Transfer of IP rights in Spain

A patent can be assigned either by law or transaction (by a means of a specific assignment agreement or within a M&A transaction).

Recording the assignment before the Spanish Patents and Trademarks Office (“SPTO”) is not required for its effectiveness, but it is recommended to do so (see Q3 below).

2.1 Are original supporting documents essential or are copies sufficient?

To record a patent assignment the corresponding official form has to be fulfilled and submitted (either by the assignor or the assignee) to the SPTO (in person or online).

2.2 Are there any legalization and/or notarization and/or translation requirements?

This form should be filed together with the following documents:

• authentic copy of the agreement or a simple copy with legalized signatures by a public notary or other competent authority; or
• an extract of the agreement certifying by a public notary or other competent authority, that the extract is in accordance with the original agreement; or
• a SPTO standard form of a certificate or document of assignment signed by the parties (no legalization required); and
• the payment receipt of the corresponding fees (please see Q6). 

2.3 Is there a must to use a specific form?

If the assignment takes place by a merger, reorganization or division of a legal entity, by law or by administrative decision or court order, the assignment form has to be submitted together with attestation issued by the public authority issuing the document, or a copy of the document evidencing the transfer, authenticated or legalised by a notary public or other competent public authority.

The record in the SPTO register has declarative effect. However, and although it is not necessary for the effectiveness of the assignment, if not recorded before the SPTO, the assignment may not have effects against third parties. Therefore, we highly recommend recording the assignment before the SPTO.

If one or more co-owners wish to assign their participation of a patent, unless otherwise agreed, they should notify the other co-owners who may exercise their right of first refusal and pre-emptive rights. The right of first refusal can be exercise within two months from the date of notification and the right of pre-emption within one month from the date of registration of the assignment in the SPTO.

To act before the SPTO is not necessary to appoint a domestic representative, except when the applicant is not based within the European Union. 

If the recording is made in person: EUR 13.50 per effected registration.

If the recording is made online: EUR 11.47 per effected registration.

Please note that these fees correspond to 2023 and are updated annually

There are three forms of licensing patents:

Contractual licences. These are the most common licences granted by a patent holder to third parties to exploit the invention lawfully. These may be exclusive, sole or non-exclusive. Moreover, licence may also include limitations as to the licensed faculties, territory or whether sub-licences can be granted, among others.

Compulsory licences. These licences shall be granted in the event of:

Lack or insufficiency of exploitation of the patent.

Dependence between patents, or between patents and plant breeders’ rights.

The need to put an end to practices that an administrative or jurisdictional decision has declared contrary to antitrust regulation.

Public interest.

Manufacture of pharmaceutical products for export to countries with public health problems.

Licences as a matter of law. They result from a public offering of non-exclusive contractual licences made by the owner. 

Patent licences do not need to be recorded before the SPTO to become effective, but it is recommended to do so (see Q9 below). 

8.1 Are original supporting documents essential or are copies sufficient?

To record a patent license before SPTO, the corresponding official form should be fulfilled and submitted (either by the licensor, by the licensee or jointly) before the SPTO (either in person or online). 

The information to be provided in the official form is:

• name and address of the licensor;
• name and address of the licensee;
• where the applicant for the registration of the transfer acts through a representative, the name and address of the representative;
• indication of the document or act accrediting the license;
• number of the registration or patent application being licensed; and
• signature of the applicant or his representative.

8.2 Are there any legalization and/or notarization and/or translation requirements?

To record a patent licence the corresponding official form has to be fulfilled and submitted (either by the licensor or the licensee) before the SPTO (in person or online).

The following documents have to be submitted together with the official form:

• a certified copy of the licence agreement or a simple copy with signatures authenticated by a public notary or other competent authority; or
• an extract of the licence agreement attested by a public notary or other competent authority, that the extract corresponds to the original agreement; or
• an SPTO official certificate or licence document signed by both parties (no legalization required); and
• the payment receipt of the corresponding fees (see Q11).

The application form has to specify whether the licence is exclusive or not, as well as any limitations as to its duration, exploitation, territorial scope, and whether the licensee may assign the licence to third parties or grant sublicences.

8.3 Is there a must to use a specific form?

The record in the SPTO register has declarative effect. However, and although it is not necessary for the effectiveness of the licence, if not recorded before the SPTO, the licence may not have effects against third parties. Therefore, we highly recommend recording the assignment before the SPTO.

The record of patent licenses before the SPTO register does not have a constitutive effect but declarative.

However, should the license not be recorded before the SPTO, it may not have effects against third parties. 

Moreover, although the record of a patent license has declarative effects, such record grants certain rights and prerogatives as for example the entitlement of the licensee to bring the infringement actions provided by the Spanish Patent Act -even though this is a controversial issue in our case law-. Therefore, we highly recommend recording the license before the SPTO.

To act before the SPTO is not necessary to appoint a domestic representative, except when the applicant is not based within the European Union. 

If the recording is made in person: EUR 13,50 per effected registration.

If the recording is made online: EUR 11,47 per effected registration.

Please note that these fees correspond to 2023 and are updated annually.

Yes, patent registrations and patent applications can be pledged (according to Spanish law it is considered a mortgage over a movable asset) by the owner or by the licensee entitled to assign their right to third parties.

Mortgages on patent rights shall be first recorded in the Moveable Property Register (Registro de Bienes Muebles) which shall notify the SPTO of such registration for the SPTO to record it in their registry.

A trademark can be assigned either by law or transaction (by a means of a specific assignment agreement or within a M&A transaction).

Recording the assignment before the SPTO is not required for its effectiveness, but it is recommended to do so (see Q3 below). 

2.1 Are original supporting documents essential or are copies sufficient? 

To record a trademark assignment the corresponding official form has to be fulfilled and submitted (either by the assignor or the assignee) before the SPTO (in person or online).

2.2 Are there any legalization and/or notarization and/or translation requirements?

The following documents have to be submitted together with the official form:

• a certified copy of the assignment agreement or a simple copy with signatures authenticated by a public notary or other competent authority; or
• an extract of the agreement attested by a public notary or other competent authority that the extract corresponds to the original agreement; or
• an SPTO official certificate or licence document signed by both parties (no legalization required); and
• the payment receipt of the corresponding fees (see Q7). 
  
  If the assignment takes place by a merger, by law or by administrative decision or court order, the assignment form has to be submitted together with attestation issued by the public authority issuing the document, or a copy of the document evidencing the transfer, authenticated or legalised by a notary public or other competent public authority.

2.3 Is there a must to use a specific form?

If the assignment takes place by a merger, by law or by administrative decision or court order, the assignment form has to be submitted together with attestation issued by the public authority issuing the document, or a copy of the document evidencing the transfer, authenticated or legalised by a notary public or other competent public authority.

The record in the SPTO register has declarative effect. However, and although it is not necessary for the effectiveness of the assignment, if not recorded before the SPTO it may not have effects against third parties. Therefore, we highly recommend recording the licence before the SPTO.

If one or more co-owners wish to assign their participation of trademark, unless otherwise agreed, they should notify the other co-owners who may exercise their right of first refusal within one month from the notification. In the absence of prior notice or if the assignment has been made differently from that provided for in the notice, the co-owners may exercise their right of pre-emption within one month from the publication of the recording of the assignment in the SPTO register. 

In case the trademark is only assigned for part of the goods and services within a class, the goods and services assigned must be specified in the SPTO official form. When the partial assignment affects all the goods or services of a class, it is sufficient to specify the class or classes transferred.

For each resulting divisional application, a separate form has to be filed, indicating the goods and services that are to be separated from the initial application and that comprise the divisional application. Moreover, payment of the division fee is required. 

To act before the SPTO is not necessary to appoint a domestic representative, except when the applicant is not based within the European Union 

If the recording is made in person: EUR 35.12 per affected registration (with a maximum total payment of EUR 7,329.17).

If the recording is made online: EUR 29.86 per affected registration (with a maximum total payment of EUR 6,229.79).

Please note that these fees correspond to 2023 and are updated annually.

In accordance with the Spanish Trademarks Act, trademark licences may be exclusive, sole or non-exclusive. Moreover, licence may also include limitations as to the goods and services, territory or whether sub-licences can be granted, among others.

Trademark licences do not need to be recorded before the SPTO to become effective, but it is recommended to do so (see Q10 below).

9.1 Are original supporting documents essential or are copies sufficient? 

To record a trademark licence the corresponding official form has to be fulfilled and submitted (either by the assignor or the assignee) before the SPTO (either in person or online).

9.2 Are there any legalization and/or notarization and/or translation requirements?

The following documents have to be submitted together with the official form:

• a certified copy of the licence agreement or a simple copy with signatures authenticated by a public notary or other competent authority; or
• an extract of the licence agreement attested by a public notary or other competent authority, that the extract corresponds to the original agreement; or
• an SPTO official certificate or licence document signed by both parties (no legalization required); and
• the payment receipt of the corresponding fees (see Q13).
   

9.3 Is there a must to use a specific form?

The application form has to specify whether the licence is exclusive or not, as well as any limitations as to its duration, exploitation, territorial scope, and whether the licensee may assign the licence to third parties or grant sublicences.

The record in the SPTO has declarative effect. However, and although it is not necessary for the effectiveness of the licence, if not recorded before the SPTO, it may not have effects against third parties. Therefore, we highly recommend recording the licence before the SPTO.

In case the trademark is only licensed for part of the goods and services within a class, the goods and services assigned must be specified in the SPTO official form. When the partial assignment affects all the goods or services of a class, it is sufficient to specify the class or classes licensed.

To act before the SPTO is not necessary to appoint a domestic representative, except when the applicant is not based within the European Union. 

If the recording is made in person: EUR 35.12 per affected registration (with a maximum total payment of EUR 7,329.17)

If the recording is made online: EUR 29.86 per affected registration (with a maximum total payment of EUR 6,229.79.

Please note that these fees correspond to 2023 and are updated annually.

Yes, trademark registrations and trademark applications can be pledged (according to Spanish law it is considered a mortgage over a movable asset) by the owner or by the licensee who is entitled to assign their right to third parties.

Mortgages on trademark rights shall be first recorded in the Moveable Property Register (Registro de Bienes Muebles) which shall notify the SPTO of such registration for its recording in their registry.