Peculiarities of concluding an agreement on the transfer of property rights to a software
Authors: Tymoshenko D. V. Tymoshenko 
Published: November 2023

The article reveals the peculiarities of concluding an agreement on the transfer of property rights to a software, the analysis of current legislation in the field of disposal of rights to the results of intellectual activity, as well as the formulation of conclusions and proposals aimed at improving civil legislation in the specified field. It is noted that in recent years a lot of research has been carried out on contracts in the field of intellectual property law. However, many issues remain debatable and unsettled in the legislation of Ukraine.

The essence and content of the contract regarding the transfer (assignment) of the exclusive (property) right to the software has been analyzed and determined as a set of essential conditions duly agreed upon by the parties to the contract. The essential conditions of the contract regarding the transfer (assignment) of the exclusive (property) right to a software in accordance with the Civil Code of Ukraine and the special copyright legislation of Ukraine have been formulated. It is noted that the essential conditions of the contract regarding the transfer (assignment) of the exclusive (property) right to the software are 1) the subject of the contract; 2) the amount of property rights to the software transferred under the contract; 3) characteristic features of a software that allow it to be identified as such; 4) the form of the contract; 5) the amount and method of payment (remuneration) under the contract, or an indication of the gratuitous nature of the contract and 6) other essential conditions defined by the legislation of Ukraine.

It is established that the subject of the contract on the transfer (assignment) of the exclusive (property) right to the software is actions aimed at the transfer (assignment) of the exclusive (property) rights to the software in whole or in part, which must be specified in the contract. In fact, under this contract, property (exclusive) rights to the software are transferred from the subject of copyright to the acquirer. The difference between the subject and the object of the contract regarding the transfer (assignment) of the exclusive (property) right to the software has been determined. The characteristic features of a software that allow it to be identified as such have been separately defined. The forms of objective expression of the software have been analyzed. Such a feature of the contract on the transfer of property rights to a software as the term has also been indicated. This is because property copyrights have an expiry date. Therefore, when concluding this contract, the validity period of property rights must be taken into account. If the parties have not agreed on the term of validity of the contract, then the term of validity of the contract cannot exceed the maximum term of validity of copyrights for a software.

It is noted that the moment of transfer of property rights is difficult to clearly define and is usually associated with a certain legal fact. It is suggested to consider two factors. First, when a software is registered, the validity of the contract must be linked to the date of its registration, i.e. the property right to the software passes to the acquirer at the time of state registration of the contract. However, when the program is not registered, the exclusive right to it passes from the right holder to the assignee at the time of concluding the contract, unless otherwise established by the contract or law.

It is argued that it is necessary to further amend the legislation in the field of intellectual property in order to unify the terminology used in the regulation of relations related to the transfer of property rights to an object of intellectual property.