In the course of activity of any company engaged in the development of computer programs, intellectual property objects arise. Since the value of developed programs and IT solutions is only growing and often occupies a significant share of all intangible assets of the company, it is very important to properly register the rights to intellectual property objects.

To begin with, it is necessary to determine the type of intellectual property objects that are created by the company and are subject to protection. Thus, practically every program has its own program code, database, audiovisual works resulting from the program’s operation. All of them must be protected both from misuse by external users and by the company’s employees involved in the development of the program.

A typical scheme for the creation and transfer of rights to an intellectual property object is as follows:

1. Initially, all rights to an intellectual property object arise from the company’s employees involved in its development.

Copyright rights to a computer program (including the right of authorship, the right to a name, and the exclusive right) arise in its creator from the moment the program is created in objective form as a result of creative work. This order of rights arising extends to any part of the work [1].

Registration of computer programs and databases is not required [2], as copyrights to them and related rights to databases arise and are subject to protection regardless of registration. However, it is possible at the request of the right holder during the entire period of validity of the exclusive right.

Any works, both completed and unfinished, shall be subject to protection on the basis and in accordance with the procedure provided for in Part Four of the Civil Code of the Russian Federation [3].

Thus, any part of a computer program or part of a database is protected from the moment of its creation as an independent work. Employees of the development company involved in the creation of the program must transfer the exclusive rights to their employer. Otherwise, further use of the program or its part cannot be considered legal.

Fixing the transfer of exclusive rights to an intellectual property object created by an employee is extremely important. The following set of documents must be drawn up to fully secure the employer’s rights:

  • An employment contract containing intellectual property provisions.
  • A job description with a full list of job responsibilities of developers [4].
  • Regulations on the Procedure for Determining the Amount and Payment of Remuneration to Authors of Official Works [5].
  • An order to create a service work and appoint a commission (responsible person) for its development.
  • Monthly progress report, including work on the creation of intellectual outputs [6].
  • Report on the creation of service work created in accordance with the work assignment.
  • Certificate of acceptance of service work.

It should be borne in mind that if the employer does not begin to exercise his right to use the official work within 3 years, he is deprived of this right (paragraph 2 of Article 1295 of the Civil Code of the Russian Federation).

2. A development company transfers rights to created programs and IT solutions to users.

In this case, the purpose of the transfer may be different, for example, when granting access to the program for a limited period of time, a license agreement is concluded, while an exclusive rights transfer agreement is used to transfer the rights to the program in its entirety.

The following contractual constructions are the most suitable for the purposes of the developer’s activity:

  • Author’s contract [7];
  • License agreement [8];
  • Exclusive rights alienation agreement [9].

Each of the contracts may be applied by the parties depending on the purpose of their conclusion.

The differences between the contracts are summarized in Table No. 1.

Table No. 1

Criterion License agreement Contract of author’s order Exclusive rights alienation agreement
Transfer of exclusive rights The RIA (result of intellectual activity) is retained by the manufacturing company. RIA is transferred completely or partially. RIA is transferred completely.
The moment of transaction conclusion Signed after creating RIA Signed before creating RIA Signed after creating RIA
Taxation Where a license agreement is concluded in respect of rights to use intellectual property objects which are not exempt from VAT under subparagraphs 26 and 26.1 of paragraph 2 of Article 149 of the Tax Code of the Russian Federation, the licensor’s services relating to such a transfer are subject to VAT (subparagraph 1 of paragraph 1 of Article 146 of the Tax Code of the Russian Federation). Taxation is performed at the rate of 20 percent (paragraph 3 of Art. 164 of the Tax Code of the Russian Federation). If the contract includes provisions on the emergence of exclusive rights of the contractor and their realization to the customer (paragraph 3 of Art. 1288, paragraph 1 of Art. 1296 of the Civil Code of the Russian Federation), the realization in this part will not be subject to VAT. If the exclusive rights are not transferred, the taxation is carried out in the general order.

 

 VAT at the 0% rate applies to the transfer of rights to computer programs and databases included in the unified register of Russian computer programs and databases and (or) the unified register of the results of scientific research, experimental design and technological work for military, special or dual use.

It is important to correctly formulate the subject matter of the agreement, as well as the scope of the rights to be transferred and the remuneration for their transfer.

Court practice shows that complications and disputes may arise from any of the above provisions, and therefore in each case a detailed legal elaboration of the contract and the scheme of interaction with users is required.

[1] Article 44, part 1, of the Constitution of the Russian Federation.
[2] Article 1296, paragraph 1, of the Civil Code of the Russian Federation.
[3] Resolution of the Plenum of the Supreme Court of the Russian Federation of 23.04.2019 № 10 “On the application of Part Four of the Civil Code of the Russian Federation”.
[4] Required in order to confirm the existence of the employee’s obligation to create intellectual property objects (Determination of the Judicial Board for Civil Cases of the Supreme Court of the Russian Federation of June 25, 2013 N 19-APG13-1).
[5] In the absence of the said Regulation, the remuneration for the official work will be calculated by the court independently, which may cause the remuneration to be overstated (Article 1295.2 of the Civil Code of the Russian Federation).
[6] Clauses 3 to 6 must be drawn up to confirm the creation of an official work within the framework of labor activity. Otherwise, there is a risk that the work will be recognized as non-service work, with exclusive rights arising for the employee (Appellate ruling of the St. Petersburg City Court of 08.04.2019 No. 33-7991/2019 in case No. 2-2255/2018, Appellate ruling of the Moscow City Court of 22.01.2018 in case No. 33-2255/2018).
[7] Article 1288 of the Civil Code of the Russian Federation.
[8] Article 1235 of the Civil Code of the Russian Federation.
[9] Articles 1232, 1233, 1234 of the Civil Code of the Russian Federation.