“One of the most common problems for a startup from a legal perspective is protecting its technology.”

Across Legal is a highly specialized law firm, committed to the improvement and growth of its clients, who are usually entrepreneurs, startups, mainly technological companies, scale ups, business angels, venture capital firms and investment funds, both national and international. Across Legal’s objective is to provide advice on decision making, support in the face of difficulties and the resolution of issues and problems that arise on a daily basis. 

The firm is organized in teams by areas of specialization in a legal environment in continuous evolution. For this reason, the firm offers a high quality and value-added service and advice to its clients. Thus, the firm has a network of national and international external collaborators, experts in very specific practices that complement any need required by the clients.

Across Legal is characterized by valuing the entrepreneurial attitude, so it is committed to support multiple start-ups, committing to the results and growth of clients who place their trust in the firm. Through their participation in various Boards of Directors, the firm’s partners contribute their experience to both companies and their shareholders, whether they are entrepreneurs or investors.

The advice they provide goes all the way from the incorporation of the company, through the contracts between clients and their employees, to the incentive and value-sharing schemes for key personnel, the essential partner agreements, investment agreements and the protection and exploitation of intellectual and industrial property and know-how of the companies. Their experience and specialized knowledge in international operations is also remarkable, meaning they are used to coordinating operations and disputes in legal environments and foreign jurisdictions in close and assiduous collaboration with foreign law firms. Overall, Across Legal is the legal partner that accompanies and helps its clients in their growth both in their daily activity and in the financing rounds of national and international capital until the culmination of the same in processes of merger or sale of the company.

The clients that have trusted Across Legal include Logtrust, Wave App, Cooltra Motos, Openbravo, Boolino, Catchoom Technologies, 21 Buttons, Cuideo or Reby Rides, as well as investment funds such as Mangrove, Inveready, Conexo, and K FUND.

El Referente spoke to Iván Moll, Partner at Across Legal specialized in venture capital and M&A; Malcolm Bain, Partner at Across Legal specialized in IT IP; José Luis Gonzalo, Of Counsel at Across Legal.

Across Legal is a law firm specialized in VC and M&A activity, how did you specialize in this field?

Iván Moll (IM): Both my partner Ignacio Lacasa, director and founder of the Firm, and myself, come from professional backgrounds linked to the practice of corporate commercial law, focused on M&A. The specialization in VC and M&A, the latter very closely linked to the world of VC and Private Equity, is due to the need to offer highly specialized technical advice, with the highest standards of technical excellence and solvency that Ignacio, in particular, detected some years ago, taking into account the profile and needs of our clients. 

Hdiv and IriusRisk have trusted you in their respective operations. Why is that? What makes you different? Why should other companies come to you?

IM: In my opinion, with our experience accumulated over the years in operations of transcendence in the sector, we have demonstrated our ability to advise our clients in this type of operations in which, beyond the traditional components of M&A and VC operations, other intrinsic aspects play a very important role that a legal advisor should never forget and always keep in mind, since their consequences are legally transcendent.
 As I say, I believe that our experience is what supports us.

Are startups and scale ups aware that legal advice is necessary in rounds, exits, etc.?
 What would you say to those who don’t agree?

IM: Honestly, I believe that at this point no one questions it anymore. In fact, legal representation is necessary from the very first term sheet of the first proposed or projected operation.
 The initial decisions of a company can, on many occasions, be transcendental and decisive for the rest of the company’s life.

What aspects are essential for a successful financing round?

IM: Firstly, I would say that there are a series of aspects that transcend the legal aspect, such as the seriousness and consistency of the project, of the business, and the confidence in the human and entrepreneurial team of the target. Obviously, these aspects are redefined and resized depending on the maturity of the project and the stage of the target.
From a legal point of view, I believe there must be a certain balance (which is not always easy) between the demands of both parties, i.e., investors and entrepreneurs. In many cases, experience can shed light on this issue and help to resolve any possible disagreements.

And in the case of a sale? What would you say are those must-haves?

IM: I would repeat what I said before about achieving a balance of wishes between sellers and buyers. The legal advisor must know the “culture” of the parties involved in these types of deals. For example, a US buyer does not necessarily have the same idea or principles governing these types of operations as Spanish sellers, and the lawyer must know how to offer, within the framework of their advice, legal advice on these aspects, detecting them previously, analyzing them and framing them on the basis of the applicable law (in our case, Spanish law) and identifying and explaining the consequences of the same to their clients.

An example of this may be how the price is defined and what its components are. Or, for example, the commitments that the buyer requires the promoter/management team to assume in addition to its role as seller (permanence, non-competition, exclusivity, beneficiary of incentives, etc.).

How about in the case of foreign ecosystems? What presence do you have beyond Spain?

IM: Across Legal has proven experience in operations with an international component, particularly with the USA. On the one hand, we have clients who are European or American funds investing in Spanish companies. On the other hand, in relation to this matter, we have clients who are Spanish companies that we advise on their migration to the USA, either because of the demands of funds based there or because of the company’s desire to expand its business and operate in the USA. For this purpose, we have a network of international collaborators and highly specialized local lawyers with whom we work on these types of projects.

What other goals does Across Legal have for its future? In what ways do you want to improve, move forward?

IM: Across Legal has been growing steadily for some years now, even with double-digit figures. Our goal is to continue growing, as this will allow us to expand our range of professional services both to our current clients and to others in other sectors. For example, I think we should definitely open our services to legal advice to biotech companies and their investors.

Across Legal also has experts in R&D and intellectual property. How have you developed in this field? Who requires your services in this regard?

Malcolm Bain (MB): We have participated in many projects, both from the perspective of legal research, as well as for the protection and exploitation of the results of R&D&I, as well as in the training of researchers in legal issues. Therefore, we have many collaborations with universities (UPC, UOC, UDL, UDG, Cambridge, University of Luxembourg), as well as spinouts and other companies that exploit R&D results.

Furthermore, with our expertise in IT law (in software licensing, open source, scientific data, personal data, and ecommerce platforms), our main clients are technology startups or university spinouts, consolidated companies in the sector, and of course companies investing in ICT projects.
Finally, we also work in the field of culture, advising on more traditional issues related to intellectual property, as well as on new issues, in particular, in the process of digitization of culture, both for museums and for artists, distributors and platforms.

What are the most common problems for startups in terms of technology exploitation and commercialization?

MB: From a legal perspective, one of the most common problems for a startup is to protect its technology, as well as its intellectual and industrial property rights, to regulate collaborations with third parties (partners, channel), to ensure a good level of compliance with data regulations and third party rights, or to internationalize in a global market.
 This creates a solid and quality “legal” foundation for the startup company and minimizes problems when seeking partnerships, financing or carrying out an exit.

What kind of advice do you offer in the creation and implementation of educational and technology projects related to teaching?

MB: We have worked with several edtech projects, both open source and under proprietary exploitation models, for their legal protection (copyright, trademarks, etc.) and to regulate the dissemination and exploitation of these technologies (licenses), both online and on premise, and the management of personal data. We have several clients who are universities and private and public training centers. 

What new services would you like to include in the medium to long term?

MB: We are already including services for blockchain and DLT projects, NFTs, etc., as well as for other state-of-the-art technologies such as artificial intelligence, big data, or machine learning. These are complicated technologies and projects and require in-depth knowledge of the subject matter and a lot of agility (and experience) when advising our clients. 

What other goals does Across Legal have for its future? In what ways do you want to improve, move forward?

MB: We aim to continue growing, to continue being a reference in the field of intellectual property law and information technologies, to continue creating and forming a team with young lawyers passionate about technology, digital culture and the defense of digital rights, to continue supporting disruptive projects, research in ICT and its transfer to society, and to continue researching and innovating in the law of these technologies and the new dynamics between actors involved in the knowledge society.

A company like Across Legal cannot disregard tax guidance, but how do you adapt this to scale ups and entrepreneurs?

José Luis Gonzalo (JLG): Indeed, taxation is fundamental in any type of business, and the world of entrepreneurship is no exception. Frequently, when a client presents us with an operation, the first phase of the Firm’s work is tax structuring.
 Only when we have found the most tax efficient and lowest risk way to achieve the business objectives do we start with the execution.

The way we have to adapt the tax advisory service to the particular situation of an entrepreneurial company is:

  • Try to understand very well the situation in which the company and its founders find themselves. We use a checklist of tax-relevant issues typical of the sector/type of operation, which helps us to quickly identify the client’s needs and the work to be done.
  • We always adapt, as far as possible, to the client’s economic circumstances.

We try to add value in the creativity of our solutions and providing security to the client on how an operation should be treated fiscally. We believe that the most important thing after an operation is for both client and advisor to have peace of mind.

In VC and M&A operations, what are the most important aspects to highlight at the tax level? Does it get more complicated when we talk about operations involving other countries or jurisdictions?

JLG: As we have already mentioned, tax structuring is fundamental in any operation. In the case of a sale, the taxation of the income obtained, especially if the payment is made in shares, and/or with an earn-out element, the tax representations and guarantees given to the buyer, the incentives to founders who remain in the purchased company, etc., among other issues, are usually of concern. In a buyout, the corporate structure of the buyout, the exit planning, the management of the acquisition of tax liabilities, etc. are important.

In the case of a financing operation in the USA, we analyze the fastest and most tax-efficient way to make the flip (where we try to be especially creative) and the tax planning of the post-restructuring flows, etc.

If it is an international expansion operation, we analyze the management of tax risks abroad and the coordination with the transfer pricing team to model the tax effect of the mark-to-market valuation of related-party operations, etc. In a corporate restructuring (for example, a typical spin-off or carve-out situation of one of the company’s business divisions, when it is expected to grow separately), the application of the tax deferral regime, the taxation of future capital gains on the sale of the spun-off business, the influence of the deferred tax on the exchange ratio, if any, etc., is fundamental.

Other issues that we frequently see in the office and that usually have some singularity in the world of the entrepreneurial company are:

  • Tax and estate planning of the founders (IRPF, IP, ISD, etc.).
  • Tax aspects of the financing of the company.
  • International taxation (tax aspects of the expansion of a business abroad, flips to the United States, taxation of the international mobility of the employee -expatriation, impatriation-, changes of tax residence, etc.).
  • Taxation of employee incentive mechanisms (ESOPs, phantoms, delivery of shares, etc.).

The international activity of entrepreneurial companies (sale and purchase, financing, restructuring) involves entering the complex and changing world of international taxation.
  As a first problem we face a possible double taxation of the same income, the uncertainty generated by which tax laws exist and how they are applied in other countries, choosing (well) a foreign advisor expert in international taxation, and coordinating their work so that the client understands the situation and the best way forward, etc.  In the firm we have extensive experience in these types of operations, and in the management of multidisciplinary teams abroad (commercial and tax lawyers, financiers, client, etc.) to bring an international operation to a successful conclusion.