An IP joint venture agreement has to settle three questions before the partners start working together: who owns what each party brings and what the joint venture creates, who owns later improvements, and what happens to the IP when the venture ends. If the contract is silent, national default rules decide, and they differ between Spain, Brazil and the rest of the corridor. This guide is for companies setting up joint ventures between Europe, Latin America and Africa, and for the in-house teams negotiating them.
Key takeaways
- Separate background IP (what each partner contributes) from foreground IP (what the joint venture creates) and give each category an owner, a licence and a territory.
- Default rules are not neutral. In Spain, a co-owner can exploit a joint patent alone after notifying the others, but licensing it to a third party needs everyone’s agreement.
- In Brazil, improvements to a licensed patent belong to whoever makes them, with a right of preference for the other party to license them.
- Assignments and licences only bind third parties once recorded: at the OEPM in Spain and at the INPI in Brazil.
- Plan the exit at signing: buy-out of the IP, licence-back, brand phase-out and recordals in every office.
Why do cross-border joint ventures end in IP disputes?
In a typical corridor joint venture, a European partner brings technology or a brand and a Latin American or African partner brings market access, distribution or manufacturing. Each side contributes something different, and over time the venture develops its own know-how, products and goodwill. The disputes we see in practice rarely come from bad faith at the start; they come from questions nobody answered: whose name is on the local registrations, who may use the improved process outside the joint venture, and who keeps the brand when one partner leaves.
The risk grows with distance. Registrations are often filed by the local partner for speed, in its own name, and the contract may be governed by one law while the rights are registered under several others.
Background and foreground IP: who should own what?
The core of any IP joint venture agreement is a clear allocation by category. This table summarises the usual options:
| Category | Usual options | What to write down |
|---|---|---|
| Background IP (patents, marks, software, know-how each partner brings) | Stays with the contributing partner; licensed to the joint venture | Exact list of rights, scope and territory of the licence, whether it ends with the joint venture |
| Foreground IP (created by the joint venture) | Owned by the joint venture company, or jointly by the partners, or allocated by field | Who files, in whose name, who pays, who decides on enforcement |
| Improvements to background IP | Owned by the contributor, by the improver with a licence-back, or by the joint venture | Definition of “improvement”, notification duties, licence terms |
| Joint venture brand | Owned by one partner and licensed, or owned by the joint venture | Registration owner in each country, quality control, phase-out on exit |
| Know-how and data | Protected as trade secrets; access rules per partner | Confidentiality, access logs, what each partner may keep after exit |
Our recommendation is to avoid joint ownership of foreground IP unless there is a clear reason for it. Co-owned rights are harder to license, enforce and sell, and the default rules on co-ownership vary by country.
What happens if the IP joint venture agreement is silent?
National law fills the gaps, and each country does it differently. Three examples from the corridor:
Spain: co-owned patents
Article 80 of the Spanish Patents Act (Law 24/2015) says that co-ownership is governed first by the parties’ agreement. Failing that, each co-owner may exploit the invention after notifying the others, enforce the patent against infringers and sell its share, subject to the other co-owners’ pre-emption rights (two months from notice) and redemption rights (one month from recordal). A licence to a third party, however, must be granted by all co-owners jointly unless a court allows otherwise. Article 79 adds that transfers and licences only have effect against third parties acting in good faith once recorded in the Patent Register, and Article 82 requires them to be in writing.
Brazil: improvements and recordals
Brazil’s Industrial Property Law (Law 9,279/1996) provides in Article 63 that an improvement to a licensed patent belongs to whoever makes it, with a right of preference for the other party to license it. Articles 62 and 140 require patent and trademark licences to be recorded at the INPI (Brazil’s National Institute of Industrial Property) to have effect against third parties, and Article 211 extends recordal to technology transfer and franchise agreements. For a joint venture licensing technology into Brazil, recordal is therefore part of the deal, not an afterthought.
European Union: joint R&D and competition law
Where the joint venture carries out research and development between partners, EU competition rules apply. Regulation (EU) 2023/1066, in force until 30 June 2035, exempts R&D agreements that meet its conditions: all parties must have full access to the final results, including resulting IP rights and know-how (Article 3); for competitors, a combined market share threshold of 25% applies (Article 6); and an obligation not to challenge the validity of the parties’ IP falls outside the exemption (Article 9).
Exit: what happens to the IP when the joint venture ends?
The exit clause is where most of the value is decided. Before signing, agree on:
- Trigger events: deadlock, change of control, insolvency, breach, or simply the end of the term.
- Who buys out the foreground IP and at what price or valuation method.
- Licence-backs: which partner keeps using which technology, in which field and territory, and for how long.
- The brand: who keeps it, and how long the other partner has to phase it out.
- Formalities: signed assignments and their recordal in every office where the rights are registered, from the OEPM and the EUIPO to Latin American and African offices.
What this means for your business
- Audit each partner’s background IP before signing and attach the list to the agreement.
- Decide who files new applications and in whose name, country by country, and check the registers regularly.
- Record licences and assignments where recordal is required for effect against third parties.
- Align the governing law and dispute resolution clause with where the rights are registered and enforced.
- Check the R&D and licensing terms against EU competition rules if the partners compete.
If you are negotiating a joint venture across several countries, our cross-border IP strategy team can map the rights and the registrations, and our IP licensing and assignment team can draft and record the agreements.
Where joint ventures get IP wrong
- Letting the local partner register in its own name. Recovering a mark registered by a former partner can take years and litigation.
- Defining “improvements” vaguely. Without a definition, each side claims the same development.
- Forgetting recordals. An unrecorded licence or assignment may not bind third parties, in Spain and Brazil among others.
- Choosing joint ownership by default. It feels fair at signing but makes licensing and enforcement harder later.
- Leaving the exit for later. When the relationship breaks down, negotiating the IP split becomes far more expensive.
Frequently asked questions
Who owns IP created by a joint venture?
Whoever the agreement says. If the joint venture is a separate company, IP created by its employees will usually belong to it under the applicable employment and IP rules, but the partners can allocate ownership differently by contract. If the agreement is silent, national default rules apply, and they vary by country and by type of right.
Can a co-owner of a patent license it without the others?
Under Spanish law, no. Article 80 of Law 24/2015 allows each co-owner to exploit the invention after notifying the others, but a licence to a third party must be granted by all co-owners jointly, unless a court authorises one of them. Other countries have different rules, which is why a co-ownership agreement is recommended.
Do joint venture IP agreements need to be registered?
Often, for the licences and assignments they contain. In Spain, patent transfers and licences only have effect against third parties in good faith once recorded at the OEPM. In Brazil, licences and technology transfer agreements must be recorded at the INPI to have effect against third parties. Check the recordal rules in each country where the rights are registered.
Can IP Global Guard support our joint venture negotiations?
Yes. We audit the partners’ background IP, structure ownership, licences and exit terms, and handle the recordals before the OEPM and the EUIPO directly when our professionals are entitled to and otherwise through qualified representatives, coordinating local correspondents in Latin America and Africa from a single point of contact.
How IP Global Guard protects your position in a joint venture
A joint venture is only as solid as the IP clauses behind it. IP Global Guard, the IP services line of META Channel Corporation Limited, structures and records IP in cross-border deals across more than 25 jurisdictions in Europe, Latin America and Africa, with one strategy, one point of contact and one billing relationship.
Share the joint venture term sheet and the list of rights each partner will contribute. We will identify the ownership, improvement and exit risks, and coordinate the filings and recordals in every country concerned. Talk to our team about your joint venture.
This article is general information, not legal advice, and joint venture terms should be reviewed under the laws that govern each right.
Sources
- BOE, Spanish Patents Act, Law 24/2015 of 24 July (consolidated text, Articles 79, 80 and 82)
- Presidency of Brazil, Industrial Property Law, Law 9,279 of 14 May 1996 (Articles 62, 63, 140 and 211)
- Official Journal of the EU, Commission Regulation (EU) 2023/1066 on research and development agreements (1 June 2023)
