Posted on 16. May, 2008 by Paul Marshall in Uncategorized
including a detailed scope of the rights being licensed
identifying the software in more detail than we usually do
the term of use (and perpetual doesn’t work it has to be tied to something or it will be deemed to be 5 years so you have to get creative here)
the type of license (ie non-exclusive, non-transferable, etc)
the territory (if applicable)
any reporting requirements of the agreement
Under the law registration of your software with the Russian patent office is NOT mandatory however, fighting infringement cases without it is near impossible without it I’m made to understand.
The governing law of your license agreement can be anywhere in the world that you would normally use. The caveat is that where there is difference between the governing law of that country, province, state and that of Russian law, Russian law will prevail. This principally applies to some of the specific items listed above and I would still recommend you use a governing law outside of Russia.
VAT, Withholding Tax, Customs
In Canada we have a double taxation treaty with Russia which means that assuming you provide your custome with proof of your company’s residency when you sign the contract there will be no withholding tax requirements (otherwise it is 20%) associated with the License, Maintenance and Support and Services revenues/billings.
License fees are exempt from VAT tax but training, installation and support services are not. All are subject to an 18% reverse charge VAT assuming your company is not a resident of Russia. It is really important that you agree and document with your customer that you are going to “gross-up” your invoices for these VAT eligible services. They will then be responsible for self collecting and remitting the VAT to the Russian agency and you then receive the same payment you otherwise would have net of taxes. This also prevents you from having to setup and be a VAT filer in Russia.
Support is a little tricky and you must be careful that new versions of your product that the Russian customer would receive while on Maintenance and Support do not contain any “new software product” or and plug in type releases that can be run seperately from the software originally purchased. Enhancements are fine but there is a grey area that you should review depending on your software, release cycles, etc. If you are deemed offside on this it will result in a number of tax risks that I won’t detail here.
Customs is not really an issue unless you physically ship your software to your customers. If you are like us this is not really an issue as most software can be delivered electronically through FTP download or other means.
There are a myriad of other tax issues for your Russian customer on the other side of these comments that I haven’t detailed but suffice is to say it can be very punitive to their books if they intentionally or accidentally misstep along the way.
Call to Action:
The Russian market is a huge opportunity for us and we are continuing to expand into that space carefully learning and asking for help each step of the way. I would encourage you to spend some time researching and understanding what is happening with your target vertical market in Russia and scoping out the opportunity, weighing the risks and evaluating the use of your limited resources in this market. There are plenty of well known established North American businesses operating resident in Russia who would probably be interested in partnering with you. Once you make Russia successful this may open up your relationship with them in other areas of the world as well which will help drive significant growth in your business…….good luck and let me know if I can help!