IP assignment agreement under Spanish law (cesión de propiedad intelectual)

curl -X POST https://dealroom.todo.law/api/v1/agent/contracts \
  -H "Authorization: Bearer drk_YOUR_KEY" \
  -H "Content-Type: application/json" \
  -H "Idempotency-Key: $(uuidgen)" \
  -d '{
    "contractType": "CESION_PI",
    "language": "en",
    "party": {
      "legalName": "Your company"
    },
    "counterparty": {
      "legalName": "The other company"
    },
    "inline": "md"
  }'

What it is and when it is used

This is an IP assignment agreement drafted natively under Spanish law: the Intellectual Property Act (Royal Legislative Decree 1/1996, the LPI), in particular its articles 43 to 50 on the transfer of rights, and, for registered rights, the Patents Act 2015 and the Trademarks Act 2001. It is used when a business acquires exploitation rights (reproduction, distribution, public communication and transformation) in a work, software, database or design from its author or owner: for example, a company buying the rights in software written by a freelance developer, or in illustrations or designs commissioned from an agency.

Spanish law reads IP assignments restrictively. Under article 43 of the LPI, rights or forms of exploitation that are not expressly assigned stay with the Assignor; an assignment never reaches forms of exploitation unknown when it is signed; and, unless the contract says otherwise, the term is five years and the territory is the country where the assignment is made. Every clause of the agreement is drafted with these rules in mind.

Who signs it and in which role

Two parties sign:

• The Assignee (cesionario/a), who acquires the rights.
• The Assignor (cedente), the author or owner who transfers them.

The particulars of the deal (the assigned IP and forms of exploitation, the price or royalty rate, any exclusive period, the term, the territory and the way the author is named) are set out in an IP Assignment Annex.

Key clauses

The skill has eight negotiable clauses, each with three options. For each clause it also sets a starting option for when the parties have not yet chosen, noted below.

Scope of assignment

Total (all four exploitation rights for all known forms, with an express statement that a comprehensive assignment is intended), specific (only the forms listed in the annex, all others retained; the starting option), or limited (agreed forms in a stated territory and term, with no sublicensing without the Assignor's consent).

Exclusivity

Exclusive, so that only the Assignee may exploit the IP, not even the Assignor (article 48 LPI); non-exclusive, so that the Assignor may exploit it and license others, while the Assignee needs consent to sublicense (the starting option); or temporary exclusive, which converts automatically to non-exclusive after an exclusive period set in the annex.

Moral rights

Full respect, including naming the author, integrity, consultation before a first publication and the right of withdrawal subject to compensation; a "pragmatic" commitment by the Assignor not to exercise moral rights so as to unreasonably hinder normal exploitation, with integrity kept (the starting option); or exercising only the right to be named, with integrity asserted only against substantial harm to honour or reputation.

Consideration

A lump sum payable within 30 days, with a statement that it fits the exceptions in article 46.2 LPI; royalties on net exploitation revenue, with quarterly statements, an annual audit right and a guaranteed minimum (the starting option, as the general rule of article 46); or a mixed model with an advance recovered from future royalties.

Assignor representations

Broad (originality, sole ownership free of charges, non-infringement, no claims, no conflicting earlier grants and capacity, with an indemnity; the starting option), limited (ownership and capacity only), or minimal (capacity only, IP assigned "as is").

Pre-existing IP

Listed in an annex and excluded but licensed to the Assignee perpetually and free of charge (the starting option); listed and excluded, with any licence negotiated separately; or no exclusion, so that everything delivered is assigned.

Duration

The full legal duration of the rights (the author's life plus 70 years for copyright, the registration period for patents and trademarks), expressly displacing the five-year default; a fixed term, after which rights revert and the Assignee stops exploiting the IP; or five years (the starting option), renewable by written agreement made at least 90 days before expiry.

Dispute resolution

The Commercial Courts (the starting option), institutional arbitration under the Arbitration Act with power to grant interim measures, or mediation followed by the Commercial Courts.

The standard terms cover delivery of source files and materials within ten business days, 30 days of free technical assistance, recordal with the OEPM where relevant, the Assignee's right to act against infringers, three years of confidentiality on the economic terms, a liability cap equal to the total consideration (with carve-outs for infringement, the Assignor's warranties, wilful misconduct and confidentiality), and the rule that nothing in the contract waives moral rights.

What the two sides usually negotiate

The Assignee wants a total, exclusive and long assignment, a lump sum, broad warranties and everything delivered included. The Assignor wants to keep some forms, territories or time, to share in exploitation revenue, to limit warranties and to protect their name and the integrity of the work.

When the two sides disagree, Dealroom proposes the balanced positions in the skill:

• Scope: specific, as listed in the annex.
• Consideration: mixed, an advance plus royalties.
• Warranties: limited to ownership and capacity.
• Disputes: mediation followed by the Commercial Courts.

On exclusivity and duration the options closest to the centre are a temporary exclusive assignment and a fixed term. On pre-existing IP, listing it with a free licence and listing it with a separate licence lean only slightly in opposite directions. On moral rights every option leans to one side: full respect favours the Assignor, attribution only favours the Assignee, and the pragmatic commitment sits between them.

Jurisdictions and languages Dealroom supports for it

This agreement is offered for Spain only, drafted in Spanish or English. Every clause is marked as specific to Spanish law. It applies the good-faith principle of the Civil Code and the restrictive reading of article 43.1 LPI, with the software rules of articles 95 to 104 LPI applying where the assigned IP includes software. For California or England and Wales, use the IP assignment agreement.

Common mistakes

• Leaving forms of exploitation unstated. Any form not mentioned is deemed not transferred.
• Leaving out the duration or the territory. Without them, the assignment lasts five years and covers only the country where it is made.
• Trying to waive moral rights. Such a clause is void; use a non-exercise commitment instead.
• A lump sum without justification. Proportional remuneration is the general rule, so a lump sum should fit one of the statutory exceptions.
• Assigning without consideration. It may be challenged for lack of cause under article 1274 of the Civil Code.
• Not separating pre-existing IP. Without a list, the Assignor may hand over prior work by accident.
• Not recording patent assignments. Without recordal at the OEPM, the assignment is not effective against third parties in good faith.