The concept of having rights over software is a recent one. Only since the Law of 3 July 1985, broadening the concept of what could be considered an intellectual work, has software been protected by rights of literary and artistic property (copyright). All legislation applicable to software is now an integral part of the Intellectual Property Code. This Code sets out very specific provisions on the matter, necessary for a comprehensive legal framing of the issue.
Moreover, software can benefit from two levels of protection: it is initially protected by copyright, and under certain conditions, it can also be covered by an invention patent.
Since it is protected by a specific copyright, it is necessary to formalise it in an agreement and defending it during litigation proceedings may prove complex.
In these very specific and occasionally uncertain circumstances, the work of our firm can prove vital, especially regarding the creation of agreements covering the development and use of the software. Consequently, we assist our clients in these ‘service provider/client’ or ‘rights-holder/licence-holder’ relationships, by carrying out the following procedures:
This agreement formalises a software order issued by a client to a service provider. A client looking for a specific software solution to fulfil its requirements can clearly set out what it needs. The service provider carries out a number of tasks, ranging from advising the client to creating the software, completed in return for payment from the client. It is important for the agreement to state to what extent the rights over the new software are transferred. This will establish whether the software can be sold on other markets and, if so, who can sell it. The ownership of rights over software can be attributed to one or more parties, but it is essential to set out the other party’s conditions of use of the software.
An agreement for the provision and integration of ERP (Enterprise Resource Planning) enables a service provider to create an ERP which is tailored to a specific project of the client company, in return for payment.
Since it is a creation project, the agreement must be extremely precise regarding the definition of the project, the demarcation of the services and the transfer/conservation of the intellectual property rights over the product upon completion of the agreement.
Collaboration between the parties must be formalised in an agreement in order to reduce as far as possible the risks of a dispute at the end of the agreement and to ensure that the project runs smoothly. The service provider has a particularly significant duty to the client to offer advice and ensure good cooperation.
With a maintenance agreement, the IT service provider undertakes to carry out specific technical duties for the client in order to maintain the various elements of an information processing system (hardware or software) in good working condition, in return for payment.
In practice, there are three types of maintenance: prevention, correction and upgrading. Although a maintenance agreement can include all three types, in general, only the corrective maintenance is set out. The other types are usually optional, to be decided by the client.
An ASP (Application Service Provider) agreement is used by a service provider, or ASP, to allow a client company to use its software and associated IT services remotely in return for a fixed price.
In this model, all the applications provided are hosted on an external server which the client can access securely via the internet. The client can use them freely in return for the payment of an agreed subscription (or licence fee).
This agreement therefore enables the client company to considerably reduce its costs by using less expensive shared services and hardware (licences, platforms, etc.) which is rented rather than acquired.
An outsourcing agreement allows a company to outsource all or part of its IT system. The service provider which the company uses may be entrusted with a number of different duties, including office equipment, network management and application maintenance. These should not simply be one-time tasks – they should also be established in the agreement, which sets out a fixed fee payment from the client to the service provider. This agreement allows the client to relieve themselves from having to manage a sector in which they do not necessarily specialise by requesting support from another professional
In theory, a program’s source code allows its user to correct or develop the software. It is therefore essential to have access to it. Consequently, software source code access agreements are concluded between the publisher of the software and the client. In general, a third party escrow agent is also party to the agreement. The escrow agent safeguards the source code. It is preferable for this party to be a professional so that it can check the contents of the source code. The communication of the source code is a customary part of the creation of specific software and may be accompanied by a level of exclusivity which must be clearly defined.
A video game order agreement is used by a client to order the creation of a video game from a specialist publisher. Since a video game is technically a piece of software, this agreement is similar to a software order agreement with some additional specific parts, including the transfer of rights of the various contributors to the video game in order to prevent it from being recategorised as a collaboration rather than a collective work.
This agreement enables a publisher, company or natural person to have a mobile phone application developed by a developer, which will then transfer the rights on the application(s) created. This service and the transfer of copyright is usually carried out in return for a payment from the publisher.
The registration is carried out in accordance with a specific procedure set out by each of the offices involved in the registration (INPI, OHIM, WIPO, USPTO, etc.) and must include a search of existing trademarks in order to avoid, as far as possible, any subsequent challenges to the trademark, i.e. an opposition procedure or an objection made by the Intellectual Property Office.
Indeed, very often, trademark applicants believe that they are protected from any issues once the formalities of the application have been completed, and invest in various communication tools. They are then faced with an opposition or objection to their trademark which forces them to adjust their communication strategy or even scrap all of the work carried out if the opposition or objection leads to a rejection of the trademark.
Consequently, each application is assessed by the INPI or the office concerned, which may oppose the trademark request, providing the applicant with its written objections.
A licence to use agreement governing software/software package enables the software/software package rights-holder to grant temporary use of it to a third party. This may be granted for free or in return for a payment or service, or even an equivalent service.