copyright, the Civil Code of the Russian Federation stipulates a possibility of carrying out the registration of the programs for electronic computing machines and the databases on a voluntary basis with the Federal Service for Intellectual Property (Rospatent). In this connection, some authors of the programs quite often have a question about the need for the registration of their programs, however, having already encountered the registration of the programs with Rospatent previously, the authors know what advantages they possess.
Firstly, as a result of the state registration of the programs for the electronic computing machines and the databases, Rospatent issues a certificate for the program for the electronic computing machine/the database, which is an official document confirming that the applicant has the exclusive rights to this program and fixing the priority date (the date of its creation). The issuance of the certificate is also accompanied by entering the records on the rights to the State Register of Programs and Databases.
Secondly, the availability of the certificate allows avoiding any disputes with the authors concerning the ownership of the rights to the created program. Indeed, in the application for the registration of the program, the authors confirms by their signature the correctness of the information submitted on the fact that the right holder is an applicant, and the program is a work made for hire. Thus, if the program for the electronic computing machine/the database has been created as part of a job task and the applicant is an employer, then the availability of the certificate is especially relevant.
Thirdly, the availability of the certificate allows settling successfully the disputes with third parties, as it confirms the priority of the deposited materials (a source text) indicated in the program. In the event of the disputes on the violation of the copyright, the right holder may request in Rospatent the official copies of the deposited materials for a subsequent comparison with the counterfeit programs/the databases.
Fourthly, if you are planning a commercial use of the program, then you will have a possibility of granting a license, if it is necessary to transfer the rights of the use, what facilitates significantly signing an agreement, if the certificate is available, and it will make it possible to fix legally the basic conditions for a partial or full transfer of the own exclusive rights to the program and to limit the rights and freedoms of the licensee (the user) solely within the limits of the authority specified in the agreement.
Fifthly, the registration of the program for the electronic computing machine/the database is necessary for entering it to the company’s bookkeeping system as intangible assets, what is relevant for the proper reflection of the costs for the creation of the program in the bookkeeping and tax accounting system for the companies with a general taxation system.
One can see from the arguments given above that the need for the state registration of the program for the electronic computing machine/the database is obvious.
Now, let us find out what nuances one can be encountered, when registering the program for the electronic computing machine and the database.
In order to register the program for the electronic computing machine/the database, it is necessary to file with Rospatent an application for the state registration of the computer program, which should be executed according to the prescribed form and it should be available for downloading from the FIIP website (as well as a supplement to the application, if required), to which a document on the payment of the state fee (in the amount and the manner established by the Tax Code) and the deposited materials identifying the program, including an abstract, shall be enclosed. The maximum volume of the abstract for the registration of the program for the electronic computing machine/the database is limited to 900 symbols. It shall contain the name of the program for the electronic computing machine/the database, which is subject to be registered, the purpose, the field of the use and the functionality. If the program for the electronic computing machine/the database is included in another work as its component, then the name of this work should be given. In addition, the name of the program should not indicate to the devices, technical means, and also it should not indicate to a different subject matter of the registration. For more details of the rules for filling in the documents, please refer to the FIIP website at the appropriate section.
I would also like to note that the right holder of the program for the electronic computing machine/the database may be both a legal entity and an individual, while the application for the registration with Rospatent may be filed by both the Russian and the foreign citizens, but the latter ones will have to carry out filing through patent attorneys.
It does not take much time for the process of the state registration of the program for the electronic computing machine/the database, and in the absence of the Office’s requests, it usually takes 62 working days from the date of filing the application. Also, at the request of the applicant, the corrections may be made to the documents and/or the materials of the application before the date of the publication of the information on the program or the database, subject to the payment of a corresponding fee.
You should also pay attention to the fact that to register each program for the electronic computing machine or the database, a separate application should be filed, that is, it is not allowed filing a single application for several programs or a single application for the program for the electronic computing machine and the database together, for example, for two programs; it is necessary to file two applications, for three programs there should be three applications, etc.
According to the FIIP information, a very high percentage of issuing the certificates is traced according to the dynamics of filing the applications and the number of the registrations for the programs for the electronic computing machines and the databases. A large number of positive decisions are due to the fact that Rospatent does not analyze and check the content of the application, it does not carry out a substantive evaluation of the programs, and it is not responsible for the information provided, everything rests on the applicant.
At the end, it can be concluded that the advantages of registering the programs for the electronic computing machines and the databases with Rospatent are obvious, but it is only for the authors to decide on the need to register the programs for the electronic computing machines and the databases with Rospatent.