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

What it is and when it is used

This is an IP assignment agreement drafted natively under Spanish law: the Intellectual Property Act (Real Decreto Legislativo 1/1996, the LPI), 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.

Spanish law reads IP assignments restrictively: under article 43 of the LPI, rights or modes of exploitation that are not expressly assigned stay with the Assignor, and, unless otherwise agreed, the territory is limited to the country concerned. The agreement is drafted with this rule in mind.

Who signs it and in which role

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

Key clauses

Scope of assignment

The scope can be total (all exploitation rights for all known modes), specific (the modes listed in an annex, with the rest retained), or limited (agreed modes in a restricted territory).

Exclusivity

An exclusive assignment means only the Assignee may exploit the IP, not even the Assignor (article 48 LPI). A non-exclusive one lets the Assignor license others. A temporary exclusive assignment becomes non-exclusive after an initial period.

Moral rights

Moral rights cannot be waived, so the options are practical: full respect, including integrity and withdrawal; a "pragmatic" commitment not to exercise moral rights so as to unreasonably hinder normal exploitation, except integrity; or exercising only the right to be named.

Consideration

A lump sum, royalties proportional to exploitation revenue (the general rule under article 46 LPI), or a mixed model with an advance against future royalties.

Assignor representations

Broad (originality, ownership, non-infringement, no encumbrances, plus indemnity), limited (ownership and capacity only), or minimal (capacity only, IP assigned "as is").

Pre-existing IP

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

Duration

The full legal duration of the rights, a fixed term with reversion to the Assignor, or the five-year statutory default.

Dispute resolution

Commercial Courts, institutional arbitration, or mediation followed by the Commercial Courts.

Standard terms cover delivery of source files within ten business days, 30 days of free technical assistance, registration with the Spanish Patent and Trademark Office (OEPM) at the Assignee's cost where relevant, enforcement against infringers, three years of confidentiality, and the express acknowledgement of moral rights.

What the two sides usually negotiate

The Assignee wants a total, exclusive and long assignment with broad warranties. The Assignor wants to keep some modes, territories or time, and to limit warranties. Dealroom proposes the balanced positions in the skill as the middle ground: a specific scope listed in an annex, mixed consideration (advance plus royalties), limited warranties on ownership and capacity, and 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. For moral rights, every option leans to one side: full respect favours the Assignor, attribution only favours the Assignee.

Jurisdictions and languages Dealroom supports for it

This agreement is offered for Spain only, drafted in Spanish or English. It applies Spanish law, the good-faith principle of the Civil Code and the restrictive reading of article 43.1 LPI, with the specific 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 modes of exploitation unstated. Any mode not mentioned is deemed not transferred.
• Leaving out the duration. Without a term, the assignment lasts only five years.
• Trying to waive moral rights. Such a clause has no effect; use a non-exercise commitment instead.
• 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 registering industrial property. Registration is needed for the assignment of patents to be effective against third parties.

# 1. Read the clauses, options and the facts it needs
curl https://dealroom.todo.law/api/v1/agent/templates/CESION_PI \
  -H "Authorization: Bearer drk_YOUR_KEY"

# 2. Create the contract (clauses you leave out take the default option)
curl -X POST https://dealroom.todo.law/api/v1/agent/deals \
  -H "Authorization: Bearer drk_YOUR_KEY" \
  -H "Content-Type: application/json" \
  -H "Idempotency-Key: $(uuidgen)" \
  -d '{
    "schema": "dealroom.solo-intake/1",
    "contractType": "CESION_PI",
    "governingLaw": "SPAIN",
    "language": "en",
    "dealName": "Example CESION_PI",
    "selectionPolicy": "defaults"
  }'