In a startup, a very significant portion of the project’s value is often concentrated in its intangible assets. Software, developed technology, algorithms, databases, interfaces, the brand, designs, digital content, and internal know-how frequently constitute the main foundation of the business, determine its scalability, and play a central role in any investment, financing, or transfer process. The more clearly defined its legal status is, the stronger the project will be, and the better positioned the company will be to exploit, defend, and maximize the value of those assets.
From this perspective, the shareholders’ agreement plays an essential role. In addition to governing the relationship among founders, decision-making, and exit mechanisms, this document sets forth how intangible assets are incorporated into the project, who should hold ownership of them, how they are protected, and what happens to them in situations that are particularly critical to the startup’s survival. When these issues are properly resolved from the outset, the project’s legal certainty is strengthened, the risk of conflict among partners is reduced, and it becomes easier to attract third parties interested in financing or acquiring the company.
For this reason, in startups whose value depends, in whole or in part, on intellectual or industrial property assets, it is advisable for the shareholders’ agreement to include certain specific provisions. Among these, there are five clauses that are particularly relevant.
1. Clause Regarding the Transfer of Intangible Assets to the Company
One of the first issues that should be resolved is which pre-existing intangible assets each partner contributes to the project and under what terms the company may 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 ultimately become part of the startup’s operations. If these assets are to underpin the business, the partners’ agreement should acknowledge this fact and provide for the obligation to properly formalize their assignment, licensing, or transfer to the company, with the necessary precision regarding their purpose and scope. The absence of such a provision may leave the company exploiting an essential asset without a sufficiently clear legal title, which weakens its position, complicates investment processes, and may allow the founding partner to impose conditions on or dispute its future use.
2. Clause Regarding the Registration of Trademarks, Designs, and Patents
When the project involves industrial property rights eligible for registration—particularly trademarks, designs, or patents—the shareholders’ agreement should expressly provide for the obligation to take the necessary steps to ensure that the registered ownership is correctly reflected in the company’s name, provided that this is the agreed-upon legal structure for the project’s operation. This issue has immediate practical relevance, as investors, lenders, 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 partner or a third party, a discrepancy arises between the economic reality of the project 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 on the Protection of Know-How and Trade Secrets
In many startups, a very valuable part of the project lies in the technical, commercial, or organizational knowledge generated and accumulated internally. 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 a trade secret.
For this reason, it is particularly advisable for the shareholders’ agreement to include a specific clause aimed at strengthening the protection of this information—not only through clear confidentiality obligations and restrictions on access and use, but also by providing for the implementation of internal measures to protect trade secrets that allow the startup to identify, organize, and preserve its strategic information. Failure to include such a provision poses a significant risk to the company, as the uncontrolled circulation of critical knowledge among partners, former partners, or collaborators can compromise its confidentiality, undermine its exclusive use, and hinder its subsequent protection.
4. Provision Regarding Intangible Assets in the Event of a Partner's Withdrawal
The departure of a partner is one of the most sensitive situations a startup can face, especially when that partner has played a significant role in the development of the technology, content, or other distinctive elements of the project. For this reason, the partnership agreement should expressly provide that the intangible assets incorporated into the business, as well as the exploitation rights necessary for its continuity, remain within the company in accordance with the previously agreed-upon ownership or assignment terms. It is also advisable to clearly regulate the restrictions applicable to the departing partner regarding the use, reuse, or exploitation of developments already integrated into the business project. The omission of this clause may give rise to claims regarding software, interfaces, creative materials, or technical solutions developed during the project’s lifespan, with a consequent impact on the company’s operational continuity and its ability to close corporate transactions at particularly sensitive times.
5. Clause on the Assignment of Rights in Projects Developed by Third Parties
From the early stages, many startups turn to freelance developers, design studios, agencies, technology consultants, or other external partners to advance the product’s development or the project’s visual and functional identity. Precisely for this reason, the partnership agreement should expressly provide that any development commissioned by the company must be accompanied by the corresponding assignment or transfer of intellectual or industrial property rights to the startup, on terms appropriate to the nature and scope of the commission.
The absence of such provisions often results in significant weaknesses in the project’s rights chain. Contracts with third parties are frequently documented incompletely or contain insufficient clauses, with the result that assets essential to the product fall outside the company’s legal scope.
Including these five clauses ensures a solid alignment between the project’s economic value and its legal structure, providing clarity on the ownership and operation of the assets that underpin the business, reducing contingencies in investment or due diligence processes, and helping to prevent conflicts among partners regarding some of the startup’s most valuable assets. When the project is based on technology, a brand, design, or proprietary knowledge, the partners’ agreement should reflect this reality with the same rigor with which it regulates 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, Attorney in the Legal, Business, and Contracts Department at ELZABURU