REPORT on the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001

30.1.2024 - (COM(2023)0232 – C9‑0147/2023 – 2023/0133(COD)) - ***I

Committee on Legal Affairs
Rapporteur: Marion Walsmann
Rapporteur for the opinion of the associated committee pursuant to Rule 57 of the Rules of Procedure:
Danuta Maria Hübner, Committee on International Trade


Procedure : 2023/0133(COD)
Document stages in plenary
Document selected :  
A9-0016/2024
Texts tabled :
A9-0016/2024
Texts adopted :

DRAFT EUROPEAN PARLIAMENT LEGISLATIVE RESOLUTION

on the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001

(COM(2023)0232 – C9‑0147/2023 – 2023/0133(COD))

(Ordinary legislative procedure: first reading)

The European Parliament,

 having regard to the Commission proposal to Parliament and the Council (COM(2023)0232),

 having regard to Article 294(2) and Article 114 of the Treaty on the Functioning of the European Union, pursuant to which the Commission submitted the proposal to Parliament (C9‑0147/2023),

 having regard to Article 294(3) of the Treaty on the Functioning of the European Union,

 having regard to the opinion of the European Economic and Social Committee of 20 September 2023[1],

 having regard to Rule 59 of its Rules of Procedure,

 having regard to the opinions of the Committee on International Trade and the Committee on the Internal Market and Consumer Protection,–  having regard to the report of the Committee on Legal Affairs (A9-0016/2024),

1. Adopts its position at first reading hereinafter set out;

2. Calls on the Commission to refer the matter to Parliament again if it replaces, substantially amends or intends to substantially amend its proposal;

3. Instructs its President to forward its position to the Council, the Commission and the national parliaments.

 

 

Amendment  1

 

Proposal for a regulation

Recital 1

 

Text proposed by the Commission

Amendment

(1) On 25 November 2020, the Commission published its intellectual property action plan31 , where it announced its goals of promoting transparency and predictability in licensing of standard essential patents (SEPs), including by improving the SEP licensing system, for the benefit of Union industry and consumers, and in particular small and medium-sized enterprises (SMEs)32 . The action plan was supported by Council Conclusions of 18 June 202133 and by the European Parliament in its Resolution34

(1) On 25 November 2020, the Commission published its intellectual property action plan31, where it announced its goals of promoting transparency and predictability in licensing of standard essential patents (SEPs), including by improving the SEP licensing system, for the benefit of Union industry and consumers, and in particular micro, small and medium-sized enterprises (SMEs)32 . The action plan was supported by Council Conclusions of 18 June 202133 and by the European Parliament in its Resolution of 11 November 202134.

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31 Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions Making the most of the EU’s innovative potential An intellectual property action plan to support the EU’s recovery and resilience of 25 November 2020, COM(2020) 760 final.

31 Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions Making the most of the EU’s innovative potential An intellectual property action plan to support the EU’s recovery and resilience of 25 November 2020, COM(2020) 760 final.

32 OJ L 124 of 20.05.2003, p. 36.

32 OJ L 124 of 20.05.2003, p. 36.

33 Council conclusions on intellectual property policy, as approved by the Council (Economic and Financial Affairs) at its meeting on 18 June 2021.

33 Council conclusions on intellectual property policy, as approved by the Council (Economic and Financial Affairs) at its meeting on 18 June 2021.

34 European Parliament resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (2021/2007(INI)).

34 European Parliament resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (2021/2007(INI)).

Amendment  2

 

Proposal for a regulation

Recital 2

 

Text proposed by the Commission

Amendment

(2) This Regulation aims at improving the licensing of SEPs, by addressing the causes of inefficient licensing such as insufficient transparency with regard to SEPs, fair, reasonable and non-discriminatory (FRAND) terms and conditions and licensing in the value chain, and limited use of dispute resolution procedures for resolving FRAND disputes. All these together reduce the overall fairness and efficiency of the system and result in excess administrative and transactional costs. By improving the licensing of SEPs, the Regulation aims to incentivise participation by European firms in the standard development process and the broad implementation of such standardised technologies, particularly in Internet of Things (IoT) industries. Therefore, this Regulation pursues objectives that are complementary to, but different from that of protecting undistorted competition, guaranteed by Articles 101 and 102 TFEU. This Regulation should also be without prejudice to national competition rules.

(2) This Regulation aims at improving the licensing of SEPs, by addressing the causes of inefficient licensing such as insufficient transparency with regard to SEPs, fair, reasonable and non-discriminatory (FRAND) terms and conditions and licensing in the value chain, and limited use of dispute resolution procedures for resolving FRAND disputes. All these together reduce the overall fairness and efficiency of the system and result in excess administrative and transactional costs, which reduce resources available for investment in innovation. By improving the licensing of SEPs, the Regulation aims to incentivise participation by European firms in the standard development process and the broad implementation of such standardised technologies, particularly in Internet of Things (IoT) industries. Therefore, this Regulation pursues objectives that are complementary to, but different from that of protecting undistorted competition, guaranteed by Articles 101 and 102 TFEU. This Regulation should also be without prejudice to national competition rules.

Amendment  3

 

Proposal for a regulation

Recital 2 a (new)

 

Text proposed by the Commission

Amendment

 

(2a) Good faith SEP licensing negotiations between parties occur in many cases, yet in some, SEPs become the subject of legal proceedings. This Regulation aims to provide advantages to both Union SEP holders and SEP implementers by introducing mechanisms designed to address two key issues. First, situations where SEP implementers unreasonably delay or decline FRAND licenses. Second, scenarios where SEP holders impose non-FRAND royalties due to the risk of injunction and a lack of transparency. It is essential to ensure that SEP holders and implementers act in good faith before, during and after licensing negotiations. SEP implementers using standardised technology should proactively seek to take a license from the SEP holder who owns the technology they use and SEP holders should grant a license under FRAND terms and conditions to any party seeking one, irrespective of the position of the potential licensee in the respective value chain.

Amendment  4

 

Proposal for a regulation

Recital 2 b (new)

 

Text proposed by the Commission

Amendment

 

(2b) The measures introduced by this Regulation are consistent with the objectives of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (the ‘TRIPs Agreement’) to promote technological innovation and the dissemination of technology to the mutual advantage of the SEP holder and the user, as well as with the principles of preventing the abuse of intellectual property rights and adopting measures for public interest reasons. In particular, according to the TRIPs Agreement, an exception to the exclusive rights conferred by a patent is justified if it does not unreasonably conflict with a normal exploitation of the patent and it does not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

Amendment  5

 

Proposal for a regulation

Recital 3

 

Text proposed by the Commission

Amendment

(3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation.

(3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents in force in one or more Member States that a SEP holder claims to be essential to a standard that has been published by a standard development organisation, to which the SEP holder or a previous holder of the SEPs in question has or has not made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation.

Amendment  6

 

Proposal for a regulation

Recital 4

 

Text proposed by the Commission

Amendment

(4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies.

(4) There are well established commercial relationships and licensing practices for certain implementations of standards, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel implementations – sometimes of the same standards or subsets thereof – with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified implementations in which there is sufficient evidence that SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies.

Amendment  7

 

Proposal for a regulation

Recital 4 a (new)

 

Text proposed by the Commission

Amendment

 

(4a) Significant difficulties or inefficiencies in the licensing of SEPs that affect the functioning of the internal market might result from, among other things, material impediments to the timely and effective deployment, development, distribution or commercialisation of a product, service, or technology, but also unreasonable delays, involving an undue postponement of the conclusion of a licence agreement. They may also result from excessive costs, multiple legal disputes, challenges or litigations involving more than one SEP holder or SEP implementer, as well as from barriers to innovation where the implementation of a standard, including any lack thereof, hinders, limits or curtails technological innovation or advancement, as compared to industry norms.

Amendment  8

 

Proposal for a regulation

Recital 5

 

Text proposed by the Commission

Amendment

(5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered.

(5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology implementations underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out or the development of innovative technologies and emerging implementations. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant implementations, for which SEPs can be registered.

Amendment  9

 

Proposal for a regulation

Recital 6

 

Text proposed by the Commission

Amendment

(6) Because a FRAND commitment should be made for any SEP declared to any standard intended for repeated and continuous application, the meaning of standards should be broader than in Regulation (EU) No 1025/2012 of the European Parliament and of the Council35 .

(6) Because a FRAND commitment should be made for any SEP claimed to be essential to any standard intended for repeated and continuous application, the meaning of standards should be broader than in Regulation (EU) No 1025/2012 of the European Parliament and of the Council35.

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35 Regulation (EU) No 1025/2012 of the European Parliament and of the Council of 25 October 2012 on European standardisation, amending Council Directives 89/686/EEC and 93/15/EEC and Directives 94/9/EC, 94/25/EC, 95/16/EC, 97/23/EC, 98/34/EC, 2004/22/EC, 2007/23/EC, 2009/23/EC and 2009/105/EC of the European Parliament and of the Council and repealing Council Decision 87/95/EEC and Decision No 1673/2006/EC of the European Parliament and of the Council (OJ L 316, 14.11.2012, p. 12.)

35 Regulation (EU) No 1025/2012 of the European Parliament and of the Council of 25 October 2012 on European standardisation, amending Council Directives 89/686/EEC and 93/15/EEC and Directives 94/9/EC, 94/25/EC, 95/16/EC, 97/23/EC, 98/34/EC, 2004/22/EC, 2007/23/EC, 2009/23/EC and 2009/105/EC of the European Parliament and of the Council and repealing Council Decision 87/95/EEC and Decision No 1673/2006/EC of the European Parliament and of the Council (OJ L 316, 14.11.2012, p. 12.)

Amendment  10

 

Proposal for a regulation

Recital 7

 

Text proposed by the Commission

Amendment

(7) Licensing on FRAND terms and conditions includes licensing royalty-free. Given that most issues arise with royalty-bearing licensing policies, this Regulation does not apply to royalty-free licensing.

(7) Licensing on FRAND terms and conditions, which are key in the development of the digital society, includes licensing royalty-free. Given that most issues arise with royalty-bearing licensing policies, this Regulation does not apply to royalty-free licensing of SEPs, except where such SEPs are part of a portfolio of patents licenses for royalties.

Amendment  11

 

Proposal for a regulation

Recital 7 a (new)

 

Text proposed by the Commission

Amendment

 

(7a) Open standards are key in the development of our digital society, including the development of open source software. Open standards remove barriers to interoperability, promote choice between vendors and technology solutions and ensure market competition and innovation. This Regulation applies to open standards, whilst not discouraging SEP holders to innovate and participate in the open collaborative standards development.

Amendment  12

 

Proposal for a regulation

Recital 10 a (new)

 

Text proposed by the Commission

Amendment

 

(10a) Patent pools, as industry-led joint patent licensing solutions, are beneficial to the market and companies involved with SEP licensing, including both SEP holders and SEP implementers. They are a predictable and fair option for licensing patented technologies essential for a standard, since they allow an agreement to be reached on a widely acceptable set of licensing terms and conditions between companies from across the world. Since patent pools deal with SEPs, they should also commit to FRAND terms and conditions and they should provide full transparency with regard to the patents that are covered by their portfolio, ideally licence them to all interested licensees regardless of their position in the value chain and preferably include all the SEPs relevant to the standard.

Amendment  13

 

Proposal for a regulation

Recital 10 b (new)

 

Text proposed by the Commission

Amendment

 

(10b) While competition scrutiny of patent pools has already taken place, the uncertainty over the compatibility of licensee negotiation groups (LNGs) formed by SEP implementers still remains. LNGs can streamline the negotiation process, thereby reducing the administrative burden and ensuring that the licensing terms and conditions are more uniform and equitable for all participating SEP implementers. LNGs benefit SMEs in particular. The Commission should therefore examine the competitive impact of LNGs and analyse which conditions they should fulfil in order to comply with competition law while avoiding the risk of offering ‘hold-out’ options to participating SEP implementers.

Amendment  14

 

Proposal for a regulation

Recital 12

 

Text proposed by the Commission

Amendment

(12) To facilitate the implementation of this regulation, the European Union Intellectual Property Office (EUIPO) should perform the relevant tasks by means of a competence centre. The EUIPO has extensive experience with managing databases, electronic registers and alternative dispute settlement mechanisms, which are key aspects of the functions assigned under this Regulation. It is necessary to equip the competence centre with necessary human and financial resources to fulfil its tasks.

(12) As the agency of the European Union in charge of intellectual property rights and in order to facilitate the implementation of this Regulation, the European Union Intellectual Property Office (EUIPO) should perform the relevant tasks by means of a competence centre. The EUIPO has extensive experience with managing databases, electronic registers and alternative dispute settlement mechanisms, which are key aspects of the functions assigned under this Regulation. It is crucial to ensure that the competence centre has the necessary means, including human and financial resources to effectively perform its tasks.

Amendment  15

 

Proposal for a regulation

Recital 12 a (new)

 

Text proposed by the Commission

Amendment

 

(12a) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. Therefore, it is important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal, including through a meaningful engagement of stakeholders. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence and any potential impact of existing indemnification clauses downstream within a value chain. The framework provided for in this Regulation should promote the EU´s technological leadership in innovation.

Amendment  16

 

Proposal for a regulation

Recital 13

 

Text proposed by the Commission

Amendment

(13) The competence centre should set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs. The setting up and administering a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices.

(13) The competence centre should on the one hand set up and administer an electronic register containing detailed information on SEPs in force in one or more Member States. The electronic register should serve as a foundational repository designed to be the primary reference point for users, providing basic information about SEPs free of charge. On the other hand, the competence centre should also set up and administer an electronic database providing easily accessible information in a more extensive and comprehensive dataset to which access could be subject to the payment of a reasonable and proportionate fee. Public authorities, including courts, should have access to the information in the database free of charge. Academic institutions should also be able to request access to the information free of charge under certain conditions. The electronic register and the electronic database should offer a high level of legal certainty.

Amendment  17

 

Proposal for a regulation

Recital 13 a (new)

 

Text proposed by the Commission

Amendment

 

(13a) In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs and start-ups. The setting up and administering of a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices.

Amendment  18

 

Proposal for a regulation

Recital 14

 

Text proposed by the Commission

Amendment

(14) The competence centre should be the subject of Union rules on access to documents and data protection. Its tasks should be designed to increase transparency by making existing information relevant to SEPs available to all stakeholders in a centralised and systematic way. Therefore, a balance would have to be made between the free public access to basic information and the need to finance the functioning of the competence centre. In order to cover the maintenance costs a registration fee should be requested to access detailed information contained in the database, such as results of any essentiality checks and non-confidential FRAND determination reports.

(14) The competence centre should be the subject to Union rules on access to documents and data protection. Its tasks should be designed to increase transparency by making existing information relevant to SEPs available to all stakeholders in a centralised and systematic way. Therefore, a balance should be made between the free public access to basic information and the need to finance the functioning of the competence centre.

Amendment  19

 

Proposal for a regulation

Recital 15

 

Text proposed by the Commission

Amendment

(15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holder to plan expected return on investment. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, it is necessary to make public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing.

(15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holders to plan expected return on investment and SEP implementers to estimate the cost of standard integration in their products. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, SEP implementers and SEP holders would benefit from making public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing.

Amendment  20

 

Proposal for a regulation

Recital 16

 

Text proposed by the Commission

Amendment

(16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard or the aggregate royalty which they have agreed upon among themselves. Except for those use cases of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and/or implementers should be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain.

(16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard in respect of which they claim essentiality or the aggregate royalty which they have agreed upon among themselves. Except for those implementations of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty.

Amendment  21

 

Proposal for a regulation

Recital 16 a (new)

 

Text proposed by the Commission

Amendment

 

(16a) SEP holders and SEP implementers should be able to request that the competence centre provides a non-binding expert opinion by an independent third party on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide an expert opinion on the aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. In this respect, it would be important to consider factors such as efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain.

Amendment  22

 

Proposal for a regulation

Recital 17

 

Text proposed by the Commission

Amendment

(17) In line with the general principles and objectives of transparency, participation and access to European standardisation, the centralised register should make information regarding the number of SEPs applicable to a standard, the ownership of relevant SEPs, and the parts of the standard covered by the SEPs publicly available. The register and the database will contain information on relevant standards, products, processes, services and systems, which implement the standard, SEPs in force in the EU, standard SEP licensing FRAND terms and conditions or any licensing programmes, collective licensing programmes and essentiality. For SEP holders the register will create transparency with regard to the relevant SEPs, their share of all SEPs declared to the standard and the features of the standard covered by the patents. SEP holders will be in a better position to understand how their portfolios compare with other SEP holders’ portfolios. This is important not only for negotiations with implementers but also for the purpose of cross-licensing with other SEP holders. For implementers, the register will provide a trusted source of information on the SEPs, including with regard to the SEP holders from whom the implementer may need to obtain a licence. Making such information available in the register will also help shorten the length of technical discussions during the first stage of the SEP licensing negotiations.

(17) In line with the general principles and objectives of transparency, participation and access to European standardisation, the electronic register should make information regarding the number of SEPs applicable to a standard, the ownership of relevant SEPs, and the parts of the standard covered by the SEPs publicly available. The register and the database will contain information on relevant standards, products, processes, services and systems, which implement the standard, SEPs in force in the EU, standard SEP licensing FRAND terms and conditions or any licensing programmes, collective licensing programmes and essentiality. For SEP holders the register will create transparency with regard to the relevant SEPs, their share of all SEPs declared to the standard and the features of the standard covered by the patents. SEP holders will be in a better position to understand how their portfolios compare with other SEP holders’ portfolios. This is important not only for negotiations with implementers but also for the purpose of cross-licensing with other SEP holders. For implementers, the register will provide a trusted source of information on the SEPs, including with regard to the SEP holders from whom the implementer may need to obtain a licence. Making such information available in the register will also help shorten the length of technical discussions during the first stage of the SEP licensing negotiations.

Amendment  23

 

Proposal for a regulation

Recital 19

 

Text proposed by the Commission

Amendment

(19) In order to ensure transparency of about SEPs, it is appropriate to require from SEP holders to register their patents which are essential to the standard for which the registration is open. SEP holders should register their SEPs within 6 months following the opening of the registration by the competence centre or the grant of the relevant SEPs, whichever is first. In case of timely registration, SEPs holders should be able to collect royalties and claim damages for uses and infringements that happened before the registration.

(19) In order to ensure transparency of about SEPs, it is appropriate to require from SEP holders to register their patents which are essential to the standard for which the registration is open. SEP holders should register their SEPs within 6 months following the opening of the registration by the competence centre or the grant of the relevant SEPs, whichever is first. SEP holders may collect royalties even if their SEP is not registered, but they should only be able to claim damages for uses and infringements that happened before the registration in case of timely registration, provided that the amount thereof has been established in accordance with the FRAND determination rules set out in this Regulation.

Amendment  24

 

Proposal for a regulation

Recital 20

 

Text proposed by the Commission

Amendment

(20) SEP holders may register after the indicated time limit. However, in that case, SEP holders should not be able to collect royalties and claim damages for the period of delay.

(20) In case of failure by SEP holders to register within the indicated time limit, the competence centre should notify the SEP holder that, in case of further delays in registering its patents, following a grace period of 1 month, the SEP holder should not be able to bring a claim in relation to its patent until the registration is completed.

Amendment  25

 

Proposal for a regulation

Recital 22

 

Text proposed by the Commission

Amendment

(22) SEP holders should ensure that their SEP registration(s) are updated. Updates should be registered within 6 months for relevant status changes, including ownership, invalidation findings or other applicable changes resulting from contractual commitments or public authorities’ decisions. Failure to update the registration may lead to the suspension of the registration of the SEP from the register.

(22) SEP holders should ensure that their SEP registration(s) are updated. Updates should be registered within 6 months for relevant status changes, including ownership, invalidation findings or other applicable changes resulting from contractual commitments or public authorities’ decisions. In case of failure to update the registration, the competence centre should notify the SEP holder that in case of further delays in updating its registration, following a grace period of 1 month, its SEP may be suspended.

Amendment  26

 

Proposal for a regulation

Recital 23

 

Text proposed by the Commission

Amendment

(23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non-essential under this Regulation.

(23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non-essential under this Regulation. To ensure transparency, a record of any modifications to the SEP registration should be made publicly available.

Amendment  27

 

Proposal for a regulation

Recital 23 a (new)

 

Text proposed by the Commission

Amendment

 

(23a) It is necessary to ensure that the registration and the obligations provided for in this Regulation are not circumvented by removing a SEP from the register. When an evaluator finds a claimed SEP non-essential, only the SEP holder can request its removal from the register and only after the annual sampling process has been completed and the proportion of true SEPs from the sample has been established and published.

Amendment  28

 

Proposal for a regulation

Recital 24

 

Text proposed by the Commission

Amendment

(24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality.

(24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent and impartial evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality.

Amendment  29

 

Proposal for a regulation

Recital 26

 

Text proposed by the Commission

Amendment

(26) SEP holders or implementers may also designate annually up to 100 registered SEPs for essentiality checks. If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family.

(26) SEP holders may voluntarily submit their SEPs for essentiality checks to the competence centre prior to registering their patents. After the registration, SEP holders or implementers may also designate annually up to 100 registered SEPs for essentiality checks. If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family.

Amendment  30

 

Proposal for a regulation

Recital 27

 

Text proposed by the Commission

Amendment

(27) Any assessment of essentiality of SEPs conducted by an independent entity prior to the entry into force of the Regulation, for example through patent pools, as well as essentiality determinations by judicial authorities should be indicated in the register. Those SEPs should not be re-checked for essentiality after the relevant evidence supporting the information in the register is provided to the competence centre.

(27) Assessments of essentiality of SEPs conducted by an independent entity prior to the entry into force of the Regulation, for example through patent pools, as well as essentiality determinations by judicial authorities should be indicated in the register. Those SEPs should not be re-checked for essentiality after the relevant evidence supporting the information in the register is provided to the competence centre unless the evaluator has objective reasons to believe, based on sufficient evidence, that the  prior essentiality check was inaccurate. SEP holders or patent pools should also be able to conduct the assessment of essentiality of SEPs after the entry into force of this Regulation.

Amendment  31

 

Proposal for a regulation

Recital 29

 

Text proposed by the Commission

Amendment

(29) The competence centre would publish the results of the essentiality checks, whether positive or negative, in the register and the database. The results of the essentiality checks would not be legally binding. Thus, any subsequent disputes with regard to essentiality would have to be addressed in the relevant court. The results from the essentiality checks, whether requested by a SEP holder or based on a sample, may, however, be used for the purpose of demonstrating essentiality of those SEPs in negotiations, in patent pools and in court.

(29) The competence centre would publish the results of the essentiality checks, whether positive or negative, in the register and the database. The results of the essentiality checks would not be legally binding. Thus, it should be possible to address any subsequent disputes with regard to essentiality to the competent court. The results from the essentiality checks, whether requested by a SEP holder or based on a sample, may, however, be used for the purpose of demonstrating essentiality of those SEPs or other relevant criteria in negotiations, in patent pools and in court.

Amendment  32

 

Proposal for a regulation

Recital 30

 

Text proposed by the Commission

Amendment

(30) It is necessary to ensure that the registration and ensuing obligations provided for in this Regulation are not circumvented by removing a SEP from the register. When an evaluator finds a claimed SEP non-essential, only the SEP holder can request its removal from the register and only after the annual sampling process has been completed and the proportion of true SEPs from the sample has been established and published.

deleted

Amendment  33

 

Proposal for a regulation

Recital 31

 

Text proposed by the Commission

Amendment

(31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair and reasonable terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith.

(31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair, reasonable and non-discriminatory terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith.

Amendment  34

 

Proposal for a regulation

Recital 32

 

Text proposed by the Commission

Amendment

(32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and reduce costs. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non-confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions.

(32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and conditions and reduce transaction costs for all stakeholders. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non-confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral and impartial persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions. There should be rules and procedures defining conflicts of interests and mechanisms for addressing any such conflicts that might arise.

Amendment  35

 

Proposal for a regulation

Recital 33

 

Text proposed by the Commission

Amendment

(33) The FRAND determination would be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those use cases of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms.

(33) In case one or more parties initiate a FRAND determination, it should be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those implementations of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms.

Amendment  36

 

Proposal for a regulation

Recital 34

 

Text proposed by the Commission

Amendment

(34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion.

(34) Where a party does not reply to the FRAND determination request, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to meet on neutral ground, such as before a panel of conciliators and reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that duly engage in the procedure should be able to benefit from its completion.

Amendment  37

 

Proposal for a regulation

Recital 35

 

Text proposed by the Commission

Amendment

(35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunctionof a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties.

(35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. The parties should be able to request a provisional injunction of a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties.

Amendment  38

 

Proposal for a regulation

Recital 36

 

Text proposed by the Commission

Amendment

(36) When the parties enter into the FRAND determination, they should select a conciliator for the FRAND determination from the roster. In case of disagreement, the competence centre would select the conciliator. The FRAND determination should be concluded within 9 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination.

(36) When the parties enter into the FRAND determination, they should select a panel of conciliators for the FRAND determination from the roster. In case of disagreement, the competence centre would select the members of the panel of conciliators. The FRAND determination should be concluded within 9 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination.

Amendment  39

 

Proposal for a regulation

Recital 37

 

Text proposed by the Commission

Amendment

(37) Upon appointment, the conciliation centre should refer the FRAND determination to the conciliator, who should examine whether the request contains the necessary information, and communicate the schedule of procedure to the parties or the party requesting the continuations of the FRAND determination.

(37) Upon appointment, the conciliation centre should refer the FRAND determination to the panel of conciliators, who should examine whether the request contains the necessary information, and communicate the schedule of procedure to the parties or the party requesting the continuations of the FRAND determination.

Amendment  40

 

Proposal for a regulation

Recital 38

 

Text proposed by the Commission

Amendment

(38) The conciliator should examine the parties’ submissions and suggestions for the determination of FRAND terms and conditions, and consider the relevant negotiation steps, among other relevant circumstances. The conciliator, upon its own initiative or the request of a party, should be able to require the parties to submit evidence it deems necessary for the fulfilment of its task. It should also be able to examine publicly available information and the competence centre’s register and reports of other FRAND determinations, as well as non-confidential documents and information produced by or submitted to the competence centre.

(38) The panel of conciliators should examine the parties’ submissions and suggestions for the determination of FRAND terms and conditions, and consider the relevant negotiation steps, among other relevant circumstances. The panel of conciliators, upon its own initiative or the request of a party, should be able to require the parties to submit evidence it deems necessary for the fulfilment of its task. It should also be able to examine publicly available information and the competence centre’s register and reports of other FRAND determinations, as well as non-confidential documents and information produced by or submitted to the competence centre.

Amendment  41

 

Proposal for a regulation

Recital 39

 

Text proposed by the Commission

Amendment

(39) If a party fails to engage in the FRAND determination after the conciliator has been appointed, the other party may request the termination or may request that the conciliator issues a recommendation for a FRAND determination on the basis of the information it was able to assess.

(39) If a party fails to engage in the FRAND determination after the panel of conciliators has been appointed, the other party may request the termination or may request that the conciliator issues a recommendation for a FRAND determination on the basis of the information it was able to assess.

Amendment  42

 

Proposal for a regulation

Recital 40

 

Text proposed by the Commission

Amendment

(40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the conciliator, or where he/she has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party.

(40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the panel of conciliators, or where it has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party.

Amendment  43

 

Proposal for a regulation

Recital 41

 

Text proposed by the Commission

Amendment

(41) At the conclusion of the procedure, the conciliator should make a proposal recommending FRAND terms and conditions. Either party should have the option to accept or reject the proposal. If the parties do not settle and/or do not accept its proposal, the conciliator should draft a report of the FRAND determination. The report would have a confidential and a non-confidential version. The non-confidential version of the report should contain the proposal for FRAND terms and conditions and the methodology used and should be provided to the competence centre for publication in order to inform any subsequent FRAND determination between the parties and other stakeholders involved in similar negotiations. The report would thus have a dual purpose to encourage the parties to settle and to provide transparency as to the process and the recommended FRAND terms in cases of disagreement.

(41) At the conclusion of the procedure, the panel of conciliators should make a proposal recommending FRAND terms and conditions. Either party should have the option to accept or reject the proposal. If the parties do not settle and/or do not accept its proposal, the panel of conciliators should draft a report of the FRAND determination. The report would have a confidential and a non-confidential version. The non-confidential version of the report should contain the proposal for FRAND terms and conditions and the methodology used and should be provided to the competence centre for publication in order to inform any subsequent FRAND determination between the parties and other stakeholders involved in similar negotiations. The report would thus have a dual purpose to encourage the parties to settle and to provide transparency as to the process and the recommended FRAND terms in cases of disagreement.

Amendment  44

 

Proposal for a regulation

Recital 42

 

Text proposed by the Commission

Amendment

(42) The Regulation respects the intellectual property rights of patent owners (Article 17(2) of EU Charter of Fundamental Rights), although it includes a restriction on the ability to enforce a SEP that has not been registered within a certain time-limit and introduces a requirement to conduct a FRAND determination before enforcing individual SEPs. The limitation on the exercise of intellectual property rights is allowed under the EU Charter, provided that the proportionality principle is respected. According to settled case-law, fundamental rights can be restricted provided that those restrictions correspond to objectives of general interest pursued by the Union and do not constitute, with regard to the aim pursued, a disproportionate and intolerable interference which infringes the very essence of the rights guaranteed39 . In that respect, this Regulation is in the public interest in that it provides a uniform, open and predictable information and outcome on SEPs for the benefit of SEP holder, implementers and end users, at Union level. It aims at dissemination of technology for the mutual advantage of the SEP holders and implementers. Furthermore, the rules concerning the FRAND determination are temporary thus limited and aimed at improving and streamlining the process but are not ultimately binding.40

(42) The Regulation respects the intellectual property rights of patent owners, in line with Article 17(2) of EU Charter of Fundamental Rights, although it includes a restriction on the ability to enforce a SEP that has not been registered within a certain time-limit and introduces a requirement to conduct a FRAND determination before enforcing individual SEPs. The limitation on the exercise of intellectual property rights is allowed under the EU Charter, provided that the proportionality principle is respected. According to settled case-law, fundamental rights can be restricted provided that those restrictions correspond to objectives of general interest pursued by the Union and do not constitute, with regard to the aim pursued, a disproportionate and intolerable interference which infringes the very essence of the rights guaranteed39 . In that respect, this Regulation is in the public interest in that it provides a uniform, open and predictable information and outcome on SEPs for the benefit of SEP holder, implementers and end users, at Union level. It aims at dissemination of technology for the mutual advantage of the SEP holders and implementers. Furthermore, the rules concerning the FRAND determination are temporary thus limited and aimed at improving and streamlining the process but are not ultimately binding.40

__________________

__________________

39 Judgment of the Court of Justice of 13 December 1979, Hauer v. Land Rheinland-Pfalz, C-44/79, EU:C:1979:290, para. 32; judgment of the Court of Justice of 11 July 1989, Hermann Schräder HS Kraftfutter GmbH & Co. KG v. Hauptzollamt Gronau, C-256/87, EU:C:1999:332, para. 15, and judgment of the Court of Justice of 13 July 1989, Hubert Wachauf v. Bundesamt für Ernährung und Forstwirtschaft, C-5/88, EU:C:1989:321, paras. 17 and 18.

39 Judgment of the Court of Justice of 13 December 1979, Hauer v. Land Rheinland-Pfalz, C-44/79, EU:C:1979:290, para. 32; judgment of the Court of Justice of 11 July 1989, Hermann Schräder HS Kraftfutter GmbH & Co. KG v. Hauptzollamt Gronau, C-256/87, EU:C:1999:332, para. 15, and judgment of the Court of Justice of 13 July 1989, Hubert Wachauf v. Bundesamt für Ernährung und Forstwirtschaft, C-5/88, EU:C:1989:321, paras. 17 and 18.

40 The conciliation procedure follows the conditions for mandatory recourse to alternative dispute settlement procedures as a condition for the admissibility of an action before the courts, as outlined in the CJEU judgments; Joint Cases C-317/08 to C-320/08 Alassini and Others of 18 March 2010, and Case C-75/16 Menini and Rampanelli v. Banco Popolare Società Cooperativa of 14 June 2017, taking into account the specificities of SEP licensing.

40 The conciliation procedure follows the conditions for mandatory recourse to alternative dispute settlement procedures as a condition for the admissibility of an action before the courts, as outlined in the CJEU judgments; Joint Cases C-317/08 to C-320/08 Alassini and Others of 18 March 2010, and Case C-75/16 Menini and Rampanelli v. Banco Popolare Società Cooperativa of 14 June 2017, taking into account the specificities of SEP licensing.

Amendment  45

 

Proposal for a regulation

Recital 43

 

Text proposed by the Commission

Amendment

(43) The FRAND determination is also consistent with the right to an effective remedy and to access to justice as laid down in Article 47 of the Charter of Fundamental Rights of the European Union as the implementer and the SEP holder fully retain that right. In case of failure to register within the prescribed time limit, the exclusion of the right to effective enforcement is limited and necessary and meets objectives of general interest. As confirmed by the CJEU41 , the provision of a mandatory dispute resolution as a precondition to access to competent courts of Member States is deemed to be compatible with the principle of effective judicial protection. The FRAND determination follows the conditions for mandatory dispute resolution outlined in the CJEU judgments, taking into account the particular characteristics of SEP licensing.

(43) The FRAND determination is also consistent with the right to an effective remedy and to access to justice as laid down in Article 47 of the Charter of Fundamental Rights of the European Union as the implementer and the SEP holder fully retain that right. In case of failure to register within the prescribed time limit, the exclusion of the right to effective enforcement is limited and necessary and meets objectives of general interest. As confirmed by the CJEU41 , the provision of a mandatory dispute resolution as a precondition to access to competent courts of Member States is deemed to be compatible with the principle of effective judicial protection. The FRAND determination follows the conditions for mandatory dispute resolution outlined in the CJEU judgments, taking into account the particular characteristics of SEP licensing. The FRAND determination procedure also allows a deposit of a bond by the alleged infringer as a provisional injunction of a financial nature, which can be requested in order to avoid seriously restricting the alleged infringer’s activity and ensuring that the other party receives the corresponding sum in the event of a claim for damages. Moreover, the FRAND determination in no way impairs the SEP holder’s ability to receive compensation for an infringement that occurred during the FRAND determination in subsequent court proceedings.

__________________

__________________

41 Judgment of the Court of Justice of 18 March 2010, Rosalba Alassini v Telecom Italia SpA (C-317/08), Filomena Califano v Wind SpA (C-318/08), Lucia Anna Giorgia Iacono v Telecom Italia SpA (C-319/08) and Multiservice Srl v Telecom Italia SpA (C-320/08), Joined cases C-317/08, C-318/08, C-319/08 and C-320/08, EU:C:2010:146, and judgement of the Court of Justice of 14 June 2017,Livio Menini and Maria Antonia Rampanelli v Banco Popolare – Società Cooperativa, C-75/16, EU:C:2017:457

41 Judgment of the Court of Justice of 18 March 2010, Rosalba Alassini v Telecom Italia SpA (C-317/08), Filomena Califano v Wind SpA (C-318/08), Lucia Anna Giorgia Iacono v Telecom Italia SpA (C-319/08) and Multiservice Srl v Telecom Italia SpA (C-320/08), Joined cases C-317/08, C-318/08, C-319/08 and C-320/08, EU:C:2010:146, and judgement of the Court of Justice of 14 June 2017,Livio Menini and Maria Antonia Rampanelli v Banco Popolare – Società Cooperativa, C-75/16, EU:C:2017:457

Amendment  46

 

Proposal for a regulation

Recital 44

 

Text proposed by the Commission

Amendment

(44) When determining the aggregate royalties and making FRAND determinations the conciliators should take into account in particular any Union acquis and judgments of the Court of Justice pertaining to SEPs as well as guidance issued under this Regulation, the Horizontal Guidelines42 and the Commission’s 2017 Communication ‘Setting out the EU approach to Standard Essential Patents’.43 Furthermore, the conciliators should consider any expert opinion on the aggregate royalty or in the absence thereof, should request information from the parties before it makes its final proposals well as guidance issued under this Regulation, as well as guidance issued under this Regulation.

(44) When determining the aggregate royalties and making FRAND determinations the conciliators should take into account in particular any Union acquis and judgments of the Court of Justice pertaining to SEPs as well as guidance issued under this Regulation, the Horizontal Guidelines42 and the Commission’s 2017 Communication ‘Setting out the EU approach to Standard Essential Patents’.43 Furthermore, the panel of conciliators should consider any expert opinion on the aggregate royalty or in the absence thereof, should request information from the parties before it makes its final proposals well as guidance issued under this Regulation, as well as guidance issued under this Regulation.

__________________

__________________

42 Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, OJ C 11, 14.01.2011, pp. 1 (currently under review)

42 Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, OJ C 11, 14.01.2011, pp. 1 (currently under review)

43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017.

43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017.

Amendment  47

 

Proposal for a regulation

Recital 45

 

Text proposed by the Commission

Amendment

(45) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. It is, therefore, important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence downstream and any potential impact of existing indemnification clauses within a value chain.

deleted

Amendment  48

 

Proposal for a regulation

Recital 45 a (new)

 

Text proposed by the Commission

Amendment

 

(45a) In order to avoid a possible negative impact on companies which are established in the Union as well as engage and compete successfully as regards the development of global technologies through standardisation, the Commission should evaluate the impact that the essentiality check system, the aggregate royalties determination system and the FRAND determination system have on the competitiveness of Union SEP holders on a global level. Based on the outcome of that evaluation, the Commission should, where necessary, present a legislative proposal in order to adapt the systems. The role of patent pools, including those created by SEP implementers, should be evaluated by the Commission in order to assess their impact once this Regulation has entered into force, notably in terms of their impact on the competitiveness on the market.

Amendment  49

 

Proposal for a regulation

Recital 46

 

Text proposed by the Commission

Amendment

(46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation are likely to facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings. The SEPs of micro and small enterprises should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties.

(46) SMEs may be involved in SEP licensing both as SEP holders and SEP implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation should also facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration burdens and administrative fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings, so that they are better placed to engage in SEP related matters and also standard development. The SEPs of micro and small enterprises and start-ups should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME and start-up implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. In this context, it is important to ensure that SMEs and start-ups benefit from a one-stop shop set up by the competence centre which identifies relevant licensees and licensors for the SMEs and advises them, free of charge, on SEPs. To that end, the competence centre should set up a SEP Licensing Assistance Hub for SMEs and start-ups which could also provide, under certain conditions, assistance with regard to judicial support, such as a pro bono legal representative during court proceedings.

Amendment  50

 

Proposal for a regulation

Recital 46 a (new)

 

Text proposed by the Commission

Amendment

 

(46a) While advantages should be granted to SMEs, they should not be susceptible to misuses. In this regard, patent assertion entities, which may be characterised by an “obtain and assert” business model and which have the purpose of generating revenues through licensing fees, royalties and damage compensation, should not benefit from exemptions and the help from the competence centre provided for in this Regulation.

Amendment  51

 

Proposal for a regulation

Recital 46 b (new)

 

Text proposed by the Commission

Amendment

 

(46b) The support mechanisms, such as IP vouchers for SMEs, have been effective in assisting SMEs to protect their IP rights. The period of application of those mechanisms should be prolonged beyond 2024.

Amendment  52

 

Proposal for a regulation

Recital 47

 

Text proposed by the Commission

Amendment

(47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify use cases of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44. In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts.

(47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify implementations of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44. In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts.

__________________

__________________

44 OJ L 123, 12.5.2016, p. 1.

44 OJ L 123, 12.5.2016, p. 1.

Amendment  53

 

Proposal for a regulation

Recital 48

 

Text proposed by the Commission

Amendment

(48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. The Commission should also determine the standards or parts thereof that have been published before the entry into force of this Regulation, for which SEPs can be registered. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45

(48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. Evaluators and conciliators should be of good repute and possess sufficient knowledge, skills and experience to perform their duties. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services of evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. The Commission should also determine the standards or parts thereof that have been published before the entry into force of this Regulation, for which SEPs can be registered. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45

__________________

__________________

45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.)

45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.)

Amendment  54

 

Proposal for a regulation

Article 1 – paragraph 2 – introductory part

 

Text proposed by the Commission

Amendment

2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy,

2. This Regulation shall apply to patents that are in force in one or more Member States and that a SEP holder claims to be essential to a standard that has been published by a standard development organisation, after entry into force of this Regulation regardless of whether the SEP holder has or has not made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions.

(a) after the entry into force of this Regulation, with the exceptions provided in paragraph 3;

 

(b) before the entry into force of this Regulation, in accordance with Article 66.

 

Amendment  55

 

Proposal for a regulation

Article 1 – paragraph 3

 

Text proposed by the Commission

Amendment

3. Articles 17 and 18 and Article 34(1) shall not apply to SEPs to the extent that they are implemented for use cases identified by the Commission in accordance with paragraph 4.

3. Articles 17 and 18 and Article 34(1) shall not apply where there is sufficient evidence that SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market as regards identified implementations of certain standards or parts thereof. Such implementations, standards and parts thereof shall be identified pursuant to the procedure set out in Article 65b.

Amendment  56

 

Proposal for a regulation

Article 1 – paragraph 4

 

Text proposed by the Commission

Amendment

4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3.

4. Without prejudice to paragraph 2, this Regulation shall also apply to patents in force in one or more Member States and that a SEP holder claims to be essential to a standard published by a standard development organisation before the entry into force of this Regulation, where the functioning of the internal market is severely distorted due to significant difficulties or inefficiencies in the licensing of SEPs for certain implementations, standards and parts thereof. Such implementations, standards and parts thereof shall be identified pursuant to the procedure set out in Article 65c.

Amendment  57

 

Proposal for a regulation

Article 1 – paragraph 5

 

Text proposed by the Commission

Amendment

5. This Regulation shall apply to holders of SEP in force in one or more Member States.

5. This Regulation shall not apply to SEPs that are subject to a royalty-free intellectual property policy, except when such SEPs are part of a portfolio of patents licensed for royalties.

Amendment  58

 

Proposal for a regulation

Article 2 – paragraph 1 – point 1

 

Text proposed by the Commission

Amendment

(1)  ‘standard essential patent’ or ‘SEP’ means any patent that is essential to a standard;

(1) ‘standard essential patent’ or ‘SEP’ means any patent that a SEP holder claims to be is essential to a standard;

Amendment  59

 

Proposal for a regulation

Article 2 – paragraph 1 – point 3

 

Text proposed by the Commission

Amendment

(3)  ‘standard’ means a technical specification, adopted by a standard development organisation, for repeated or continuous application, with which compliance is not compulsory;

(3) ‘standard’ means a technical specification, adopted by a standard development organisation, for repeated or continuous application;

Amendment  60

 

Proposal for a regulation

Article 2 – paragraph 1 – point 5 a (new)

 

Text proposed by the Commission

Amendment

 

(5a) ‘implementation’ means a specific scenario where a particular standardised technology or method is applied to fulfil a given purpose or function of a product, process, service or system, irrespective of the level in the value chain;

Amendment  61

 

Proposal for a regulation

Article 2 – paragraph 1 – point 6

 

Text proposed by the Commission

Amendment

(6) ‘SEP holder’ means an owner of a SEP or a person holding an exclusive licence for a SEP in one of more Member States;

(6) ‘SEP holder’ means an owner of a SEP or a person holding an exclusive licence for a SEP in one or more Member States;

Amendment  62

 

Proposal for a regulation

Article 2 – paragraph 1 – point 7

 

Text proposed by the Commission

Amendment

(7)  ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system;

(7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system on the Union market;

Amendment  63

 

Proposal for a regulation

Article 2 – paragraph 1 – point 10

 

Text proposed by the Commission

Amendment

(10) ‘aggregate royalty’ means the maximum amount of royalty for all patents essential to a standard;

(10) ‘aggregate royalty’ means the total amount of money paid or required to be paid to license all patents essential to a standard;

Amendment  64

 

Proposal for a regulation

Article 2 – paragraph 1 – point 10 a (new)

 

Text proposed by the Commission

Amendment

 

(10a) ‘royalty-free’ means available without payment of a royalty or without an agreement for any other consideration, whether monetary or non-monetary;

Amendment  65

 

Proposal for a regulation

Article 2 – paragraph 1 – point 11

 

Text proposed by the Commission

Amendment

(11) ‘patent pool’ means an entity created by an agreement between two or more SEP holders to license one or more of their patents to one another or to third parties;

(11) ‘patent pool’ means an entity, created by an agreement between two or more SEP holders or a consortium in which multiple SEP holders agree to license one or more of their SEPs to each other or to third parties;

Amendment  66

 

Proposal for a regulation

Article 2 – paragraph 1 – point 13

 

Text proposed by the Commission

Amendment

(13) ‘claim chart’ means a presentation of correspondence between the elements (features) of one patent claim and at least one requirement of a standard or recommendation of a standard;

(13) ‘claim chart’ means a document identifying correspondence between the elements (features) of one patent claim and at least one requirement of a standard or recommendation of a standard;

Amendment  67

 

Proposal for a regulation

Article 2 – paragraph 1 – point 16

 

Text proposed by the Commission

Amendment

(16) ‘patent family’ means a collection of patent documents that cover the same invention and whose members have the same priorities;

(16) ‘patent family’ means a collection of patent applications having at least one priority in common, including the priority documents themselves;

Amendment  68

 

Proposal for a regulation

Article 2 – paragraph 1 – point 17 a (new)

 

Text proposed by the Commission

Amendment

 

(17a) ‘conciliator’ means any person that has been appointed to mediate among parties in establishing an aggregate royalty in accordance with Article 17, to serve on a panel that provides an opinion on an aggregate royalty in accordance with Article 18 and to serve in the FRAND determination in accordance with Title VI, who is independent and impartial and does not have any direct or indirect conflict of interest;

Amendment  69

 

Proposal for a regulation

Article 2 – paragraph 1 – point 17 b (new)

 

Text proposed by the Commission

Amendment

 

(17b) ‘evaluator’ means any person that has been appointed to conduct essentiality checks in accordance with Title V, who is independent and impartial, and does not have any direct or indirect conflict of interest;

Amendment  70

 

Proposal for a regulation

Article 2 – paragraph 1 – point 17 c (new)

 

Text proposed by the Commission

Amendment

 

(17c) ‘peer evaluator’ means any person that has been appointed to conduct a peer evaluation, who is independent and impartial, and does not have any direct or indirect conflict of interest;

Amendment  71

 

Proposal for a regulation

Article 2 – paragraph 1 – point 18 a (new)

 

Text proposed by the Commission

Amendment

 

(18a) ‘patent assertion entity’ means an entity that primarily derives its revenue from the enforcement or licensing of patents, including any damages or monetary awards from the assertion of such patents, and that does not engage in the production, manufacture, sale or distribution of products or services utilising the patented inventions or in the research and development of such inventions, that is not an educational or research institution or technology transfer organisation facilitating the commercialisation of technological innovations generated by them, and that is not an individual inventor asserting patents originally granted to that inventor or patents that cover technologies originally developed by that inventor.

Amendment  72

 

Proposal for a regulation

Article 3 – paragraph 2 – point a

 

Text proposed by the Commission

Amendment

(a) set up and maintain an electronic register and an electronic database for SEPs;

(a) set up and maintain an electronic register and an electronic database for SEPs in accordance with Articles 4 and 5;

Amendment  73

 

Proposal for a regulation

Article 3 – paragraph 2 – point b

 

Text proposed by the Commission

Amendment

(b) set up and manage rosters of evaluators and conciliators;

(b) set up and manage rosters of evaluators and conciliators in accordance with Article 27;

Amendment  74

 

Proposal for a regulation

Article 3 – paragraph 2 – point c

 

Text proposed by the Commission

Amendment

(c) set up and administer a system for assessment of the essentiality of SEPs;

(c) set up and administer a system for assessment of the essentiality of SEPs in accordance with Articles 28 to 33;

Amendment  75

 

Proposal for a regulation

Article 3 – paragraph 2 – point d

 

Text proposed by the Commission

Amendment

(d) set up and administer the process for the FRAND determination;

(d) set up and administer the process for the FRAND determination in accordance with Articles 34 to 58;

Amendment  76

 

Proposal for a regulation

Article 3 – paragraph 2 – point f

 

Text proposed by the Commission

Amendment

(f) administer a process for aggregate royalty determination;

(f) administer a process for facilitating agreements on and the determination of an aggregate royalty in accordance with Articles 17 and 18;

Amendment  77

 

Proposal for a regulation

Article 3 – paragraph 2 – point g – point i

 

Text proposed by the Commission

Amendment

(i) publishing the results and reasoned opinions of the essentiality checks and non-confidential reports of the FRAND determinations;

(i) publishing the results and reasoned opinions of the essentiality checks and non-confidential opinions of the FRAND determinations in accordance with Article 33(1) and Article 57(3);

Amendment  78

 

Proposal for a regulation

Article 3 – paragraph 2 – point g – point ii

 

Text proposed by the Commission

Amendment

(ii) enabling access to case-law (including alternative dispute resolution) on SEPs, including from third country jurisdictions;

(ii) enabling access to case-law (including alternative dispute resolution) on SEPs, including from third country jurisdictions in accordance with Article 13(3);

Amendment  79

 

Proposal for a regulation

Article 3 – paragraph 2 – point g – point iii

 

Text proposed by the Commission

Amendment

(iii) compiling non-confidential information on FRAND determination methodologies and FRAND royalties;

(iii) compiling non-confidential information on FRAND determination methodologies and FRAND royalties in accordance with Article 13(4) and (5);

Amendment  80

 

Proposal for a regulation

Article 3 – paragraph 2 – point g – point iv

 

Text proposed by the Commission

Amendment

(iv) enabling access to SEP-related rules of third countries;

(iv) enabling access to SEP-related rules of third countries in accordance with Article 12;

Amendment  81

 

Proposal for a regulation

Article 3 – paragraph 2 – point h

 

Text proposed by the Commission

Amendment

(h) provide training, support and general advice on SEPs to SMEs;

(h) set up and maintain a SEP Licensing Assistance Hub for SMEs and start-ups and provide training, support and general advice on SEPs to SMEs and start-ups in accordance with Article 61;

Amendment  82

 

Proposal for a regulation

Article 3 – paragraph 2 – point j

 

Text proposed by the Commission

Amendment

(j) raise awareness about SEP licensing, including SEP licensing in the value chain.

(j) establish a dedicated working group on conditions for licensing SEPs in the value chain and raise awareness about SEP licensing.

Amendment  83

 

Proposal for a regulation

Article 4 – paragraph 1

 

Text proposed by the Commission

Amendment

1. A Union register for SEPs ('the register') is established.

1. A Union register for SEPs ('the register') shall be set up and maintained in an electronic format by the competence centre.

Amendment  84

 

Proposal for a regulation

Article 4 – paragraph 2

 

Text proposed by the Commission

Amendment

2. The register shall be maintained in electronic format by the competence centre.

deleted

Amendment  85

 

Proposal for a regulation

Article 4 – paragraph 3 – point b

 

Text proposed by the Commission

Amendment

(b) registered SEPs identification, including the country of registration and patent number;

(b) identification of registered SEPs, including the country of registration and patent number;

Amendment  86

 

Proposal for a regulation

Article 4 – paragraph 3 – point c

 

Text proposed by the Commission

Amendment

(c) the standard version, the technical specification and the specific sections of the technical specification for which the patent is considered essential;

(c) the standard version, the technical specification and the sections of the technical specification for which the patent is considered essential;

Amendment  87

 

Proposal for a regulation

Article 4 – paragraph 3 – point f

 

Text proposed by the Commission

Amendment

(f) if the SEP holder is part of a group of companies, the name, address and contact details of the parent company;

(f) if the SEP holder is an affiliate, subsidiary or part of one or more companies, the name, address and contact details of the parent company;

Amendment  88

 

Proposal for a regulation

Article 4 – paragraph 3 – point h

 

Text proposed by the Commission

Amendment

(h) the existence of any public standard terms and conditions, including SEP holder’s royalty and discount policies;

(h) the existence of any publicly available standard terms and conditions, including SEP holder’s royalty, royalty-free and discount policies;

Amendment  89

 

Proposal for a regulation

Article 4 – paragraph 3 – point i

 

Text proposed by the Commission

Amendment

(i) the existence of any public standard terms and conditions for SEP licensing to SMEs;

(i) the existence of any publicly available standard terms and conditions for SEP licensing to SMEs and start-ups;

Amendment  90

 

Proposal for a regulation

Article 4 – paragraph 3 – point j

 

Text proposed by the Commission

Amendment

(j) availability for licensing through patent pools, where applicable;

(j) availability for licensing through patent pools and the name of the respective patent pool, where applicable;

Amendment  91

 

Proposal for a regulation

Article 4 – paragraph 4 – point c

 

Text proposed by the Commission

Amendment

(c) information on whether an essentiality check or peer evaluation have been performed and reference to the result;

(c) any information on whether an essentiality check or peer evaluation have been performed and, unless not possible due to contractual limits agreed upon by the parties, also a reference to the outcome of the essentiality check;

Amendment  92

 

Proposal for a regulation

Article 4 – paragraph 4 – point d

 

Text proposed by the Commission

Amendment

(d) information on whether the SEP is expired or invalidated by a final judgment of a competent court of a Member State;

(d) information on whether the SEP is expired, invalidated or deemed unenforceable by a final judgment of a competent court of a Member State;

Amendment  93

 

Proposal for a regulation

Article 4 – paragraph 4 – point f

 

Text proposed by the Commission

Amendment

(f) date of publication of information pursuant to Article 19(1) in conjunction with Article 14(7), Article 15(4) and Article 18(11);

(f) date of publication of information pursuant to Article 19(1);

Amendment  94

 

Proposal for a regulation

Article 4 – paragraph 4 a (new)

 

Text proposed by the Commission

Amendment

 

4a. Prior to registering their patents, SEP holders may voluntarily submit their SEPs for essentiality checks to the competence centre.

Amendment  95

 

Proposal for a regulation

Article 5 – paragraph 1

 

Text proposed by the Commission

Amendment

1. The competence centre shall establish and maintain an electronic database for SEPs.

1. The competence centre shall set up and maintain an electronic database for SEPs.

Amendment  96

 

Proposal for a regulation

Article 5 – paragraph 2 – point b

 

Text proposed by the Commission

Amendment

(b) public standard terms and conditions, including SEP holder’s royalty and discount policies pursuant to Article 7, first paragraph, point (b), if available;

(b) publicly available standard terms and conditions, including SEP holder’s royalty, royalty-free and discount policies pursuant to Article 7, first paragraph, point (b), if available;

Amendment  97

 

Proposal for a regulation

Article 5 – paragraph 2 – point c

 

Text proposed by the Commission

Amendment

(c) public standard terms and conditions for SEP licensing to SMEs pursuant to Article 62(1), if available;

(c) publicly available standard terms and conditions for SEP licensing to SMEs, and start-ups pursuant to Article 62(1), including royalty-free access, if available;

Amendment  98

 

Proposal for a regulation

Article 5 – paragraph 2 – point d

 

Text proposed by the Commission

Amendment

(d) information regarding known products, processes, services or systems and implementations pursuant to Article 7, first paragraph, point (b);

(d) information regarding known products, processes, services or systems and implementations and, where available, any known market data pursuant to Article 7, first paragraph, point (a);

Amendment  99

 

Proposal for a regulation

Article 5 – paragraph 3

 

Text proposed by the Commission

Amendment

3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) may be subject to the payment of a fee.

3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) shall be available to any third party subject to registration with the competence centre and may be subject to the payment of a reasonable fee, as set out in Article 63.

Amendment  100

 

Proposal for a regulation

Article 5 – paragraph 4

 

Text proposed by the Commission

Amendment

4. However, public authorities, including courts, shall have full access to the information in the database referred to in paragraph (2) free of charge subject to registration with the competence centre.

4. However, public authorities, including courts, shall have full access to the information in the database referred to in paragraph (2) free of charge subject to registration with the competence centre. Academic institutions may also request access to the information free of charge solely for the purpose of conducting academic tasks.

Amendment  101

 

Proposal for a regulation

Article 6 – paragraph 1

 

Text proposed by the Commission

Amendment

1. When a party requests that data and documents of the database be kept confidential, that party shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version.

1. When a party requests that data and documents of the database be kept confidential, that party shall provide a reasoned statement justifying this confidentiality and, where reasonably possible, a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version.

Amendment  102

 

Proposal for a regulation

Article 6 – paragraph 5

 

Text proposed by the Commission

Amendment

5. Upon request, the competence centre shall issue registration certificates or certified copies of the data and documents in the register or the database. The registration certificates and certified copies may be subject to the payment of a fee.

5. Upon request, the competence centre shall issue registration certificates or certified copies of the data and documents in the register or the database. The registration certificates and certified copies may be subject to the payment of a reasonable fee.

Amendment  103

 

Proposal for a regulation

Article 7 – paragraph 1 – point a

 

Text proposed by the Commission

Amendment

(a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard, to the extent such information is known to the SEP holder.

(a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard and, where available, any market data, to the extent such information is known to the SEP holder.

Amendment  104

 

Proposal for a regulation

Article 7 – paragraph 1 – point b

 

Text proposed by the Commission

Amendment

(b) where available, its standard terms and conditions for SEP licensing, including its royalty and discount policies, within 7 months from the opening of the registration for the relevant standard and implementation by the competence centre.

(b) where available, its standard terms and conditions for SEP licensing, including its royalty, royalty-free and discount policies, within 7 months from the opening of the registration for the relevant standard and implementation by the competence centre.

Amendment  105

 

Proposal for a regulation

Article 8 – title

 

Text proposed by the Commission

Amendment

Information pertaining to essentiality

Information on essentiality

Amendment  106

 

Proposal for a regulation

Article 8 – paragraph 1 – point a

 

Text proposed by the Commission

Amendment

(a) a final decision on essentiality for a registered SEP made by a competent court of a Member State within 6 months from the publication of such decision.

(a) a final decision on essentiality for a registered SEP made by a competent court of a Member State within 2 months after the decision has become final;

Amendment  107

 

Proposal for a regulation

Article 8 – paragraph 1 – point b

 

Text proposed by the Commission

Amendment

(b) any essentiality check prior to [OJ: please insert the date = 24 months from entry into force of this regulation] by an independent evaluator in the context of a pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator.

(b) any other essentiality check by an independent evaluator in the context of, for example, a patent pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator.

Amendment  108

 

Proposal for a regulation

Article 9 – paragraph 1 – introductory part

 

Text proposed by the Commission

Amendment

1. Patent pools shall publish on their websites at least the following information and inform the competence centre thereof:

1. Patent pools shall publish on their websites at least the following accurate and updated information and inform the competence centre thereof:

Amendment  109

 

Proposal for a regulation

Article 9 – paragraph 1 – point g

 

Text proposed by the Commission

Amendment

(g) list of products, services and processes that may be licensed through the patent pool or the entity;

(g) list of products, services and processes that may be licensed through the patent pool;

Amendment  110

 

Proposal for a regulation

Article 9 – paragraph 1 – point h

 

Text proposed by the Commission

Amendment

(h) royalties and discount policy per product category;

(h) royalties, royalty-free and discount policies per implementation including information on royalty calculation per SEP owner in the pool and aggregate royalty rate, if applicable;

Amendment  111

 

Proposal for a regulation

Article 9 – paragraph 1 – point i

 

Text proposed by the Commission

Amendment

(i) standard licence agreement per product category;

(i) standard licence agreement per implementation;

Amendment  112

 

Proposal for a regulation

Article 9 – paragraph 1 – point j

 

Text proposed by the Commission

Amendment

(j) list of licensors in each product category;

(j) list of licensors in each implementation;

Amendment  113

 

Proposal for a regulation

Article 9 – paragraph 1 – point k

 

Text proposed by the Commission

Amendment

(k) list of licensees for each product category.

(k) list of licensees for each implementation.

Amendment  114

 

Proposal for a regulation

Article 9 – paragraph 1 a (new)

 

Text proposed by the Commission

Amendment

 

1a.  The competence centre shall verify the information submitted by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a methodology it develops for this purpose, ensuring that the verification process is thorough, transparent and consistent. That methodology shall be made available to patent pools and to other stakeholders for the sake of transparency.

Amendment  115

 

Proposal for a regulation

Article 9 – paragraph 1 b (new)

 

Text proposed by the Commission

Amendment

 

1b.  The competence centre shall prepare a report detailing the outcomes of its verification, including with regard to patent pools’ compliance with paragraph 1, any discrepancies or missing information identified, and the corrective actions taken or recommended. That report shall be submitted to the Commission within one month following the completion of each verification cycle.

Amendment  116

 

Proposal for a regulation

Article 10 – paragraph 1 – introductory part

 

Text proposed by the Commission

Amendment

1. Competent courts of Member States shall notify the competence centre within 6 months from the adoption of a judgment concerning SEPs on:

1. Competent courts of Member States shall notify the competence centre within 2 months after the decision concerning SEPs has become final on:

Amendment  117

 

Proposal for a regulation

Article 10 – paragraph 1 – point b

 

Text proposed by the Commission

Amendment

(b) infringement proceedings;

(b) infringements;

Amendment  118

 

Proposal for a regulation

Article 11 – paragraph 1

 

Text proposed by the Commission

Amendment

1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 6 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined.

1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 4 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined.

Amendment  119

 

Proposal for a regulation

Article 12 – paragraph 1

 

Text proposed by the Commission

Amendment

1. The competence centre shall collect and publish in the database information on any SEP related rules in any third country.

1. The competence centre shall collect, duly verify and promptly publish information on any SEP related rules in any third country in the database. The competence centre may also collect information on compliance with this Regulation in third countries as well as monitor its impact on implementers.

Amendment  120

 

Proposal for a regulation

Article 12 – paragraph 2

 

Text proposed by the Commission

Amendment

2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall publish that information in the database.

2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall publish that information in the database after verifying its accuracy.

Amendment  121

 

Proposal for a regulation

Article 12 – paragraph 2 a (new)

 

Text proposed by the Commission

Amendment

 

2a. In order to facilitate effective implementation of this Regulation, the competence centre may cooperate, engage and exchange information with, amongst others, authorities of third countries and international organisations dealing with SEPs, in particular as regards the information on SEP related rules in third countries or the prevention of parallel proceedings.

Amendment  122

 

Proposal for a regulation

Article 13 – paragraph 1

 

Text proposed by the Commission

Amendment

1. The competence centre shall store in the database all the data provided by stakeholders, as well as opinions and reports of evaluators and conciliators.

1. The competence centre shall store in the database all the data provided by stakeholders, as well as reasoned opinions and reports of evaluators and conciliators.

Amendment  123

 

Proposal for a regulation

Article 13 – paragraph 2 – point c a (new)

 

Text proposed by the Commission

Amendment

 

(ca) making available to interested persons SEPs, standards and implementations, with the use of easily accessible research tools and reasonably understandable search results;

Amendment  124

 

Proposal for a regulation

Article 13 – paragraph 2 – point d a (new)

 

Text proposed by the Commission

Amendment

 

(da) facilitating assessments of SEP licensing practices and their impact on the internal market, innovation and access to standardised technology.

Amendment  125

 

Proposal for a regulation

Article 14 – paragraph 1 – introductory part

 

Text proposed by the Commission

Amendment

1. Holders of a patent in force in one or more Member States which is essential to a standard for which FRAND commitments have been made shall notify to the competence centre, where possible through the standard development organisation or through a joint notification, the following information:

1. Holders of patents in force in one or more Member States which are claimed to be essential to a standard for which FRAND commitments have or have not been made shall notify to the competence centre, where possible through the standard development organisation or through a joint notification, the following information:

Amendment  126

 

Proposal for a regulation

Article 14 – paragraph 3

 

Text proposed by the Commission

Amendment

3. In the absence of the notification under paragraph (1), any holder of a SEP in force in one or more Member State shall notify individually, no later than 90 days from the publication of the latest technical specification, to the competence centre the information referred to in paragraph (1).

3. In the absence of the notification under paragraph (1), any holder of a SEP in force in one or more Member States shall notify individually, no later than 90 days from the publication of the latest technical specification, to the competence centre the information referred to in paragraph (1).

Amendment  127

 

Proposal for a regulation

Article 14 – paragraph 5

 

Text proposed by the Commission

Amendment

5. The competence centre shall also notify the relevant standard development organisation of the publication. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually or request confirmation from the standard development organisation that it has duly notified the SEP holders.

5. The competence centre shall also notify the relevant standard development organisation of the notification. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually or request confirmation from the standard development organisation that it has duly notified the SEP holders.

Amendment  128

 

Proposal for a regulation

Article 14 – paragraph 6

 

Text proposed by the Commission

Amendment

6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3) and (4) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list.

6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3), (4) and (4a) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list.

Amendment  129

 

Proposal for a regulation

Article 15 – paragraph 1

 

Text proposed by the Commission

Amendment

1. Holders of SEPs in force in one or more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard.

1. Holders of SEPs in force in one or more Member States for which FRAND commitments have or have not been made may jointly notify the competence centre the aggregate royalty for all SEPs covering a standard.

Amendment  130

 

Proposal for a regulation

Article 17 – title

 

Text proposed by the Commission

Amendment

Process for facilitating agreements on aggregate royalty determinations

Process for facilitating agreements between SEP holders on aggregate royalty

Amendment  131

 

Proposal for a regulation

Article 17 – paragraph 3 – point e

 

Text proposed by the Commission

Amendment

(e) the estimated percentage of SEPs they own individually and collectively from all potential SEPs claimed for the standard.

(e) the estimated percentage of SEPs they own individually and collectively from all SEPs claimed for the standard.

Amendment  132

 

Proposal for a regulation

Article 17 – paragraph 4

 

Text proposed by the Commission

Amendment

4. The competence centre shall notify the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard.

4. The competence centre shall publish the request and invite other SEP holders to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard.

Amendment  133

 

Proposal for a regulation

Article 17 – paragraph 7

 

Text proposed by the Commission

Amendment

7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process.

7. Where the SEP holders fail to make an agreement regarding the joint notification submission of an aggregate royalty within 6 months from the appointment of the conciliator, the conciliator shall terminate the process.

Amendment  134

 

Proposal for a regulation

Article 17 – paragraph 8

 

Text proposed by the Commission

Amendment

8. If the contributors agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply.

8. If the SEP holders agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply.

Amendment  135

 

Proposal for a regulation

Article 18 – paragraph 1

 

Text proposed by the Commission

Amendment

1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on a global aggregate royalty.

1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on an aggregate royalty. An implementer may make this request, even if an agreement amongst SEP holders has already been reached, including through the procedure laid down in Articles 15 to 17.

Amendment  136

 

Proposal for a regulation

Article 18 – paragraph 4

 

Text proposed by the Commission

Amendment

4. The competence centre shall notify the relevant standard development organisation and all known stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published.

4. The competence centre shall notify the relevant standard development organisation and all relevant stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published.

Amendment  137

 

Proposal for a regulation

Article 18 – paragraph 5

 

Text proposed by the Commission

Amendment

5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers shall provide information on any relevant implementations of the standard, including any relevant market share in the Union.

5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers and other stakeholders shall provide information on any relevant existing or potential implementations of the standard, including any relevant market share in the Union.

Amendment  138

 

Proposal for a regulation

Article 18 – paragraph 6

 

Text proposed by the Commission

Amendment

6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, and implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology.

6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, or implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs or start-ups, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators having the appropriate experience in the relevant field of technology.

Amendment  139

 

Proposal for a regulation

Article 18 – paragraph 8 – introductory part

 

Text proposed by the Commission

Amendment

8. Following the appointment, the panel shall request the participating SEP holders to, within one month:

8. Within one month following the appointment, the panel shall request the participating SEP holders to:

Amendment  140

 

Proposal for a regulation

Article 18 – paragraph 8 – point b

 

Text proposed by the Commission

Amendment

(b) submit justification on the impossibility to propose an aggregate royalty due to technological, economic, or other considerations.

(b) submit justification on the impossibility to propose an aggregate royalty due to technological, economic, or other considerations and

Amendment  141

 

Proposal for a regulation

Article 18 – paragraph 8 – point b a (new)

 

Text proposed by the Commission

Amendment

 

(ba) provide evidence or observations to assist the panel in deciding on aggregate royalty.

Amendment  142

 

Proposal for a regulation

Article 18 – paragraph 8 a (new)

 

Text proposed by the Commission

Amendment

 

8a. The panel shall permit participants to submit responses to the submissions provided for in paragraph 8 and reactions to those responses.

Amendment  143

 

Proposal for a regulation

Article 18 – paragraph 9 – introductory part

 

Text proposed by the Commission

Amendment

9. The panel shall duly consider the submissions provided for in paragraph 8 and decide:

9. The panel shall duly consider the submissions and responses provided for in paragraphs 8 and 8a and decide:

Amendment  144

 

Proposal for a regulation

Article 18 – paragraph 9 – point a

 

Text proposed by the Commission

Amendment

to suspend the procedure for the expert opinion on aggregate royalty for an initial period of no longer than 6 months, which can be further extended on the basis of a duly justified request by one of the participating SEP holders, or

(a) to grant a suspension of the procedure for an initial period of no longer than 6 months, which can be further extended for another period of 3 months on the basis of a duly justified request by one of the participating SEP holders, or

Amendment  145

 

Proposal for a regulation

Article 18 – paragraph 10

 

Text proposed by the Commission

Amendment

10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 8(a) or of the decision referred to in paragraph 8(b). The opinion shall be supported by at least two of the three conciliators.

10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 9(a) or of the decision referred to in paragraph 9(b). The opinion shall be supported by at least two of the three conciliators.

Amendment  146

 

Proposal for a regulation

Article 18 – paragraph 11

 

Text proposed by the Commission

Amendment

11. The expert opinion shall include a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion.

11. The expert opinion shall include a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the recommended aggregate royalty rate, the reasons for the opinion on the aggregate royalty and the underlying methodology. Any divergent views and the reasons underlying them shall be specified in an annex to the expert opinion.

Amendment  147

 

Proposal for a regulation

Article 19 – paragraph 1 – introductory part

 

Text proposed by the Commission

Amendment

1. The competence centre shall create an entry in the register for a standard for which FRAND commitments have been made within 60 days from the earliest of the following events:

1. The competence centre shall create an entry in the register for a standard or part thereof for which FRAND commitments have been made within 60 days from the earliest of the following events:

Amendment  148

 

Proposal for a regulation

Article 20 – paragraph 5

 

Text proposed by the Commission

Amendment

5. A SEP holder shall update the information in the register and database to reflect relevant changes in relation to its registered SEP by notifying the competence centre within 6 months from the change occurring.

5. A SEP holder shall update the information in the register, except for the information provided in accordance with Article 4(3), point (c), and database to reflect relevant changes in relation to its registered SEP by notifying the competence centre within 6 months from the change occurring.

Amendment  149

 

Proposal for a regulation

Article 20 – paragraph 6

 

Text proposed by the Commission

Amendment

6. The request for registration will only be accepted following the payment of the registration fee by the SEP holder. The Commission shall determine the registration fee in the implementing act issued based on Art. 63(5). The registration fee shall include, in case of medium and large enterprises, the expected costs and fees of the essentiality check for SEPs selected pursuant to Article 29(1).

6. The request for registration will only be accepted following the payment of the registration fee by the SEP holder. The Commission shall determine the registration fee in the implementing act issued based on Art. 63(5). The registration fee shall include, in case of medium and large enterprises, the expected costs pursuant to Article 29(1).

Amendment  150

 

Proposal for a regulation

Article 22 – paragraph 1

 

Text proposed by the Commission

Amendment

1. A sample of SEP registrations shall be checked annually for completeness and correctness.

1. The EUIPO shall annually check a sample of SEP registrations in order to verify their completeness and correctness.

Amendment  151

 

Proposal for a regulation

Article 22 – paragraph 3

 

Text proposed by the Commission

Amendment

3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 2 months.

3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 3 months.

Amendment  152

 

Proposal for a regulation

Article 22 – paragraph 4

 

Text proposed by the Commission

Amendment

4. If the SEP holder fails to provide the correct and complete information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied.

4. If the SEP holder fails to provide the correct and complete information, the competence centre shall notify the SEP holder about its failure to provide the correct and complete information and that, following a grace period of 1 month during which the SEP holder could still provide the required information, its registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied.

Amendment  153

 

Proposal for a regulation

Article 23 – paragraph 3

 

Text proposed by the Commission

Amendment

3. The competence centre shall notify the request to the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 months.

3. The competence centre shall notify the request made in accordance with paragraph 2 to the SEP holder and invite the SEP holder to request a correction of the entry in the register or the information submitted for the database, where relevant within a time limit no less than 3 months.

Amendment  154

 

Proposal for a regulation

Article 23 – paragraph 4 – introductory part

 

Text proposed by the Commission

Amendment

4. The competence centre shall notify the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 months, when the competence centre is informed by a competent court of a Member State pursuant to Article 10(1) or a patent office or any third party of:

4. The competence centre shall notify the SEP holder and invite the SEP holder to request a correction of the entry in the register or the information submitted for the database, where relevant within a time limit no less than 3 months, when the competence centre is informed by a competent court of a Member State pursuant to Article 10(1) or a patent office or any third party of:

Amendment  155

 

Proposal for a regulation

Article 23 – paragraph 5

 

Text proposed by the Commission

Amendment

5. If the SEP holder fails to correct the entry in the register or the information submitted for the database within the given time limit, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied.

5. If the SEP holder fails to correct the entry in the register or the information submitted for the database within the given time limit, the competence centre shall notify the SEP holder about its failure to provide the correct and complete information and that, following a grace period of 1 month during which the SEP holder could still provide the required information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied.

Amendment  156

 

Proposal for a regulation

Article 23 – paragraph 8

 

Text proposed by the Commission

Amendment

8. The competence centre may correct any linguistic errors or errors of transcription and manifest oversights or technical errors attributable to it in the register and in the database of its own motion.

8. The competence centre shall correct any linguistic errors or errors of transcription and manifest oversights or technical errors attributable to it in the register and in the database of its own motion.

Amendment  157

 

Proposal for a regulation

Article 24 – paragraph 1

 

Text proposed by the Commission

Amendment

1. A SEP that is not registered within the time-limit set out in Article 20(3) may not be enforced in relation to the implementation of the standard for which a registration is required in a competent court of a Member State, from the time-limit set out in Article 20(3) until its registration in the register.

deleted

Amendment  158

 

Proposal for a regulation

Article 24 – paragraph 2

 

Text proposed by the Commission

Amendment

2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to receive royalties or seek damages for infringement of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register.

2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to bring a claim for infringement of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register.

Amendment  159

 

Proposal for a regulation

Article 24 – paragraph 3

 

Text proposed by the Commission

Amendment

3. Paragraphs (1) and (2) are without prejudice to provisions included in contracts setting a royalty for a broad portfolio of patents, present or future, stipulating that the invalidity, non-essentiality or unenforceability of a limited number thereof shall not affect the overall amount and enforceability of the royalty or other terms and conditions of the contract.

3. Paragraph 1 is without prejudice to provisions included in contracts concluded and applied before the entry into force of this Regulation which set a royalty for patents that are or have been claimed to be essential to a standard.

Amendment  160

 

Proposal for a regulation

Article 24 – paragraph 4

 

Text proposed by the Commission

Amendment

4. Paragraphs (1) and (2) apply also in case the registration of a SEP is suspended, during the suspension period pursuant to Article 22(4) or 23(5), except where the Boards of Appeal request the competence centre to correct its findings in accordance with Article 22(5) and 23(6).

4. Paragraph 1 applies also in case the registration of a SEP is suspended, during the suspension period pursuant to Article 22(4) or 23(5), except where the Boards of Appeal request the competence centre to correct its findings in accordance with Article 22(5) and 23(6).

Amendment  161

 

Proposal for a regulation

Article 26 – paragraph 5 – introductory part

 

Text proposed by the Commission

Amendment

5. By [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in , lay down the practical and operational arrangements concerning:

5. By … [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in Article 68(2) , lay down the practical and operational arrangements concerning:

Amendment  162

 

Proposal for a regulation

Article 26 – paragraph 5 – point a

 

Text proposed by the Commission

Amendment

(a) the requirements for evaluators or conciliators, including a Code of Conduct;

(a) the requirements for evaluators or conciliators, including a Code of Conduct, including at least the criteria of Article 27(2a) of this Regulation;

Amendment  163

 

Proposal for a regulation

Article 27 – paragraph 2

 

Text proposed by the Commission

Amendment

2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise.

2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators and make sure that:

Amendment  164

 

Proposal for a regulation

Article 27 – paragraph 2 – point a (new)

 

Text proposed by the Commission

Amendment

 

(a) there is no potential conflicts of interest, so that the chosen evaluators and conciliators are impartial and unbiased;

Amendment  165

 

Proposal for a regulation

Article 27 – paragraph 2 – point b (new)

 

Text proposed by the Commission

Amendment

 

(b) every evaluator and conciliator appointed to the roster has the necessary qualification, experience and skills to perform the required tasks effectively. In particular, they shall have the necessary qualifications, substantial experience in the patent industry and dispute resolution, a demonstrated understanding of FRAND terms and conditions or a solid technical background in relevant technology field.

Amendment  166

 

Proposal for a regulation

Article 27 – paragraph 2 - subparagraph 1 a (new)

 

Text proposed by the Commission

Amendment

Where the competence centre has not yet established roster of candidates evaluators or conciliators at the moment of the first registrations or FRAND determination, the competence centre shall invite ad hoc renowned experts who satisfy the requirements set out in the implementing act referred to in Article 26(5).

There shall be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise.

Amendment  167

 

Proposal for a regulation

Article 28 – paragraph 1

 

Text proposed by the Commission

Amendment

1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in an objective and impartial manner and that confidentiality of the information obtained is safeguarded

1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in a transparent, objective and impartial manner and that confidentiality of the information obtained is safeguarded.

Amendment  168

 

Proposal for a regulation

Article 29 – paragraph 1

 

Text proposed by the Commission

Amendment

1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).

1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process, unless they are a patent assertion entity or a subsidiary, affiliate, or owned or directly or indirectly controlled by another natural or legal person that does not qualify as an SME itself. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this Regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).

Amendment  169

 

Proposal for a regulation

Article 29 – paragraph 4

 

Text proposed by the Commission

Amendment

4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to This title or of an essentiality decision or check referred to in Article 8, no additional essentiality check shall be done. The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check.

4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to This title or of an essentiality decision or check referred to in Article 8, no additional essentiality check shall be done unless paragraph 4a applies. The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check.

Amendment  170

 

Proposal for a regulation

Article 29 – paragraph 4 a (new)

 

Text proposed by the Commission

Amendment

 

4a. If an evaluator has sufficient reason to believe that a prior essentiality check conducted under Article 8, point (b), might be inaccurate, the evaluator shall have the authority to review the result of that check. If, after the review, the evaluator concludes that the prior essentiality check result was inaccurate, this evaluator shall conduct a new essentiality check for the specific SEP in question.

Amendment  171

 

Proposal for a regulation

Article 30 – paragraph 1

 

Text proposed by the Commission

Amendment

1. Within 90 days following the publication of the list of registered SEPs selected for sampling, any stakeholder may submit to the competence centre written observations concerning the essentiality of the selected SEPs.

1. Within 90 days following the publication of the list of registered SEPs selected for sampling, any stakeholder may submit to the competence centre written observations and evidence concerning the essentiality of the selected SEPs.

Amendment  172

 

Proposal for a regulation

Article 30 – paragraph 3

 

Text proposed by the Commission

Amendment

3. The competence centre shall provide the observations and the responses by the SEP holder to the evaluator following the expiry of the set time limits.

3. The competence centre shall provide the observations, evidence and the responses by the SEP holder to the evaluator following the expiry of the set time limits.

Amendment  173

 

Proposal for a regulation

Article 31 – paragraph 4

 

Text proposed by the Commission

Amendment

4. The evaluator shall duly consider any information provided by the SEP holder.

4. The evaluator shall duly consider any information provided by the SEP holder or by stakeholders in accordance with the procedure laid down in Article 30.

Amendment  174

 

Proposal for a regulation

Article 32 – paragraph 3

 

Text proposed by the Commission

Amendment

3. The peer evaluator shall duly consider all the information submitted by the SEP holder, the reasons of the initial evaluator why the SEP may not be essential to the standard and any amended claim chart or additional observations provided by the SEP holder.

3. The peer evaluator shall duly consider all the information submitted by the SEP holder or stakeholders which have provided observations or evidence in accordance with the procedure laid down in Article 30, the reasons of the initial evaluator why the SEP may not be essential to the standard and any amended claim chart or additional observations provided by the SEP holder.

Amendment  175

 

Proposal for a regulation

Article 32 – paragraph 5

 

Text proposed by the Commission

Amendment

5. The peer evaluator shall duly consider the observations of the SEP holder and issue a final reasoned opinion to the competence centre within 3 months from its appointment. The final reasoned opinion shall include the name of the SEP holder, of the evaluator and of the peer evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination and peer evaluation procedure, the preliminary conclusion of the evaluator, the result of the peer evaluation and the reasons on which that result is based.

5. The peer evaluator shall duly consider the observations of the SEP holder or the observations or evidence provided by other stakeholders in accordance with Article 30 and issue a final reasoned opinion to the competence centre within 3 months from its appointment. The final reasoned opinion shall include the name of the SEP holder, of the evaluator and of the peer evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination and peer evaluation procedure, the preliminary conclusion of the evaluator, the result of the peer evaluation and the reasons on which that result is based.

Amendment  176

 

Proposal for a regulation

Article 34 – paragraph 1 – subparagraph 1 a (new)

 

Text proposed by the Commission

Amendment

 

The FRAND determination shall not apply to existing licensing agreements during their application term.

Amendment  177

 

Proposal for a regulation

Article 34 – paragraph 4

 

Text proposed by the Commission

Amendment

4. The obligation to initiate FRAND determination pursuant to paragraph 1 prior to the court proceedings is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction of a financial nature against the alleged infringer. The provisional injunction shall exclude the seizure of property of the alleged infringer and the seizure or delivery up of the products suspected of infringing a SEP. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member States shall consider that a procedure for FRAND determination is ongoing.

4. The obligation to initiate FRAND determination pursuant to paragraph 1 is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction of a financial nature against the alleged infringer. The provisional injunction shall exclude the seizure of property of the alleged infringer and the seizure or delivery up of the products suspected of infringing a SEP. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member State shall consider that a procedure for FRAND determination is ongoing.

Amendment  178

 

Proposal for a regulation

Article 34 – paragraph 5

 

Text proposed by the Commission

Amendment

5. Once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, shall be available to parties.

5. Once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, shall be available to the parties.

Amendment  179

 

Proposal for a regulation

Article 36 – paragraph 1 – point d

 

Text proposed by the Commission

Amendment

(d) the commercial name of the standard and the name of the standard developing organisation.

(d) the commercial name of the standard and the name of the relevant standard developing organisation.

Amendment  180

 

Proposal for a regulation

Article 36 – paragraph 1 – point f

 

Text proposed by the Commission

Amendment

(f) references to any other FRAND determination, if applicable.

(f) references to any other related FRAND determination, if applicable.

Amendment  181

 

Proposal for a regulation

Article 36 – paragraph 2 – introductory part

 

Text proposed by the Commission

Amendment

2. Where the request to initiate a FRAND determination is made by a SEP holder, in addition to the information listed in paragraph (1), it shall contain the following information:

2. Where the request to initiate a FRAND determination is made by a SEP holder, it shall contain, in addition to the information listed in paragraph (1), the following information:

Amendment  182

 

Proposal for a regulation

Article 37 – paragraph 1

 

Text proposed by the Commission

Amendment

1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(5)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months.

1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(3)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months.

Amendment  183

 

Proposal for a regulation

Article 38 – paragraph 1

 

Text proposed by the Commission

Amendment

1. The competence centre shall notify the request to the responding party within 7 days and shall inform the requesting party thereof.

1. The competence centre shall notify the request to the responding party within 7 days, including the information submitted pursuant to Article 36, and shall inform the requesting party thereof.

Amendment  184

 

Proposal for a regulation

Article 38 – paragraph 2

 

Text proposed by the Commission

Amendment

2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and whether it commits to comply with its outcome.

2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination in case of disagreement, include the reasons for declining to participate.

Amendment  185

 

Proposal for a regulation

Article 38 – paragraph 3 – introductory part

 

Text proposed by the Commission

Amendment

3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome, the following shall apply:

3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, the following shall apply:

Amendment  186

 

Proposal for a regulation

Article 38 – paragraph 3 – point a

 

Text proposed by the Commission

Amendment

(a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination and whether it commits to comply with the outcome of the FRAND determination;

(a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination;

Amendment  187

 

Proposal for a regulation

Article 38 – paragraph 3 – point b

 

Text proposed by the Commission

Amendment

(b) where the requesting party requests the continuation of the FRAND determination and commits to its outcome, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter.

(b) where the requesting party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter.

Amendment  188

 

Proposal for a regulation

Article 38 – paragraph 4 – introductory part

 

Text proposed by the Commission

Amendment

4. Where the responding party agrees to the FRAND determination and commits to comply with its outcome pursuant to paragraph (2), including where such commitment is contingent upon the commitment of the requesting party to comply with the outcome of the FRAND determination, the following shall apply:

4. Where the responding party agrees to the FRAND determination the competence centre shall notify the requesting party thereof.

Amendment  189

 

Proposal for a regulation

Article 38 – paragraph 4 – point a

 

Text proposed by the Commission

Amendment

(a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days whether it also commits to comply with the outcome of the FRAND determination. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties;

deleted

Amendment  190

 

Proposal for a regulation

Article 38 – paragraph 4 – point b

 

Text proposed by the Commission

Amendment

(b) where the requesting party does not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination.

deleted

Amendment  191

 

Proposal for a regulation

Article 38 – paragraph 4 – point c

 

Text proposed by the Commission

Amendment

(c) where the responding party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for by the responding party in relation to the same subject matter;

deleted

Amendment  192

 

Proposal for a regulation

Article 38 – paragraph 4 – point d