Expertise/Intellectual Property

Service

Registration of Computer Programs and Databases

A computer program or database is filed for registration with Rospatent to confirm officially who owns it, and the rights to it are vested in the company before filing.

We are most often instructed by:

  • Companies whose development work was carried out by employees and contractors
  • Rights holders preparing for a transaction, the entry of an investor or a dispute
  • Database makers that have invested in the contents of their databases

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
Why obtain a certificate

The right to a computer program or database arises when it is created, and registration with Rospatent is at the rights holder's discretion. A certificate of state registration provides ready-made evidence: the register's details of the rights holder, the author and the date are presumed accurate until proven otherwise. Without a certificate, ownership is proved by the history of creation – correspondence, contracts, interim versions – and it is these materials that are examined in a dispute.

In a transaction, the certificate shows the counterparty, investor and bank who holds the rights to the computer program.

When a company is acquired or an investor is brought in, the rights to key programs are checked separately: who created them, whether relationships with employees and contractors have been documented, and whether they retain any grounds to claim rights later. A certificate does not resolve these questions, since the information in the application is provided by the applicant itself. An incomplete chain of title reduces a company's value more than the absence of registration, and gaps in it are closed before filing.

Registration does not require the computer program to be disclosed in full. The application includes materials by which the subject matter can be distinguished from others; commercially important solutions remain confidential, and a trade secret regime is introduced for them.

For technology companies, the scope of the product to be registered and the link between registration and the Russian Software Register are determined under the IT practice's “Product Registration” service.

02 / Outcome
Service Outcome
  • Documents on the transfer of rightsDocuments transferring the right to the applicant from everyone who took part in creating the computer program or database.
  • Filing setThe application, abstract and materials for deposit.
  • Examination materialsResponses to Rospatent's queries and monitoring of the entry of the details in the register.
  • Protection regime documentsThe procedure for protecting undisclosed information and the obligations of employees and counterparties.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the application is built on

  1. Materials

    The application is built on information about the subject matter and the applicant; the following points are relevant.

    • Subject matterName, purpose and date of creation.
    • AuthorsWho created it, employment contracts and work assignments.
    • ContractorsContracts and acceptance certificates, if external contractors were involved in the creation.
    • Materials for depositFragments of the computer program or a description of the database that may be disclosed.

  2. Assessment

    On the basis of the materials, the prospects of the examination, possible obstacles and ways of overcoming them are assessed.

  3. Plan

    For the chosen option, a plan is drawn up: the documents required, the sequence of steps and the timing.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

The contract with the contractor is checked to establish who owns the exclusive right. If the creation of the computer program was the subject of the contract, the right belongs to the customer unless the contract provides otherwise; in other cases, the transfer of the right is documented separately, and only then is the application filed in the company's name.

For the procedure for programs created by employees and contractors, see securing rights to code and employee works.

Two rights arise in respect of a database. The certificate secures the selection and arrangement of the materials as the result of creative work. The database maker's right to the contents themselves arises, without registration, for a company that has invested substantial resources in creating the database: for this right, documents on the costs of collecting and processing the information are gathered, which the company can rely on in a dispute, and an access procedure is introduced that restricts extraction of the materials by outsiders.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Ilya Smirnov Ilya Smirnov Partner

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Other Services in This Practice
Trademarks Protection and Disputes Brand Transactions Licence Agreements Franchising Assignment of Exclusive Rights Account Disputes Domain Name Disputes Madrid System Trade Secrets and Know-How Inventions Utility Models Industrial Designs Documents and Consultations

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