In a startup, a significant portion of the project's value is typically concentrated in its intangible assets. Software, developed technology, algorithms, databases, interfaces, branding, designs, digital content, and internal know-how often constitute the core of the business, determine its scalability, and occupy a central position in any investment, financing, or transfer process. The better defined its legal structure, the stronger the project and the better positioned the company will be to leverage, protect, and capitalize on these assets.
From this perspective, the shareholders' agreement plays a vital role. Along with regulating the relationship between founders, decision-making processes, and exit mechanisms, this document outlines how intangible assets are incorporated into the project, who holds ownership, how they are protected, and what happens to them in situations particularly critical to the startup's lifespan. When these issues are properly addressed from the outset, the project's legal security is strengthened, the risk of conflict between shareholders is reduced, and the entry of third parties interested in financing or acquiring the company is facilitated.
Therefore, in startups whose value depends, in whole or in part, on intellectual or industrial property assets, it is advisable that the shareholders' agreement include certain specific provisions. Among these, five clauses are particularly relevant.
1. Clause for the transfer of intangible assets to the company
One of the first issues that should be resolved is what pre-existing intangible assets each partner contributes to the project and under what terms the company can use or exploit them. In practice, it is common for one or more founders to have previously developed software, prototypes, designs, trademarks, technical documentation, content, or databases that end up being integrated into the startup's operations. If these assets are going to sustain the business, the shareholders' agreement should identify this circumstance and stipulate the obligation to properly formalize their assignment, license, or transfer to the company, with the necessary precision regarding its purpose and scope. The absence of such a provision can leave the company exploiting an essential asset without a sufficiently clear legal basis, which weakens its position, complicates investment processes, and may allow the founding partner to condition or dispute its future use.
2. Clause on the registration suitability of trademarks, designs and patents
When a project utilizes industrial property assets subject to registration, particularly trademarks, designs, or patents, the shareholders' agreement should expressly stipulate the obligation to take the necessary steps to ensure that the registered ownership is correctly recorded in favor of the company, provided that this is the agreed legal structure for its exploitation. This issue has immediate practical relevance, as investors, financiers, potential acquirers, or strategic partners typically scrutinize the registration status of the assets that underpin the business. If the startup exploits a trademark, design, or patent whose registered ownership is in the name of a shareholder or a third party, a discrepancy arises between the project's economic reality and its formal legal basis. This situation can affect the asset's soundness, increase the perceived risk during due diligence, and hinder investment, financing, or transfer transactions.
3. Clause for the protection of know-how and trade secrets
In many startups, a highly valuable part of the project lies in internally generated and accumulated technical, commercial, or organizational knowledge. Procedures, functional architecture, development methodologies, strategic information, product plans, operational parameters, customer information, or internal operating criteria can have considerable competitive value and, in certain cases, meet the requirements for protection as trade secrets.
Therefore, it is highly recommended that the shareholders' agreement include a specific clause aimed at strengthening the protection of this information, not only through clear confidentiality obligations and limits on access and use, but also by providing for the implementation of internal measures to protect trade secrets. These measures should allow for the identification, organization, and preservation of the startup's strategic information. Failure to include this provision poses a significant risk to the company, as the uncontrolled circulation of critical knowledge among shareholders, former shareholders, or collaborators can compromise its confidentiality, weaken its exclusive use, and hinder its subsequent protection.
4. Clause on intangible assets in case of a partner's departure
The departure of a partner is one of the most sensitive scenarios for a startup, especially when that partner has played a significant role in the development of the technology, content, or other distinctive elements of the project. Therefore, the partnership agreement should expressly stipulate that the intangible assets incorporated into the business, as well as the exploitation rights necessary for its continuity, remain within the company's sphere according to the previously agreed ownership or transfer arrangement. It is also advisable to clearly define the limitations applicable to the departing partner regarding the use, reuse, or exploitation of developments already integrated into the business project. Failure to include this clause can lead to claims concerning software, interfaces, creative materials, or technical solutions developed during the project's lifespan, with the consequent impact on the company's operational continuity and its ability to close corporate deals during particularly critical times.
5. Clause for the assignment of rights in developments carried out by third parties
From their early stages, many startups rely on freelance developers, design studios, agencies, technology consultants, or other external collaborators to advance product development or the project's visual and functional identity. For this reason, the shareholders' agreement should expressly stipulate that any development commissioned by the company must be accompanied by the corresponding assignment or allocation of intellectual or industrial property rights in favor of the startup, on terms appropriate to the nature and scope of the commission.
The absence of this provision often results in significant weaknesses in the project's rights structure. Frequently, contracts with third parties are incompletely documented or contain insufficient clauses, leaving essential product assets outside the company's legal scope.
The inclusion of these five clauses allows for a solid alignment of the project's economic value with its legal structure, providing clarity on the ownership and exploitation of the assets that underpin the business, reducing contingencies in investment or due diligence processes, and helping to prevent conflicts between partners regarding some of the startup's most valuable elements. When the project relies on proprietary technology, branding, design, or know-how, the shareholders' agreement should reflect this reality with the same rigor as it governs the capital structure, decision-making, or exit mechanisms, since the proper management of intellectual and industrial property is essential to protect the business, facilitate its financing, and ensure the legally sound exploitation of its intangible assets.
Santiago Chamochín, Lawyer in the Legal, Business and Contracts area of ELZABURU
