*By Thereza Gonçalves Curi Abranches and Victor André Santos de Lima
In Brazil, in line with the TRIPs agreement, software protection follows the same regime granted to literary works by copyright and related rights legislation, according to art. two, caput, the Software Law (Law nº 9,609/1998) and art. 7, XII, of the Copyright Law (Law nº 9,610/1998). This protection regime arises from the source code of the computer program, which is considered by legislation as a literary work, since the software's functionalities are not protected by copyright.
Although it is possible to register a patent for software shipped in Brazil – an analysis that we recommend having a specialist go through –, the objective of this article is to point out the benefits of registering software as an authorial work, with the aim of clarifying doubts that still persist regarding this topic.
In fact, the protection given to software does not depend on registration, an understanding that arises from the normative structure of copyright arising from the Berne Convention for the Protection of Literary and Artistic Works. The protection of rights is guaranteed for 50 years from January 1st of the year following the year of publication or, in the absence thereof, its creation.
Although it is considered a literary work, the competent body for software registration is not the National Library, but the National Institute of Industrial Property (INPI), whose procedure is currently electronic 100%. Registration with the INPI therefore has the declaratory function of a pre-existing right.
- How long does it take for the registration certificate to be issued? As stated on the INPI's official website, the time for the registration to be published in the Industrial Property Magazine, after payment has been made, is up to 10 days. Furthermore, an average time of 5 days must be considered for preparing and filing the registration request with the INPI.
It is important to remember that this publication does not involve the disclosure of confidential information, but only the disclosure of certain information relating to the software, such as the name of the owner, its title and its code hash.
- What is the public fee charged by INPI for registering each software? The fee charged by INPI for the registration (fees) of each software is R$185.00, according to the table of remuneration for services provided by INPI – Ordinance ME no. 516/2019. Furthermore, if the procedure is carried out by a specialist, contractual fees will naturally be charged.
There are other services at INPI, relating to computer programs, which can also be requested from the aforementioned Institute, such as transfer of ownership, change of name of the holder, change of address of the holder, etc.
- What are the advantages of software registration? Although registration is not mandatory, it ends up functioning as an important tool for proving the authorship of its development, the date of its creation and authorship. Registration has the power to reverse the burden of proof, creating a favorable legal position for those who registered, since in a possible legal action, for example, the prior registration will have to be undone through evidence by the opposing party, a task that It's not always that easy.
In short, registering the software with the INPI helps in the following aspects: a) proving the authorship and date of creation of the software; b) protecting software, one of the company's main assets; c) positioning the company as an innovator; d) in negotiations with investors, as this is a common requirement on their part; and e) participation in bidding processes.
- Are there disadvantages? One point that may raise doubts lies in the business secret, that is, will the registration publicize my source code? Objectively, no. According to art. 3, §2, of the Software Law and art. 1, §2, of Decree no. 2556/1998, which regulates registration with the INPI, information relating to the source code is confidential and cannot be revealed, except by court order or at the request of the holder. Furthermore, the INPI currently requires that a digital summary be presented hash of the sections of the software considered most important, that is, sections that are sufficient to assert its originality (and no longer the source code), and this code hash must be presented in encrypted language, which protects the content of the source code.
Therefore, in our understanding, there are no disadvantages in registering software with the INPI, as such registration does not involve the disclosure of confidential information contained in its source code.
- Should I keep updating the registry every time I update the source code? Updates to the software do not invalidate the registration(s) previously made, on the contrary, they can be complementary and considered derivative works, and the registration of new versions is recommended only when the updates to the source code are significant.
Computer Program Registration can be requested by the holder, an individual or legal entity, or their attorney, and INPI has a User Manual to assist interested parties and clarify any doubts. However, depending on technical and legal doubts, we recommend the support of specialized professionals to define the best protection strategies, as well as assistance in preparing and presenting your registration request to the INPI, in order to guarantee more legal security to the its holder, boosting your business.
*Thereza Gonçalves Curi Abranches. Lawyer and Head of the Contracts Team at Kasznar Leonardos Advogados. Postgraduate degree in Business Law from PUC-RJ (2018); Degree in Law from Universidade Cândido Mendes (2005); Degree in Business Administration from UFRJ (1994). Member of the Brazilian Intellectual Property Association – ABPI; Vice-President (2020-2021 and 2022-2023) and International Delegate of LES-Brazil; member of the Licensing Executives Society International – LESI.
*Victor André Santos de Lima, lawyer and team leader at Kasznar Leonardos Advogados. Works with Anti-Piracy, Software Compliance, Digital Law and Copyright Law. Master's student in Intellectual Property and Technology Transfer at UFRJ and Postgraduate student in Civil Procedure at PUC-MG. Co-founder of LAPI-UFRJ and Member of DEPIS.
Notice: The opinion presented in this article is the responsibility of its author and not of ABES - Brazilian Association of Software Companies