Transfer of IP rights in Spain

A patent can be assigned by an administrative or judicial decision, by means of an agreement (either by a means of a specific assignment agreement or within a M&A transaction) or by law (succession, execution).

Recording the assignment is not required for its effectiveness (please see answer to Q3 below).

2.1 Are original supporting documents essential or are copies sufficient?

To record a patent assignment before the Spanish Patents and Trademarks Office (“SPTO”), the corresponding official form should be fulfilled and submitted (either by the assignor, by the assignee 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 assignor;
• name and address of the assignee;
• 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 transfer;
• number of the registration or patent application being transferred; and
• signature of the applicant or his representative.

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 transfer of ownership takes place by a merger, reorganization or division of a legal entity, by law or by administrative decision or court order, the assignment form should be filed together with a testimony issued by the public authority issuing the document, or a copy of the document evidencing the change, authenticated or notarized by a notary public or other competent public authority.

Registration is neither constitutive nor necessary for the effectiveness of the assignment. But should the assignment is not recorded before the SPTO it may not have effects against third parties (e.g. in order to avoid, among others, double assignments, or even transfers or licenses by non-rights holders). Therefore, we highly recommend recording the assignment before the SPTO.

If one or more co-owners wish to assign their participation of a patent, they should notify the other co-owners who may exercise their right of first refusal and pre-emptive rights. The right of first refusal might be exercise within one month from the date of notification and the pre-emptive right 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: €13.37 per effected registration.

If the recording is made online: €11.36 per effected registration.

Please note that these fees correspond to 2021 and are updated annually.

There are three types of patents’ licenses:

1. Contractual licenses. These are common licenses granted by the patent holder to third parties to exploit the invention lawfully. Among these licenses it should be distinguished the following:
   1. Total license vs partial license
      1. Total license: license granted for all faculties comprising the patent right.
      2. Partial license: license granted just for part of the faculties comprising the patent right.
   2. Geographical limited license vs unlimited license: 
      1. Limited: license granted for all the Spanish territory.
      2. Unlimited: license granted just for part of the Spanish Territory.
   3. Exclusive vs non-exclusive: 
      1. Exclusive: the licensor undertakes not to grant further licenses to third parties. 
      2. Non-exclusive: the licensor reserves the right to grant further licenses to other licensees.
2. Compulsory licenses. This kind of licenses shall be granted in the event of:
   1. Lack or insufficiency of exploitation of the patent.
   2. Dependence between patents, or between patents and plant breeders’ rights.
   3. The need to put an end to practices that an administrative or jurisdictional decision has declared contrary to antitrust regulation.
   4. Public interest.
   5. Manufacture of pharmaceutical products for export to countries with public health problems (in application of Regulation (EC) No. 816/2006).
3. Licenses of right. They result from a public offering of non-exclusive contractual licenses made by the owner.
   Patent licenses do not need to be recorded to become effective (please see answer to 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?

This form should be filed together with the following documents:

• authentic copy of the license agreement or a simple copy with legalized signatures by a public notary or other competent authority; or
• an extract of the license agreement certifying, by a public notary or other competent authority, that the extract is in accordance with the original agreement; or
• an SPTO standard form of a certificate or document of license signed by the parties (no legalization required); and
• the payment receipt of the corresponding fees (please see Q11).

8.3 Is there a must to use a specific form?

The application form should indicate whether the license is exclusive or not, as well as any limitations as to its duration, mode of exploitation, territorial scope or applications, and whether the licensee may assign the license to third parties or grant sublicenses.

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: €13,37 per effected registration.

If the recording is made online: €11,36 per effected registration.

Yes, patent registers and patent applications can be pledged (actually, according to Spanish law it is a mortgage over a movable asset) by the owner or by the licensee entitled to assign his 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 its recording in it.

A trademark can be assigned: 

• by an administrative or judicial decision;
• by an agreement: through an assignment agreement between the owner of the trademark and the assignee, or through a public document; or 
• by law. According to Spanish Trademarks Act, the transfer of a company implies the assignment of the relevant trademarks, unless: (i) otherwise agreed between the parties; and/or (ii) if the assignment may mislead the public regarding the nature, quality or geographical origin of the G&S designated by the relevant trademarks.

Recording the assignment is not required for its effectiveness (please see answer to Q3 below). 

2.1 Are original supporting documents essential or are copies sufficient? 

To record a trademark assignment before the SPTO the corresponding official form should be fulfilled and submitted (either by the assignor, by the assignee 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 assignor;
• name and address of the assignee;
• 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 transfer;
• number of the registration or trademark application being transferred; and
• signature of the applicant or his representative.

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

This form must 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
• an SPTO standard form of a certificate or document of license signed by the parties (no legalization required); and
• the payment receipt of the corresponding fees (please see Q7). 

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 should be filed together with a testimony issued by the public authority issuing the document, or a copy of the document evidencing the change, authenticated or notarized by a notary public or other competent public authority.

Record is neither constitutive nor necessary for the effectiveness of the assignment. But should the assignment be not recorded before the SPTO it may not have effects against third parties (e.g., to avoid, among others, double assignments, or even transfers or licenses by non-rights holders). Therefore, we highly recommend recording the license before the SPTO.

If one or more co-owners wish to assign a trademark, they should notify the other co-owners who may exercise their right of first refusal within one month from the notification. This notification should include the purpose and the conditions of the assignment. Even if the assignment is recorded and no notification has been made to the co-owners, they might still exercise their right of first refusal within one month from the publication of the recording of the assignment in the SPTO register. 

Where the trademark assignment does not affect all the goods and services for which the trademark was applied for or registered, this fact must be indicated in the form (there is a specific section in this regard) and the specific goods and services being transferred must be specified. However, when the partial assignment affects all the goods or services included in a class, it will be sufficient to indicate the corresponding number of the class or classes transferred.

For each resulting divisional application, a separate form shall be filed, indicating the goods and services that are to be separated from the initial application and that comprise the corresponding 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: €34.77 per affected registration (with a maximum total payment of €7,256.60).

If the recording is made online: €29.56 per affected registration (with a maximum total payment of €6,168.11).

Please note that these fees correspond to 2021 and are updated annually.

Spanish Trademarks Act distinguish different types of trademark license: 

1. Total license vs partial license: 
   1. Total license: license granted for all goods and services for which the trademark is registered.
   2. Partial license: license granted just for part of the goods and services for which the trademark is registered.
2. Geographical limited license vs unlimited license:
   1. Limited: license granted for all the Spanish territory.
   2. Unlimited: license granted just for part of the Spanish Territory.
3. Exclusive license vs non-exclusive license: 
   1. Exclusive: the licensor undertakes not to grant further licenses to third parties. Should the licensor undertake not to use the trademark the license is a reinforced exclusive license. 
   2. Non-exclusive: the licensor grants the trademark license to the licensee but reserves the right to grant further licenses to other licensees.

Trademark licenses do not need to be recorded to become effective (please see answer to Q10 below). 

9.1 Are original supporting documents essential or are copies sufficient? 

To record a trademark license before the SPTO the corresponding official form should be fulfilled and submitted (either by the assignor or, by the assignee 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 trademark application being transferred; and
• signature of the applicant or his representative.

9.2 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 license agreement or a simple copy with legalized signatures by a public notary or other competent authority; or
• an extract of the license agreement certifying, by a public notary or other competent authority, that the extract is in accordance with the original agreement; or
• an SPTO standard form of a certificate or document of license signed by the parties (no legalization required); and
• the payment receipt of the corresponding fees (please see Q13).

9.3 Is there a must to use a specific form?

The application form should indicate the type of license (see Q8), its duration and whether the licensee may assign the license to third parties or grant sublicenses.

If the license takes place by a merger, by law or by administrative decision or court order, the assignment form should be filed together with a testimony issued by the public authority issuing the document, or a copy of the document evidencing the change, authenticated, or notarized by a notary public or other competent public authority

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

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

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

As the type of license must be specified in the application form (see Q9), in case a trademark is only partially licensed, the specific goods and services licensed must be indicated in such form. 

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: €34.77 per affected registration (with a maximum total payment of €7,256.60)

If the recording is made online: €29.56 per affected registration (with a maximum total payment of €6,168.11.

Please note that these fees correspond to 2021 and are updated annually.

Yes, trademark registers and trademark applications can be pledged (according to Spanish law it is actually a mortgage over a movable asset) by the owner or by the licensee who is entitled to assign his 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 Trademark Registry of such registration for its recording in it.