{"id":553,"date":"2026-07-22T09:00:00","date_gmt":"2026-07-22T09:00:00","guid":{"rendered":"https:\/\/ipglobalguard.com\/cross-border-ip-due-diligence-checklist\/"},"modified":"2026-07-22T09:00:00","modified_gmt":"2026-07-22T09:00:00","slug":"cross-border-ip-due-diligence-checklist","status":"publish","type":"post","link":"https:\/\/ipglobalguard.com\/en\/blog\/cross-border-ip-due-diligence-checklist\/","title":{"rendered":"Cross-border IP due diligence: a checklist for Europe, LatAm and Africa"},"content":{"rendered":"<p>Cross-border IP due diligence is the review a buyer, investor or lender runs to confirm that the target really owns the trade marks, patents, designs, software and domains it is paying for, in every country where they matter. Between Europe, Latin America and Africa the answer turns less on the certificates than on <strong>chain of title and recordals<\/strong>: an assignment or licence that was never entered in the local register may not bind third parties. This checklist is for deal teams, in-house counsel and investors preparing an acquisition, joint venture or financing across the corridor.<\/p>\n<h2>Key takeaways<\/h2>\n<ul>\n<li>Value depends on the right to exclude competitors, so the first question is always who owns each right, where, and whether that ownership can be shown to third parties.<\/li>\n<li>In the EU, Spain, Brazil, the Andean Community, Mexico and OAPI, transfers and licences produce effects against third parties only once recorded, or from publication of the recordal.<\/li>\n<li>A licence entered in the Madrid International Register has no effect in Brazil, Chile, Colombia, Mexico or OAPI, among others: it must be recorded locally.<\/li>\n<li>Brazil requires an assignment to cover all identical or similar marks of the assignor for related goods, or the marks left behind may be cancelled.<\/li>\n<li>Findings should end up in the price, the conditions precedent and a post-closing recordal plan, not only in a report.<\/li>\n<\/ul>\n<h2>What does cross-border IP due diligence cover?<\/h2>\n<p>The <a href=\"https:\/\/www.wipo.int\/en\/web\/business\/ip-valuation\" target=\"_blank\" rel=\"noopener\">World Intellectual Property Organization (WIPO)<\/a> explains that the value of an IP asset comes from the owner&#8217;s right to exclude competitors, and that valuation supports mergers, acquisitions, joint ventures, licensing and IP-backed financing. A due diligence exercise tests the legal side of that value: whether the rights exist, belong to the target, cover the products and territories in the business plan, and are free of claims that would cut them down.<\/p>\n<p>Across 25 offices this becomes a coordination problem: each register has its own tools and language, recordals follow different rules, and one brand may sit with several group companies.<\/p>\n<h2>Cross-border IP due diligence checklist, phase by phase<\/h2>\n<ol>\n<li><strong>Scoping.<\/strong> Agree which rights are material (core brands, the patent families behind the main product, key software) and in which markets.<\/li>\n<li><strong>Portfolio schedule.<\/strong> Ask the target for a schedule per right: number, office, owner of record, status, classes or claims, next renewal or annuity date. Check it against the official registers, not against the target&#8217;s docketing system.<\/li>\n<li><strong>Chain of title.<\/strong> For each material right, trace ownership from the first filing to today: assignments, mergers, name changes. Look for gaps between the contractual owner and the registered owner.<\/li>\n<li><strong>Licences and encumbrances.<\/strong> List in-licences, out-licences, franchises, technology transfer agreements and security interests. Check which have been recorded, and where recordal is required for them to bind third parties or to support payments abroad.<\/li>\n<li><strong>Disputes and vulnerabilities.<\/strong> Pending oppositions, cancellation actions, non-use risks, infringement claims, customs recordals and domain name disputes.<\/li>\n<li><strong>Unregistered assets.<\/strong> Software and copyright (who wrote the code, under which contract), trade secrets, domain names and social media accounts, which are often registered to an employee or an agency.<\/li>\n<li><strong>Closing deliverables.<\/strong> Confirmatory assignments, recordal requests, powers of attorney and a calendar of post-closing filings per office.<\/li>\n<\/ol>\n<h2>Why recordals decide who owns what in each jurisdiction<\/h2>\n<p>The effect of an unrecorded transaction varies, but the direction is the same: third parties may rely on the register.<\/p>\n<table>\n<thead>\n<tr>\n<th>Jurisdiction<\/th>\n<th>What the law says<\/th>\n<th>Source<\/th>\n<\/tr>\n<\/thead>\n<tbody>\n<tr>\n<td>European Union (EU trade marks)<\/td>\n<td>An assignment must be in writing and signed by both parties, or it is void. Transfers, rights in rem and licences have effect against third parties only after entry in the Register, except against those who knew of the act; universal succession such as a merger is excluded from that rule.<\/td>\n<td>Regulation (EU) 2017\/1001, Arts. 20 and 27<\/td>\n<\/tr>\n<tr>\n<td>Spain<\/td>\n<td>Transfers, licences and security interests over a mark can be relied on against third parties in good faith only once entered in the Trade Mark Register.<\/td>\n<td>Trade Marks Act 17\/2001, Art. 46.3<\/td>\n<\/tr>\n<tr>\n<td>Brazil<\/td>\n<td>Assignments are annotated by INPI and take effect against third parties from publication. Licences must be recorded (averba\u00e7\u00e3o) to bind third parties. An assignment must include all identical or similar marks of the assignor for related goods or services.<\/td>\n<td>Law 9.279\/1996, Arts. 135, 137 and 140<\/td>\n<\/tr>\n<tr>\n<td>Andean Community (Bolivia, Colombia, Ecuador, Peru)<\/td>\n<td>Every transfer and licence of a mark or patent must be registered with the national office; without registration it has no effect against third parties.<\/td>\n<td>Decision 486, Arts. 56, 57, 161 and 162<\/td>\n<\/tr>\n<tr>\n<td>Mexico<\/td>\n<td>Transfers and encumbrances must be recorded with IMPI to affect third parties. A previously recorded encumbrance that has not been cancelled leads to rejection of a later transfer recordal.<\/td>\n<td>LFPPI, Arts. 137 and 139<\/td>\n<\/tr>\n<tr>\n<td>OAPI (African Intellectual Property Organization)<\/td>\n<td>Assignments and licences of marks must be in writing on pain of nullity and can be relied on against third parties only once entered in the special register and published.<\/td>\n<td>Bangui Agreement, Annex III, Arts. 30 and 31<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n<p>Mexico is a live example. The new Regulations of the Federal Law on the Protection of Industrial Property, <a href=\"https:\/\/dof.gob.mx\/nota_detalle.php?codigo=5786237&amp;fecha=28\/04\/2026\" target=\"_blank\" rel=\"noopener\">published in the Official Gazette on 28 April 2026<\/a> and applicable from 22 July 2026, extend the same logic to a broad Technology Transfer Register: recordal is not a condition of validity, but it is the condition for effect against third parties (Art. 193). For a buyer, an unrecorded licence or assignment in one of these countries is not necessarily invalid, but it is a gap the seller should close before or at completion.<\/p>\n<h2>International registrations and PCT applications: the hidden traps<\/h2>\n<p>Madrid international registrations and PCT applications look like one asset but are bundles of national rights.<\/p>\n<ul>\n<li><strong>New owner&#8217;s entitlement.<\/strong> WIPO will record a <a href=\"https:\/\/www.wipo.int\/web\/madrid-system\/how_to\/manage\/ownership\" target=\"_blank\" rel=\"noopener\">change in ownership of an international registration<\/a> only if the new owner is a national of, or domiciled or established in, a Madrid member; the fee is CHF 177. A buyer structured through a vehicle in a non-member state needs a different plan.<\/li>\n<li><strong>Licences recorded at WIPO.<\/strong> Under Rule 20bis(6)(b), several members have <a href=\"https:\/\/www.wipo.int\/en\/web\/madrid-system\/members\/declarations\" target=\"_blank\" rel=\"noopener\">declared that a licence entered in the International Register has no effect<\/a> in their territory, including Brazil, Chile, Colombia, Mexico and OAPI. Local recordal is still needed there.<\/li>\n<li><strong>PCT applications.<\/strong> The International Bureau records changes of applicant during the international phase, but <a href=\"https:\/\/www.wipo.int\/pct\/en\/texts\/rules\/r92bis.html\" target=\"_blank\" rel=\"noopener\">not after 30 months from the priority date<\/a> (PCT Rule 92bis.1). After that, each national or regional phase needs its own recordal.<\/li>\n<\/ul>\n<h2>How findings feed into valuation and the deal documents<\/h2>\n<p>WIPO describes three valuation methods: the income method, the most common, which discounts expected income to present value; the market method, based on prices paid for comparable rights; and the cost method, based on the cost of creating or replacing the asset. Each depends on diligence findings. A brand without protection in a growth market, a patent family with lapsed national phases or a licence that cannot be relied on against third parties all reduce expected income or increase risk.<\/p>\n<p>Findings then translate into four levers: price adjustment or escrow, conditions precedent (such as recording a missing assignment), specific indemnities, and post-closing covenants with a recordal calendar.<\/p>\n<h2>What this means for your business<\/h2>\n<ol>\n<li>Decide early which rights and countries are material, and request the portfolio schedule first.<\/li>\n<li>Verify ownership and status against the official registers in each country, not only against the seller&#8217;s records.<\/li>\n<li>Map licences and security interests per jurisdiction and check where recordal is required for effect against third parties.<\/li>\n<li>Treat Madrid and PCT rights as bundles: check entitlement of the buyer vehicle and local recordals.<\/li>\n<li>Agree a post-closing recordal plan before signing, with owners and dates.<\/li>\n<\/ol>\n<p>If your deal touches several offices across the corridor, our <a href=\"https:\/\/ipglobalguard.com\/en\/services\/ip-strategy-cross-border\/\">cross-border IP due diligence and portfolio structuring team<\/a> can run the review and the post-closing recordals as a single workstream.<\/p>\n<h2>Where IP due diligence goes wrong<\/h2>\n<ul>\n<li><strong>Relying on the seller&#8217;s docket.<\/strong> Internal schedules miss lapsed rights, wrong owners of record and pending actions that only the official register shows.<\/li>\n<li>Ignoring the Brazilian &#8220;all similar marks&#8221; rule. Assigning one mark and leaving related marks with the seller can put the marks left behind at risk of cancellation.<\/li>\n<li>Assuming a WIPO recordal is enough. For licences, it may have no effect in the Latin American and African markets that matter most.<\/li>\n<li>Leaving recordals until after closing without a plan. Mexico&#8217;s rule on uncancelled encumbrances shows how an old security interest can block a transfer later.<\/li>\n<li>Forgetting copyright and domains, which are often held by a developer or an agency rather than the target.<\/li>\n<\/ul>\n<h2>Frequently asked questions<\/h2>\n<h3>How long does cross-border IP due diligence take?<\/h3>\n<p>It depends on scope rather than portfolio size. A review limited to core brands and patent families in a handful of countries can fit a normal signing timetable; a review of every right in every office cannot. Agreeing materiality thresholds and getting the portfolio schedule early matter more than the number of jurisdictions.<\/p>\n<h3>Is an unrecorded IP licence invalid?<\/h3>\n<p>Usually not between the parties. In the EU, Spain, Brazil, the Andean Community, Mexico and OAPI, the general effect of not recording is that the transaction cannot be relied on against third parties, or only from the date of recordal or its publication. In a deal, that is still a gap worth closing before or at completion.<\/p>\n<h3>Do I need to record a change of owner in every country after an acquisition?<\/h3>\n<p>In most cases, yes, for each national or regional right. A Madrid international registration can be updated centrally at WIPO if the buyer is entitled to hold it, and a PCT application during the first 30 months, but national rights and national phases need their own recordals in each office.<\/p>\n<h3>Can IP Global Guard run the IP due diligence for our transaction?<\/h3>\n<p>Yes. We scope the review with your deal team, verify the portfolio against the registers, analyse chain of title, licences and disputes, and coordinate qualified local correspondents in Latin America and Africa. We then prepare and coordinate the post-closing recordals, so you keep one point of contact from data room to final recordal.<\/p>\n<h2>How IP Global Guard supports your transaction<\/h2>\n<p>A cross-border deal needs one view of the IP: who owns what, where, and what has to be fixed before money changes hands. IP Global Guard, the IP services line of META Channel Corporation Limited, works with one strategy and one billing relationship across more than 25 jurisdictions in Europe, Latin America and Africa; see our <a href=\"https:\/\/ipglobalguard.com\/en\/coverage\/\">coverage across the corridor<\/a>. Where the review uncovers disputes or contracts to renegotiate, our <a href=\"https:\/\/ipglobalguard.com\/en\/services\/legal-ip\/\">IP licensing and enforcement team<\/a> takes over without a handover to a new adviser.<\/p>\n<p>Share the deal timeline, the target&#8217;s main brands and patents and the countries in scope. We will propose a review plan with clear materiality thresholds and a recordal calendar. <a href=\"https:\/\/ipglobalguard.com\/en\/contact\/\">Send us your transaction details<\/a>.<\/p>\n<p><em>This article is general information, not legal advice, and does not replace a review of your specific transaction.<\/em><\/p>\n<h2>Sources<\/h2>\n<ul>\n<li><a href=\"https:\/\/www.wipo.int\/en\/web\/business\/ip-valuation\" target=\"_blank\" rel=\"noopener\">WIPO, IP valuation (business resources page, consulted October 2026)<\/a><\/li>\n<li><a href=\"https:\/\/www.wipo.int\/wipolex\/edocs\/lexdocs\/laws\/en\/eu\/eu057en.html\" target=\"_blank\" rel=\"noopener\">Regulation (EU) 2017\/1001 on the European Union trade mark (14 June 2017), via WIPO Lex<\/a><\/li>\n<li><a href=\"https:\/\/www.boe.es\/buscar\/act.php?id=BOE-A-2001-23093\" target=\"_blank\" rel=\"noopener\">BOE, Spanish Trade Marks Act 17\/2001 (consolidated text)<\/a><\/li>\n<li><a href=\"https:\/\/www.planalto.gov.br\/ccivil_03\/leis\/l9279.htm\" target=\"_blank\" rel=\"noopener\">Planalto, Brazilian Industrial Property Law 9.279 (14 May 1996)<\/a><\/li>\n<li><a href=\"https:\/\/www.comunidadandina.org\/StaticFiles\/DocOf\/DEC486.pdf\" target=\"_blank\" rel=\"noopener\">Andean Community, Decision 486, Common Industrial Property Regime (14 September 2000)<\/a><\/li>\n<li><a href=\"https:\/\/www.diputados.gob.mx\/LeyesBiblio\/pdf\/LFPPI.pdf\" target=\"_blank\" rel=\"noopener\">Chamber of Deputies of Mexico, LFPPI (last amended 3 April 2026)<\/a><\/li>\n<li><a href=\"https:\/\/dof.gob.mx\/nota_detalle.php?codigo=5786237&amp;fecha=28\/04\/2026\" target=\"_blank\" rel=\"noopener\">DOF, Regulations of the LFPPI (28 April 2026)<\/a><\/li>\n<li><a href=\"https:\/\/justice.gouv.km\/wp-content\/uploads\/2025\/03\/oapi-accord-bangui-revise-2015.pdf\" target=\"_blank\" rel=\"noopener\">Bangui Agreement as revised on 14 December 2015, Annex III<\/a><\/li>\n<li><a href=\"https:\/\/www.wipo.int\/web\/madrid-system\/how_to\/manage\/ownership\" target=\"_blank\" rel=\"noopener\">WIPO, Madrid System: change in ownership (consulted October 2026)<\/a><\/li>\n<li><a href=\"https:\/\/www.wipo.int\/en\/web\/madrid-system\/members\/declarations\" target=\"_blank\" rel=\"noopener\">WIPO, Declarations made by Madrid System members (consulted October 2026)<\/a><\/li>\n<li><a href=\"https:\/\/www.wipo.int\/pct\/en\/texts\/rules\/r92bis.html\" target=\"_blank\" rel=\"noopener\">WIPO, Regulations under the PCT, Rule 92bis<\/a><\/li>\n<\/ul>\n","protected":false},"excerpt":{"rendered":"<p>A phase-by-phase checklist for IP due diligence in deals across Europe, Latin America and Africa, and why unrecorded assignments and licences can undermine value.<\/p>\n","protected":false},"author":1,"featured_media":1165,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"wds_primary_category":0,"footnotes":""},"categories":[24],"tags":[40,50,42,46,74,58],"class_list":["post-553","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-ip-strategy-cross-border","tag-africa","tag-due-diligence","tag-licensing","tag-mexico","tag-pct","tag-wipo"],"_links":{"self":[{"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/posts\/553","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/comments?post=553"}],"version-history":[{"count":0,"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/posts\/553\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/media\/1165"}],"wp:attachment":[{"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/media?parent=553"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/categories?post=553"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipglobalguard.com\/en\/wp-json\/wp\/v2\/tags?post=553"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}