The Order of the Ministry of Justice of Ukraine No. 1760/40816, registered on October 09, 2023, approved a new Procedure for State Registration of Copyright and Agreements Concerning Property Rights to a Work (the “Procedure”). We expect the new Procedure to enter into force, while on August 11, 2023, the Cabinet of Ministers adopted Resolution No. 843 “Some Issues of Registration of Copyright and Agreements Concerning Property Rights to a Work” (hereinafter – Resolution 843), which invalidated the previous Procedure for State Registration of Copyright and Agreements. Therefore, the employees of the Ukrainian National Office of Intellectual Property and Innovations (IP office), the state registration authority, are in a certain working vacuum, as are the applicants.
This is due to the fact that IP office does not yet have the authority to process applications in accordance with the new Procedure, and cannot issue titles of protection for works and contracts whose applications for registration were submitted by applicants before 11.08.2023, as their consideration must be carried out under the new Procedure. This means that if such applications require additional information from the applicants, the need for which will be dictated by the new Procedure, the examiners of the Ukrainian National Intellectual Property Office will have to individually address the applicants with a request to provide additional data or materials.
At the same time, IP office continues to accept applications for state registration of authors’ rights in works of science, literature and art, as well as applications for registration of agreements concerning authors’ rights in works, in accordance with the powers delegated to IP office by the Law “On Copyright and Related Rights”. And the application forms are currently unchanged and may be used by applicants until the Ministry of Economy approves the new Procedure for State Registration of Copyright and Agreements Concerning Proprietary Rights to a Work.
The new version of the Procedure is available at the following link: https://ips.ligazakon.net/document/view/RE40816?an=1
Some provisions of the Procedure remain the same and have not been changed, so in this article we will focus only on the innovations and emphasize the important details.
New types of state registration
Previously, registration of copyright in a work, registration of copyright in a work for hire, and registration of two types of agreements (an agreement for the assignment of rights and an agreement for the transfer of rights to use a work) were carried out, but now this list has been expanded.
So, the types of registrations:
Copyright registration for works created:
– on their own initiative – the application is submitted by the author/heir;
– in connection with the performance of labor duties under an employment agreement (contract) – an application is filed by the employer or the author, if the rights to the work for hire belong to the author and the employer jointly;
– NEW: by order (in connection with the execution of a contract) – an application is filed by the customer or the author if the rights to the work created by order belong to the customer and the author jointly.
The following types of agreements are subject to registration as to the author’s right to a work:
– NEW: an employment agreement (contract) in terms of distribution of rights to a work for hire;
– NEW: an agreement on the creation and use of a copyrighted work;
– agreement on the transfer (alienation) of property rights to a copyrighted work;
– a license agreement for the use of a copyrighted work.
Previously, it was possible to register a work for hire only by registering a copyright, but now it is possible to register a work for hire by registering a contract
Application procedure
The filing of applications for state registration remains subject to the same conditions that were introduced during the military invasion of the territory of Ukraine, but we will remind you once again
– in paper form: by regular mail or through a mailbox located directly in the premises of the IP office building at the address: 1, Dmytro Godzenko St., Kyiv, 01601;
– electronically: through the electronic interaction system of the examination institution, but for this you must have a qualified digital signature and experience of working through this system.
Formats of documents to be submitted for registration
It does not matter whether you submit a paper or electronic application, copies of the works must be submitted in the following formats
– for text – only pdf;
– for sound recordings and video recordings: MP3, MP4, AVI, MKV;
– for images (photographic works, works of fine art, etc:) JPEG, TIFF, PNG.
At the same time, a part of a work that can be used independently, in particular, the original title of the work, the original character of the work, shall be submitted together with a copy of the work within which the said part was created.
Filling out the application for registration
As it was before, the application must be filled out exclusively in Ukrainian, but now the emphasis is on the fact that when filling out the application in person, you need to write everything in block letters only. This is due to the fact that earlier, when filling out the application in regular writing, the employees of the IP office could not make out the handwriting and had to clarify with the applicants how to do it correctly, which, in turn, adds time to the consideration of applications. At the same time, there should be no diacritics (superscript or subscript with a letter indicating a pronunciation that differs from the pronunciation of the sound indicated by the same letter without a sign).
The surname, name, patronymic (if any) or full name, place of residence or location of the applicant, author (co-authors), party (parties) to the contract concerning economic rights to a work who are foreigners, stateless persons, foreign legal entities or other persons having permanent residence or permanent location outside Ukraine shall be indicated in letters of the Ukrainian alphabet (transliteration). This information may also be given in brackets in Latin or Cyrillic letters without diacritical marks.
The title of the work is indicated in the original language.
We would like to draw your attention to the fact that applications will now require additional information on the registration number of the taxpayer’s account card or passport number (for an individual who, due to his/her religious beliefs, has refused to accept the registration number of the taxpayer’s account card and has notified the relevant supervisory authority and has a stamp in his/her passport or who is a foreigner, stateless person and does not have a registration number of the taxpayer’s account card in Ukraine), a unique record number in the Unified State Demographic Register (if any) for individuals. According to the new Procedure, the registration number of the taxpayer’s account card and the unique record number in the Unified State Demographic Register (if any) will be indicated in the State Register of Copyright Registration Certificates. At the same time, such information is not published for public access on the website or in the bulletin, but may be provided only at the request of the relevant regulatory authorities.
If the application for registration of copyright in a work is not submitted by the author (co-author):
For such applications, the list of documents to be attached has been expanded, namely
– a copy of the certificate (notarized) of the right to inheritance, if the application is filed by the heir;
– documents confirming the creation of a work for hire in connection with the employee’s performance of duties under an employment agreement (contract) and the ownership of property rights to such a work, if the application is submitted by the employer;
– documents certifying the transfer and ownership of property rights, if the application is filed by another entity to which the property rights to the work have been transferred, in whole or in part, or to which the property rights to the work belong jointly with other persons;
– NEW: when filing applications for derivative works, collections, any composite works, a document confirming the consent to create a derivative work or collection of works from the copyright holder(s) of the used work(s) is now required.
What the applicant must ensure when submitting the application
– the applicant shall ensure the completeness and accuracy of the information provided in the application;
– observance of the rights and legitimate interests of third parties;
– generally recognized principles of morality – in this case, in the presence of swear words, works of a pornographic nature, applications will not be accepted for consideration;
– public order, including compliance with the Laws of Ukraine “On Condemnation of Communist and National Socialist (Nazi) Totalitarian Regimes in Ukraine and Prohibition of Propaganda of Their Symbols”, “On Prohibition of Propaganda of the Russian Nazi Totalitarian Regime, Armed Aggression of the Russian Federation as a Terrorist State against Ukraine, Symbols of the Military Invasion of Ukraine by the Russian Nazi Totalitarian Regime”.
Reasons for not accepting applications for consideration
The previous procedure, which has lost its validity, approved by the Cabinet of Ministers of Ukraine, provided that an application is not accepted for consideration if a copy of the work is missing. The new Procedure does not contain such a provision, i.e. the absence of a copy of the work is not an obstacle for acceptance of the application by IP office for consideration, and the examiner must send a letter to the applicant regarding the provision of a copy of the work for consideration of the application. Now, the application may be refused for the following reasons
– if there is no document on payment of the mandatory state fee – i.e. a receipt, payment instruction, etc;
– if the document on payment of the state fee does not meet the established requirements (payment of the fee was made using incorrect details, the purpose of payment is not indicated); therefore, check the details very carefully before making the payment – the current details and what exactly to indicate in the purpose of payment can be found on the IP office website.
Grounds for refusal of state registration
These are completely new conditions; the previous procedure, which has expired, did not contain such grounds.
So, what will be considered grounds for refusing to register a work’s copyright and agreements relating to property rights to a work
– the applicant failed to comply with the conditions specified in the request to eliminate deficiencies in the application documents or when submitting other documents required for consideration of the application; that is, if the applicant was previously sent repeated letters if the deficiencies were not fully corrected, now the first time the application will be refused registration;
– the application relates to an object that is not protected by copyright; the list of such works is specified in Article 8 of the Law of Ukraine “On Copyright and Related Rights”;
– the application is filed in violation of the rights and interests of third parties;
– the application contains information that contradicts generally recognized principles of morality, public order, in particular the requirements of the Laws of Ukraine “On Condemnation of Communist and National Socialist (Nazi) Totalitarian Regimes in Ukraine and Prohibition of Propaganda of Their Symbols”, “On Prohibition of Propaganda of the Russian Nazi Totalitarian Regime, Armed Aggression of the Russian Federation as a Terrorist State against Ukraine, Symbols of the Military Invasion of Ukraine by the Russian Nazi Totalitarian Regime”;
– the applicant or the person to whom the application relates, including if the author, co-author, compiler, heir, employer, customer, party to the contract, other copyright holder of the work in respect of which the application is filed is a person associated with the aggressor state, defined in accordance with the Resolution of the Cabinet of Ministers of Ukraine No. 187 of March 03, 2022 “On Ensuring the Protection of National Interests in Future Claims of the State of Ukraine in Connection with the Military Aggression of the Russian Federation”, or a person subject to sanctions in accordance with the Law of Ukraine “On Sanctions” (taking into account decisions of the National Security and Defense Council of Ukraine).
Additionally, the following information is entered into the State Registers by the IP office
– the application of personal special economic and other restrictive measures (sanctions) in accordance with the decisions of the National Security and Defense Council of Ukraine on the basis of the Laws of Ukraine “On Sanctions” and “On the Legal Regime of Martial Law”
– seizure of the debtor’s property and property rights, other encumbrances of rights, including the transfer of rights to the management of the National Agency of Ukraine for Finding, Dissolution and Management of Assets Derived from Corruption and Other Crimes.
This information will not only be included in the register, but also published.
Additional documents that applicants may receive from the IP office:
– EXTRACTS of registration information, changes and other data entered into the state registers – such extracts are provided upon request of the person about whom the relevant information was entered; extracts are provided free of charge;
– CERTIFICATES of information from state registers – provided at the request of any person; in this case, within 10 working days, URNIPI must send a written notice to the author, other copyright holder, or applicant for the collection of such information to the address for correspondence specified in the application.
As a result of state registration, applicants receive:
A certificate of copyright registration for a work, which will indicate the following
– type and title of the work;
– author/authors of the work;
– information on the publication of the work;
– NEW: who owns the copyright in the work.
The decision to register an agreement concerning the property rights to a work has not changed here, but we will remind you what data is indicated:
– type, title, number and date of signing of the contract relating to economic rights to the work;
– type and title of the work;
– author(s) of the work;
– parties to the agreement;
– scope of rights, methods of use, other terms of use.
The above-mentioned Certificates and Decisions will be sent by IP office to the applicants:
– in paper form: sent to the mailing address specified in the application or the applicant may pick up personally, which should be noted in the application when submitting;
OR
– in electronic form: to the applicant’s e-mail address or through the electronic interaction system of the examination institution.
IMPORTANT! The applicant must choose ONLY ONE form of sending the relevant Certificate or Decision and indicate this in the application by making appropriate notes.
To summarize, we emphasize once again that despite the fact that the new Procedure has not yet entered into force, IP office continues to accept applications for state registration of copyright in a work, as well as applications for registration of agreements relating to property rights in a work, in accordance with the powers delegated to IP office by the Law “On Copyright and Related Rights”. And our law firm, Copywriters’ Law Firm, continues to provide services for the preparation and submission of documents for state registration. Believe us and check that with us you will receive high quality services, prompt communication, and communication with state authorities will be avoided.
agreement / copyright / intellectual property / IP office / state registration / work
