Abril Abogados provides legal and technical advisory services in the field of technology transfer and Patent Box.
On Technology Transfer and Assignment Agreements
Technology transfer refers to any transaction involving the transfer of an innovation, whether protected by a right or not, for the purpose of licensing or acquisition. In this regard, we have extensive experience in areas such as R&D&i contracts (commissioned and collaborative), consortium agreements in R&D&i projects, licensing agreements, assignment of intangible assets, and related agreements such as confidentiality or framework agreements.
To this end, we offer our clients comprehensive advisory services throughout the technology acquisition or transfer process, supported by the multidisciplinary profile of our professionals, combining both technical experts and lawyers. This provides us with a technical-legal perspective that ensures an effective transfer process.
We also advise on the management of income derived from the assignment of usage rights, revenues from exploitation rights, R&D&i activities, and more—providing truly comprehensive advisory services.
At Abril Abogados, we assist clients in processes involving acquisition, assignment of rights, and patent licensing, covering everything from negotiation to the formalization of the transfer agreement and ensuring a fair contractual balance.
We rely on specialized databases, advanced analytical methodologies, and technical expertise that allow us to provide tailored advice at both national and international levels, supported by our team of professionals and international partnerships with leading operators in the sector.
On Patent Box
Patents, utility models, supplementary protection certificates for medicinal and plant protection products, industrial designs, and advanced software developed as a result of R&D projects may qualify for Patent Box, provided they have been registered. For this reason, know-how (a company’s confidential knowledge) is excluded. Other forms of industrial and intellectual property protection such as trademarks, trade names, industrial designs, drawings, literary or artistic works, or software in general are also excluded.
What is Patent Box?
Patent Box is a tax incentive designed by the European Union for legal entities, allowing them in Spain to benefit from a reduction in the tax burden arising from the assignment of one of the aforementioned registered intangible assets. In other words, it enables companies to reduce their corporate tax liability. For this reason, having proper legal advice is essential, both domestically and when establishing a framework for international expansion.
The percentage reduction of the corporate tax base is applied to the net income (income minus expenses) derived from profits generated through rights assignment agreements (up to 60%). Additionally, the date of creation of the asset does not affect eligibility for these tax benefits.
To benefit from this incentive, certain requirements must be met, the most important being the successful registration of the relevant industrial or intellectual property right.
At Abril Abogados, we advise clients on all aspects related to Patent Box, including assessing whether it can be applied within their company.
Patent Box Requirements
To benefit from Patent Box, the following requirements must be met:
- Having a valid registration for the relevant asset: patent, utility model, supplementary protection certificate for medicinal and plant protection products, industrial design, or advanced software resulting from R&D projects.
- A rights assignment agreement or contract must have been signed.
- The licensee must use the rights of use and exploitation within the framework of an economic activity, and the results of such use must not materialize in the supply of goods or services by the licensee that generate tax-deductible expenses for the licensor, where both parties are related entities. This is arguably the most important requirement to benefit from the tax exemption.
- Maintaining accounting records that clearly reflect income and expenses directly related to the use or exploitation of the Patent Box.
- Not being resident in tax havens (with certain exceptions within the European framework).
- If the same contract includes ancillary services, each component must be clearly distinguished within the agreement.
