237 Amendments of Geoffroy DIDIER related to 2023/0133(COD)
Amendment 76 #
Proposal for a regulation
Recital 3
Recital 3
(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 a Member State 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.
Amendment 79 #
Proposal for a regulation
Recital 4
Recital 4
(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 bethis Regulation, shall only appliedy 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.
Amendment 84 #
Proposal for a regulation
Recital 5
Recital 5
Amendment 89 #
Proposal for a regulation
Recital 8
Recital 8
Amendment 92 #
Proposal for a regulation
Recital 10
Recital 10
(10) As there are specific procedures for assessing the validity and the infringement of patents, this Regulation should not affect such procedures. It is therefore necessary for the proposed FRAND determination procedure to run in parallel with such procedures, except in cases where an SME is involved as a defendant.
Amendment 94 #
Proposal for a regulation
Recital 13
Recital 13
(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.
Amendment 98 #
Proposal for a regulation
Recital 15
Recital 15
Amendment 101 #
Proposal for a regulation
Recital 16
Recital 16
Amendment 102 #
Proposal for a regulation
Recital 18
Recital 18
(18) Once a standard has been notified or an aggregate royalty is specified, whichever is made first, the competence centre will open the registration of SEPs by holders of SEPs in force in one or more Member States.
Amendment 107 #
Proposal for a regulation
Recital 20
Recital 20
Amendment 112 #
Proposal for a regulation
Recital 23
Recital 23
(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.
Amendment 117 #
Proposal for a regulation
Recital 26
Recital 26
Amendment 122 #
Proposal for a regulation
Recital 3
Recital 3
(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 a Member State 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.
Amendment 124 #
Proposal for a regulation
Recital 33
Recital 33
(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.
Amendment 127 #
Proposal for a regulation
Recital 4
Recital 4
(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 bethis Regulation, shall only appliedy 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.
Amendment 128 #
Proposal for a regulation
Recital 34
Recital 34
(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 beforeand settle any ongoing 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.
Amendment 132 #
Proposal for a regulation
Recital 35
Recital 35
(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, e to address infringement and validity of SEPs. Therefore, the FRAND determination shall run in parallel to any court proceedings, except in cases where an SME is involved as a defendant. 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.
Amendment 133 #
Proposal for a regulation
Recital 5
Recital 5
Amendment 138 #
Proposal for a regulation
Recital 37
Recital 37
(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.
Amendment 138 #
Proposal for a regulation
Recital 8
Recital 8
Amendment 139 #
Proposal for a regulation
Recital 10
Recital 10
(10) As there are specific procedures for assessing the validity and the infringement of patents, this Regulation should not affect such procedures. It is therefore necessary for the proposed FRAND determination procedure to run in parallel with such procedures, except in cases where an SME is involved as a defendant.
Amendment 144 #
Proposal for a regulation
Recital 42
Recital 42
Amendment 145 #
Proposal for a regulation
Recital 44
Recital 44
(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 royaltyFRAND determination 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) 43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017.
Amendment 145 #
Proposal for a regulation
Recital 13
Recital 13
(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.
Amendment 148 #
Proposal for a regulation
Recital 46
Recital 46
(46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, tThe efficiencies produced with this Regulation are likely tshould also facilitate the licensing of their SEPfor SME SEP holders to ensure a fair return on their investment and encourage SME participation in standards development. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administrative burden, 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.
Amendment 150 #
Proposal for a regulation
Recital 47
Recital 47
(47) In order to supplement certain non-essential elementscorrectly focus and develop the scope 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. __________________ 44 OJ L 123, 12.5.2016, p. 1.
Amendment 151 #
Proposal for a regulation
Recital 15
Recital 15
Amendment 153 #
Proposal for a regulation
Recital 16
Recital 16
Amendment 154 #
Proposal for a regulation
Recital 48
Recital 48
(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 __________________ 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 156 #
Proposal for a regulation
Recital 18
Recital 18
(18) Once a standard has been notified or an aggregate royalty is specified, whichever is made first, the competence centre will open the registration of SEPs by holders of SEPs in force in one or more Member States.
Amendment 157 #
Proposal for a regulation
Recital 49
Recital 49
(49) Regulation (EU) 2017/1001 of the European Parliament and of the Council46 should be amended to empower EUIPO to take on the tasks under this Regulation. The functions of the Executive Director should also be expanded to include the powers conferred on him under this Regulation. Furthermore, the EUIPO’s arbitration and mediation centre should be empowered to set up processes such as the aggregate royalty determination and the FRAND determination. __________________ 46 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, p. 1.)
Amendment 159 #
Proposal for a regulation
Recital 20
Recital 20
Amendment 163 #
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
Article 1 – paragraph 2 – introductory part
2. This Regulation shall apply to patents are in force in one or more Member States and 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,
Amendment 167 #
Proposal for a regulation
Recital 23
Recital 23
(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.
Amendment 170 #
Proposal for a regulation
Article 1 – paragraph 2 – point a
Article 1 – paragraph 2 – point a
(a) 3 years after the entry into forceapplication of this Regulation, with the exceptions provided in paragraph 3;
Amendment 171 #
Proposal for a regulation
Article 1 – paragraph 2 – point b
Article 1 – paragraph 2 – point b
Amendment 173 #
Proposal for a regulation
Recital 26
Recital 26
Amendment 178 #
Proposal for a regulation
Article 1 – paragraph 3
Article 1 – paragraph 3
Amendment 181 #
Proposal for a regulation
Article 1 – paragraph 4
Article 1 – paragraph 4
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 ofbring such use cases, standards or parts thereof, for the purposes of paragraph 3within the scope of the Regulation.
Amendment 186 #
Proposal for a regulation
Article 2 – paragraph 1 – point 2
Article 2 – paragraph 1 – point 2
(2) ‘essential to a standard’ means that the patent contains at least one claim for which it is not possible on technical grounds to make or use an implementation or method which compliesfully with a standard, including options therein, without infringing the patent under the current state of the art and normal technical practice;
Amendment 189 #
Proposal for a regulation
Article 2 – paragraph 1 – point 10
Article 2 – paragraph 1 – point 10
Amendment 192 #
Proposal for a regulation
Article 2 – paragraph 1 – point 11
Article 2 – paragraph 1 – point 11
Amendment 196 #
Proposal for a regulation
Recital 33
Recital 33
(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.
Amendment 198 #
Proposal for a regulation
Recital 34
Recital 34
(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 beforeand settle any ongoing 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.
Amendment 202 #
Proposal for a regulation
Article 3 – paragraph 2 – point f
Article 3 – paragraph 2 – point f
Amendment 202 #
Proposal for a regulation
Recital 35
Recital 35
(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, e to address infringement and validity of SEPs. Therefore, the FRAND determination shall run in parallel to any court proceedings, except in cases where an SME is involved as a defendant. Either party 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 207 #
Proposal for a regulation
Recital 37
Recital 37
(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.
Amendment 209 #
Proposal for a regulation
Article 4 – paragraph 3 – point c
Article 4 – paragraph 3 – point c
(c) the standard version, the technical specification and the specifican illustrative sections of the technical specification for which the patent is considered essential;
Amendment 211 #
Proposal for a regulation
Article 4 – paragraph 4 – point c
Article 4 – paragraph 4 – point c
(c) any information on whether an essentiality check or peer evaluation have been performed and reference toperformed before the registration and the result of the resultsentiality check;
Amendment 212 #
Proposal for a regulation
Article 4 – paragraph 4 a (new)
Article 4 – paragraph 4 a (new)
4 a. Prior to registering their patents, SEP holders may voluntarily submit their SEPs for essentiality checking to the competence centre.
Amendment 214 #
Proposal for a regulation
Article 5 – paragraph 2 – point b
Article 5 – paragraph 2 – point b
Amendment 217 #
Proposal for a regulation
Article 5 – paragraph 2 – point d
Article 5 – paragraph 2 – point d
(d) information regarding known products, processes, services or systems and implementations as well as projected pricing, anticipated sales volume, and any other relevant market data pursuant to Article 7, first paragraph, point (b);
Amendment 219 #
Proposal for a regulation
Recital 42
Recital 42
Amendment 221 #
Proposal for a regulation
Article 5 – paragraph 2 a (new)
Article 5 – paragraph 2 a (new)
2 a. The following information in the database shall be publicly accessible: a list of “unwilling licensees” containing the organizations which have been proven to be engaging in “hold-out” behaviour, either in litigation processes or by refusing to engage with the FRAND determination process, pursuant to Article 46.
Amendment 223 #
Proposal for a regulation
Article 7 – paragraph 1 – introductory part
Article 7 – paragraph 1 – introductory part
A SEP holdimplementer shall provide to the competence centre the following information:
Amendment 223 #
Proposal for a regulation
Recital 44
Recital 44
(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 royaltyFRAND determination 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) 43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017.
Amendment 224 #
Proposal for a regulation
Article 7 – paragraph 1 – point a
Article 7 – paragraph 1 – point a
(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 as well as projected pricing, anticipated sales volume, and any other relevant market data, to the extent such information is known to the SEP holderimplementer of a SEP.
Amendment 225 #
Proposal for a regulation
Article 7 – paragraph 1 – point b
Article 7 – paragraph 1 – point b
Amendment 226 #
Proposal for a regulation
Article 8 – paragraph 1 – point b
Article 8 – paragraph 1 – point b
(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.
Amendment 226 #
Proposal for a regulation
Recital 46
Recital 46
(46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, tThe efficiencies produced with this Regulation are likely tshould also facilitate the licensing of their SEPSME SEP holders to ensure a fair return on their investment and encourage SME participation in standards development. . Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administrative burden, 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.
Amendment 227 #
Proposal for a regulation
Recital 47
Recital 47
(47) In order to supplement certain non-essential elementscorrectly focus and develop the scope 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. __________________ 44 OJ L 123, 12.5.2016, p. 1.
Amendment 228 #
Proposal for a regulation
Article 8 – paragraph 1 – point b a (new)
Article 8 – paragraph 1 – point b a (new)
(b a) any information on essentiality check or peer evaluation performed before the registration of the standard essential patent as described under Article 4(4)(c).
Amendment 229 #
Proposal for a regulation
Article 9
Article 9
Amendment 230 #
Proposal for a regulation
Recital 48
Recital 48
(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 __________________ 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 232 #
Proposal for a regulation
Recital 49
Recital 49
(49) Regulation (EU) 2017/1001 of the European Parliament and of the Council46 should be amended to empower EUIPO to take on the tasks under this Regulation. The functions of the Executive Director should also be expanded to include the powers conferred on him under this Regulation. Furthermore, the EUIPO’s arbitration and mediation centre should be empowered to set up processes such as the aggregate royalty determination and the FRAND determination. __________________ 46 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, p. 1.)
Amendment 235 #
Proposal for a regulation
Article 11
Article 11
Amendment 237 #
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
Article 1 – paragraph 2 – introductory part
2. This Regulation shall apply to patents are in force in one or more Member States and 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,
Amendment 242 #
Proposal for a regulation
Article 13 a (new)
Article 13 a (new)
Article 13a Duty of good faith SEP holders and implementers must behave in good faith, before, during and after licenses negotiations. SEP implementers who use standardized technology must proactively seek to take a license from the SEP holder who owns the technology they use.
Amendment 243 #
Proposal for a regulation
Article 14 – paragraph 1 – introductory part
Article 14 – paragraph 1 – introductory part
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 informationStandard development organisations shall notify to the competence centre:
Amendment 243 #
Proposal for a regulation
Article 1 – paragraph 2 – point a
Article 1 – paragraph 2 – point a
(a) 3 years after the entry into forceapplication of this Regulation, with the exceptions provided in paragraph 3;
Amendment 244 #
Proposal for a regulation
Article 14 – paragraph 1 – point d
Article 14 – paragraph 1 – point d
Amendment 245 #
Proposal for a regulation
Article 14 – paragraph 2
Article 14 – paragraph 2
2. Such notification shall be made within 30 day6 months of the publication of the latest technical specification.
Amendment 245 #
Proposal for a regulation
Article 1 – paragraph 2 – point b
Article 1 – paragraph 2 – point b
Amendment 247 #
Proposal for a regulation
Article 15
Article 15
Amendment 251 #
Proposal for a regulation
Article 16
Article 16
Amendment 252 #
Proposal for a regulation
Article 1 – paragraph 3
Article 1 – paragraph 3
Amendment 254 #
Proposal for a regulation
Article 17
Article 17
Amendment 257 #
Proposal for a regulation
Article 1 – paragraph 4
Article 1 – paragraph 4
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 ofbring such use cases, standards or parts thereof, for the purposes of paragraph 3within the scope of the Regulation.
Amendment 259 #
Proposal for a regulation
Article 2 – paragraph 1 – point 2
Article 2 – paragraph 1 – point 2
(2) ‘essential to a standard’ means that the patent contains at least one claim for which it is not possible on technical grounds to make or use an implementation or method which compliesfully with a standard, including options therein, without infringing the patent under the current state of the art and normal technical practice;
Amendment 263 #
Proposal for a regulation
Article 2 – paragraph 1 – point 10
Article 2 – paragraph 1 – point 10
Amendment 264 #
Proposal for a regulation
Article 18
Article 18
Amendment 265 #
Proposal for a regulation
Article 2 – paragraph 1 – point 11
Article 2 – paragraph 1 – point 11
Amendment 275 #
Proposal for a regulation
Article 19 – paragraph 1 – introductory part
Article 19 – paragraph 1 – introductory part
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:part thereof or use case in a delegated act pursuant to Article 66 within 60 days from the coming into effect of the delegated act concerned.
Amendment 276 #
Proposal for a regulation
Article 19 – paragraph 1 – point a
Article 19 – paragraph 1 – point a
Amendment 277 #
Proposal for a regulation
Article 19 – paragraph 1 – point b
Article 19 – paragraph 1 – point b
Amendment 278 #
Proposal for a regulation
Article 22 – paragraph 4
Article 22 – paragraph 4
Amendment 281 #
Proposal for a regulation
Article 22 – paragraph 5
Article 22 – paragraph 5
Amendment 282 #
Proposal for a regulation
Article 23 – paragraph 5
Article 23 – paragraph 5
Amendment 283 #
Proposal for a regulation
Article 3 – paragraph 2 – point f
Article 3 – paragraph 2 – point f
Amendment 284 #
Proposal for a regulation
Article 23 – paragraph 6
Article 23 – paragraph 6
Amendment 286 #
Proposal for a regulation
Article 24
Article 24
Amendment 293 #
Proposal for a regulation
Article 4 – paragraph 3 – point c
Article 4 – paragraph 3 – point c
(c) the standard version, the technical specification and the specifican illustrative sections of the technical specification for which the patent is considered essential;
Amendment 294 #
Proposal for a regulation
Article 26 – paragraph 2 – introductory part
Article 26 – paragraph 2 – introductory part
2. A conciliator shall conduct the following tasks:
Amendment 298 #
Proposal for a regulation
Article 26 – paragraph 2 – point a
Article 26 – paragraph 2 – point a
Amendment 299 #
Proposal for a regulation
Article 4 – paragraph 4 – point c
Article 4 – paragraph 4 – point c
(c) Any information on whether an essentiality check or peer evaluation have been performed and reference toperformed before the registration and the result of the resultsentiality check;
Amendment 301 #
Proposal for a regulation
Article 26 – paragraph 2 – point b
Article 26 – paragraph 2 – point b
Amendment 303 #
Proposal for a regulation
Article 4 – paragraph 4 a (new)
Article 4 – paragraph 4 a (new)
4a. Prior to registering their patents, SEP holders may voluntarily submit their SEPs for essentiality checking to the Competence Centre.
Amendment 305 #
Proposal for a regulation
Article 26 – paragraph 4 a (new)
Article 26 – paragraph 4 a (new)
4 a. When setting up and managing the roster of experts pursuant to Article 3(b), the competence centre shall comply with the following requirements: (a) before appointing an expert, the competence centre shall carry out a thorough evaluation of past affiliations in order to identify any potential conflicts of interest; (b) The competence centre shall ensure that every individual appointed to the roster has the necessary skills to perform the required tasks. In particular, the experts shall have the following qualifications at minimum: - qualification as a European Patent Attorney according to the requirements set out by EPI, including the European qualification examination; - substantial experience of at least 10 years in the patent industry and dispute resolution in Europe; - demonstrated understanding of FRAND commitments and thorough knowledge of standards development organisations; - solid technical background in relevant technology fields (telecommunications, electronics).
Amendment 305 #
Proposal for a regulation
Article 5 – paragraph 2 – point b
Article 5 – paragraph 2 – point b
Amendment 308 #
Proposal for a regulation
Article 5 – paragraph 2 – point d
Article 5 – paragraph 2 – point d
(d) information regarding known products, processes, services or systems and implementations as well as projected pricing, anticipated sales volume, and any other relevant market data pursuant to Article 7, first paragraph, point (b);
Amendment 311 #
Proposal for a regulation
Article 26 – paragraph 5 – introductory part
Article 26 – paragraph 5 – introductory part
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 312 #
Proposal for a regulation
Article 26 – paragraph 5 – point a
Article 26 – paragraph 5 – point a
Amendment 316 #
Proposal for a regulation
Article 26 – paragraph 5 – point b
Article 26 – paragraph 5 – point b
(b) the procedures pursuant to Articles 17, 18, 31 and 32 and Title VI.
Amendment 317 #
Proposal for a regulation
Article 27 – paragraph 1
Article 27 – paragraph 1
1. The competence centre shall conduct a procedure of selecting candidates based on the requirements established in the implementing act referred to in Article 26(5).
Amendment 317 #
Proposal for a regulation
Article 5 – paragraph 2 a (new)
Article 5 – paragraph 2 a (new)
2a. The following information in the database shall publicly accessible: a list of “unwilling licensees” containing the organizations which have been proven to be engaging in “hold-out” behaviour, either in litigation processes or by refusing to engage with the FRAND determination process, pursuant to Article 46.
Amendment 320 #
Proposal for a regulation
Article 27 – paragraph 3
Article 27 – paragraph 3
Amendment 321 #
Proposal for a regulation
Article 28 – paragraph 3
Article 28 – paragraph 3
3. Essentiality checks shall not be done on more than one SEP from the respective patent family and shall not be performed over standard essential patents that have been subjected to an essentiality check in accordance with article 4 (4) (c) or 4a.
Amendment 325 #
Proposal for a regulation
Article 29 – paragraph 5
Article 29 – paragraph 5
Amendment 325 #
Proposal for a regulation
Article 7 – paragraph 1 – introductory part
Article 7 – paragraph 1 – introductory part
A SEP holdimplementer shall provide to the competence centre the following information:
Amendment 326 #
Proposal for a regulation
Article 29 – paragraph 6
Article 29 – paragraph 6
Amendment 327 #
Proposal for a regulation
Article 7 – paragraph 1 – point a
Article 7 – paragraph 1 – point a
(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 as well as projected pricing, anticipated sales volume, and any other relevant market data, to the extent such information is known to the SEP holderimplementer of a SEP.
Amendment 328 #
Proposal for a regulation
Article 7 – paragraph 1 – point b
Article 7 – paragraph 1 – point b
Amendment 330 #
Proposal for a regulation
Article 34 – paragraph 1 – introductory part
Article 34 – paragraph 1 – introductory part
1. The FRAND determination in respect of a standard and implementation for which an entry in the register has been created, shall be initiatedmay be initiated at any time 6 months after SEP holder and implementer have entered into licensing negotiations by any of the following persons:
Amendment 331 #
Proposal for a regulation
Article 34 – paragraph 1 – point b a (new)
Article 34 – paragraph 1 – point b a (new)
(b a) the FRAND determination shall not apply to existing licensing agreement during their term and their renewal.
Amendment 332 #
Proposal for a regulation
Article 34 – paragraph 3
Article 34 – paragraph 3
3. The FRAND determination may be initiated by a party or entered into by the parties to resolve disputes related to FRAND terms and conditions voluntarily only insofar that the parties entered into licensing negotiations since at least 6 months.
Amendment 334 #
Proposal for a regulation
Article 34 – paragraph 4
Article 34 – paragraph 4
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.
Amendment 334 #
Proposal for a regulation
Article 8 – paragraph 1 – point b
Article 8 – paragraph 1 – point b
(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.
Amendment 338 #
Proposal for a regulation
Article 8 – paragraph 1 – point b a (new)
Article 8 – paragraph 1 – point b a (new)
(ba) any information on essentiality check or peer evaluation performed before the registration of the standard essential patent as described under Article 4(4)(c).
Amendment 339 #
Proposal for a regulation
Article 9
Article 9
Amendment 340 #
Proposal for a regulation
Article 9 – paragraph 1
Article 9 – paragraph 1
Amendment 345 #
Proposal for a regulation
Article 38 – paragraph 2
Article 38 – paragraph 2
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.
Amendment 349 #
Proposal for a regulation
Article 38 – paragraph 3 – point a
Article 38 – paragraph 3 – point a
Amendment 351 #
Proposal for a regulation
Article 11
Article 11
Amendment 352 #
Proposal for a regulation
Article 38 – paragraph 3 – point b
Article 38 – paragraph 3 – point b
Amendment 356 #
Proposal for a regulation
Article 38 – paragraph 3 – point c
Article 38 – paragraph 3 – point c
(c) where the requesting party fails to request, within the time limit referred to in subparagraph (a), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination.
Amendment 359 #
Proposal for a regulation
Article 38 – paragraph 4 – introductory part
Article 38 – paragraph 4 – introductory part
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:shall continue and upon mutual agreement the outcome may be binding for both parties.
Amendment 360 #
Proposal for a regulation
Article 13 a (new)
Article 13 a (new)
Article13a Duty of good faith SEP holders and implementers must behave in good faith, before, during and after licenses negotiations. SEP implementers who use standardized technology must proactively seek to take a license from the SEP holder who owns the technology they use.
Amendment 362 #
Proposal for a regulation
Article 14 – paragraph 1 – introductory part
Article 14 – paragraph 1 – introductory part
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:Standard development organisations shall notify to the competence centre,
Amendment 363 #
Proposal for a regulation
Article 14 – paragraph 1 – point d
Article 14 – paragraph 1 – point d
Amendment 364 #
Proposal for a regulation
Article 38 – paragraph 4 – point a
Article 38 – paragraph 4 – point a
(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;
Amendment 365 #
Proposal for a regulation
Article 14 – paragraph 2
Article 14 – paragraph 2
2. Such notification shall be made within 30 day6 months of the publication of the latest technical specification.
Amendment 368 #
Proposal for a regulation
Article 38 – paragraph 4 – point b
Article 38 – paragraph 4 – point b
Amendment 369 #
Proposal for a regulation
Article 15
Article 15
Amendment 370 #
Proposal for a regulation
Article 38 – paragraph 4 – point c
Article 38 – paragraph 4 – point c
Amendment 373 #
Proposal for a regulation
Article 38 – paragraph 4 – point d
Article 38 – paragraph 4 – point d
Amendment 375 #
Proposal for a regulation
Article 16
Article 16
Amendment 377 #
Proposal for a regulation
Article 38 – paragraph 5
Article 38 – paragraph 5
Amendment 379 #
Proposal for a regulation
Article 17
Article 17
Amendment 381 #
Proposal for a regulation
Article 38 – paragraph 6
Article 38 – paragraph 6
6. The FRAND determination shall concern a global SEP licence, unless otherwise specified by the parties in case both parties agree to the FRAND determination or by the party that requested the continuation of the FRAND determination. in force in one or more Member States, unless otherwise specified by the parties, SMEs that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination.
Amendment 384 #
Proposal for a regulation
Article 39 – paragraph 1
Article 39 – paragraph 1
1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(5), the competence centre shall propose at least 3 candidates for the FRAND determination from the roster of conciliators referred to Article 27(2). The parties or party shall select one of the proposed candidates as a conciliator for the FRAND determination.
Amendment 388 #
Proposal for a regulation
Article 18
Article 18
Amendment 389 #
Proposal for a regulation
Article 39 – paragraph 2
Article 39 – paragraph 2
2. If the parties do not agree on a conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2)procedure will not continue.
Amendment 390 #
Proposal for a regulation
Article 42 – paragraph 2
Article 42 – paragraph 2
2. He/she shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure.
Amendment 392 #
Proposal for a regulation
Article 44 – paragraph 1
Article 44 – paragraph 1
1. A party may submit an objection stating that the conciliator is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, no later than in the first written submission at any time. The other party shall be given opportunity to submit its observations.
Amendment 397 #
Proposal for a regulation
Article 45 – paragraph 2
Article 45 – paragraph 2
2. The conciliator may invite the parties or the party requesting the continuation of the FRAND determination to meet with him/her or may communicate with him/her orally or in writing.
Amendment 400 #
Proposal for a regulation
Article 45 – paragraph 3
Article 45 – paragraph 3
3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the conciliator and, in particular, shall attend the meetings, comply with his/her requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator to hear witnesses and experts whom the conciliator might call.
Amendment 404 #
Proposal for a regulation
Article 45 – paragraph 4
Article 45 – paragraph 4
Amendment 407 #
Proposal for a regulation
Article 45 – paragraph 5
Article 45 – paragraph 5
5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the conciliator shall terminate the FRAND determination.
Amendment 411 #
Proposal for a regulation
Article 46 – paragraph 1 – point b
Article 46 – paragraph 1 – point b
Amendment 415 #
Proposal for a regulation
Article 46 – paragraph 2 a (new)
Article 46 – paragraph 2 a (new)
2 a. If an implementer party to the FRAND determination: (a) refuses to participate or withdraw from the FRAND determination at any stage of the procedure or (b) do not commit to or withdraw its commitment to comply with its outcome, then the conciliator shall inform the competence centre and such implementer shall be added to a public list of “unwilling licensees” by the competence centre. Any final court decision relating to the alleged infringement by the “unwilling licensee” shall be published in the competence centre database.
Amendment 418 #
Proposal for a regulation
Article 19 – paragraph 1 – introductory part
Article 19 – paragraph 1 – introductory part
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:part thereof or use case in a delegated act pursuant to Article 66 within 60 days from the coming into effect of the delegated act concerned.
Amendment 419 #
Proposal for a regulation
Article 46 – paragraph 3
Article 46 – paragraph 3
Amendment 420 #
Proposal for a regulation
Article 19 – paragraph 1 – point a
Article 19 – paragraph 1 – point a
Amendment 422 #
Proposal for a regulation
Article 19 – paragraph 1 – point b
Article 19 – paragraph 1 – point b
Amendment 424 #
Proposal for a regulation
Article 50 – paragraph 3
Article 50 – paragraph 3
3. When submitting suggestions for FRAND terms and conditions, the conciliator shall take into account the impact of the determination FRAND terms and conditions on the value chain and on the incentives to innovation of both the SEP holder and the stakeholders in the relevant value chain. To that end, the conciliator may rely on the expert opinion referred to in Article 18 or, in case of absence of such an opinion request additional information and hear experts or stakeholders.
Amendment 427 #
Proposal for a regulation
Article 55 – paragraph 1
Article 55 – paragraph 1
1. At the latest 45 days before the end of the time limit referred to in Article 37, the conciliator shall submit a reasoned proposal for a determination of FRAND terms and conditions to the parties or, as applicable, the party requesting the continuation of the FRAND determination.
Amendment 430 #
Proposal for a regulation
Article 55 – paragraph 2
Article 55 – paragraph 2
2. Either party may submit observations to the proposal and suggest amendments to the proposal by the conciliator, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation.
Amendment 430 #
Proposal for a regulation
Article 22 – paragraph 4
Article 22 – paragraph 4
Amendment 433 #
Proposal for a regulation
Article 22 – paragraph 5
Article 22 – paragraph 5
Amendment 434 #
Proposal for a regulation
Article 56 – paragraph 1 – introductory part
Article 56 – paragraph 1 – introductory part
1. In addition to the termination of the FRAND determination for reasons provided for Article 38(43), Article 44(3), Article 45(54), Article 46(2), point (b), Article 46(3) and Article 47(2), the FRAND determination shall be terminated in any of the following ways:
Amendment 436 #
Proposal for a regulation
Article 56 – paragraph 1 – point d a (new)
Article 56 – paragraph 1 – point d a (new)
(d a) a binding FRAND determination agreed between the parties pursuant to Article 38(4) shall terminate when the conciliator makes its final reasoned proposal under Article 55.
Amendment 438 #
Proposal for a regulation
Article 23 – paragraph 5
Article 23 – paragraph 5
Amendment 440 #
Proposal for a regulation
Article 56 – paragraph 4
Article 56 – paragraph 4
4. AIn any claim involving an SME as defendant, a competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination, or, in the cases foreseen in Article 38(3)(b) and Article 38(4)(c), with a notice of commitment pursuant to Article 38(5). In all other cases a court may proceed in parallel with any FRAND determination.
Amendment 440 #
Proposal for a regulation
Article 23 – paragraph 6
Article 23 – paragraph 6
Amendment 442 #
Proposal for a regulation
Article 56 – paragraph 5
Article 56 – paragraph 5
Amendment 444 #
Proposal for a regulation
Article 24
Article 24
Amendment 446 #
Proposal for a regulation
Article 61 – paragraph 1
Article 61 – paragraph 1
1. The competence centre shall develop an SME SEP licensing Assistance Hub. In particular the competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises free of charge. In particular, the competence centre shall work in close collaboration with the European Commission, national patent office and governmental schemes that support SMEs, in order to offer practical guidance and advice to SMEs, whether these are SEP holders or implementers.
Amendment 448 #
Proposal for a regulation
Article 61 – paragraph 2
Article 61 – paragraph 2
2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises on SEP related matters. Such studies may include requiring SEP holders and implementers to provide information regarding licenses entered into, royalties paid or collected, and products sold for IoT applications, and the competence centre may provide estimates of licensing costs for such applications to SMEs.
Amendment 449 #
Proposal for a regulation
Article 61 – paragraph 2 a (new)
Article 61 – paragraph 2 a (new)
2 a. The competence centre shall require each SEP holder with a registered SEP to report annually: (a) all license agreements concluded with SMEs; (b) all SMEs that sent it unsolicited requests it for an SEP license; and (c) all SMEs to which it specifically directed a request to take an SEP license. The competence centre shall publish an annual report on SME SEP licensing based on such reports.
Amendment 450 #
Proposal for a regulation
Article 61 – paragraph 2 b (new)
Article 61 – paragraph 2 b (new)
2 b. The competence centre shall invite SEP holders with a registered SEP to identify an employee to the competence centre, known as an “SME Ambassador,” to whom the competence centre may direct inquiries under paragraph (1), paragraph (2), or paragraph (3). SEP holders may identify an SME Ambassador on a voluntary basis.
Amendment 453 #
Proposal for a regulation
Article 61 – paragraph 3 a (new)
Article 61 – paragraph 3 a (new)
3 a. The EUIPO shall ensure that this function is sufficiently funded and resourced.
Amendment 454 #
Proposal for a regulation
Article 61 a (new)
Article 61 a (new)
Article 61a Safe harbours and ADR for micro, small and medium-sized enterprises 1. The competence centre shall seek to sign an agreement with the World Intellectual Property Organization (WIPO) to promote the use of the WIPO Arbitration and Mediation Centre for SEP disputes involving SMEs in the EU and to exchange information. 2. The competence centre shall offer SMEs the opportunity to register their willingness to engage in mediation under the WIPO rules for SEP-related disputes. If an SME has registered such willingness and has not revoked it, then an SEP Holder shall not commence an action to enforce an SEP against such SME in a national court without first initiating mediation proceedings under the WIPO rules. 3. The competence center shall offer SMEs the opportunity to make an irrevocable commitment to accept a license on FRAND terms and conditions from any SEP holder that has registered an SEP. A SEP holder that is the beneficiary of such a commitment may not initiate any action seeking an injunction in any court of a member state for an SEP covered by such commitment after such commitment is made. 4. The registration or willingness to mediate and commitment to accept FRAND terms in Paragraph (2) and Paragraph (3) are purely voluntary and no adverse inference may be drawn by any court of a member state arising from a failure to register or make a commitment under those paragraphs.
Amendment 459 #
Proposal for a regulation
Article 63 – paragraph 2 – point a
Article 63 – paragraph 2 – point a
Amendment 462 #
Proposal for a regulation
Article 63 – paragraph 2 – point b
Article 63 – paragraph 2 – point b
Amendment 464 #
Proposal for a regulation
Article 63 – paragraph 3 – point a
Article 63 – paragraph 3 – point a
Amendment 466 #
Proposal for a regulation
Article 63 – paragraph 3 – point b
Article 63 – paragraph 3 – point b
Amendment 466 #
Proposal for a regulation
Article 26 – paragraph 2 – introductory part
Article 26 – paragraph 2 – introductory part
2. A conciliator shall conduct the following tasks:
Amendment 469 #
Proposal for a regulation
Article 26 – paragraph 2 – point a
Article 26 – paragraph 2 – point a
Amendment 470 #
Proposal for a regulation
Article 64 – paragraph 2
Article 64 – paragraph 2
2. If the amounts requested are not paid in full within 10 days after the date of the request, the competence centre may notify the defaulting party and give it the opportunity to make the required payment within [5] days. It shall submit a copy of the request to the other party, in case of an aggregate royalty or FRAND determination.
Amendment 470 #
Proposal for a regulation
Article 26 – paragraph 2 – point a
Article 26 – paragraph 2 – point a
(a) mediate among parties in establishing an aggregate royalty;
Amendment 472 #
Proposal for a regulation
Article 26 – paragraph 2 – point b
Article 26 – paragraph 2 – point b
Amendment 474 #
Proposal for a regulation
Article 66
Article 66
Amendment 480 #
Proposal for a regulation
Article 26 – paragraph 4 a (new)
Article 26 – paragraph 4 a (new)
4a. When setting up and managing the roster of experts pursuant to Article 3(b), the Competence Centre shall comply with the following requirements: (a) Before appointing an expert, the Competence Centre shall carry out a thorough evaluation of past affiliations in order to identify any potential conflicts of interest. (c) The Competence Centre shall ensure that every individual appointed to the roster has the necessary skills to perform the required tasks. In particular, the experts shall have the following qualifications at minimum: - Qualification as a European Patent Attorney according to the requirements set out by EPI, including the European qualification examination. - Substantial experience of at least 10 years in the patent industry and dispute resolution in Europe. - Demonstrated understanding of FRAND commitments and thorough knowledge of standards development organisations. - Solid technical background in relevant technology fields (telecommunications, electronics).
Amendment 482 #
Proposal for a regulation
Article 26 – paragraph 5 – introductory part
Article 26 – paragraph 5 – introductory part
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 484 #
Proposal for a regulation
Article 26 – paragraph 5 – point a
Article 26 – paragraph 5 – point a
Amendment 487 #
Proposal for a regulation
Article 67 a (new)
Article 67 a (new)
Article 67a Delegated act procedure to bring standard and use cases within the scope of the Regulation Where and when the functioning of the internal market is severely distorted due to inefficiencies in the licensing of SEPs, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, determine which standards published after the coming into effect of this Regulation, parts thereof or relevant use cases shall be brought within the scope of the Regulation.
Amendment 490 #
Proposal for a regulation
Article 26 – paragraph 5 – point b
Article 26 – paragraph 5 – point b
(b) the procedures pursuant to Articles 17, 18, 31 and 32 and Title VI.
Amendment 491 #
Proposal for a regulation
Article 27 – paragraph 1
Article 27 – paragraph 1
1. The competence centre shall conduct a procedure of selecting candidates based on the requirements established in the implementing act referred to in Article 26(5).
Amendment 496 #
Proposal for a regulation
Article 27 – paragraph 3
Article 27 – paragraph 3
Amendment 505 #
Proposal for a regulation
Article 28 – paragraph 3
Article 28 – paragraph 3
3. Essentiality checks shall not be done on more than one SEP from the respective patent family. and shall not be performed over standard essential patents that have been subjected to an essentiality check in accordance with article 4 (4) (c) or 4a
Amendment 513 #
Proposal for a regulation
Article 29 – paragraph 5
Article 29 – paragraph 5
Amendment 514 #
Proposal for a regulation
Article 29 – paragraph 6
Article 29 – paragraph 6
Amendment 532 #
Proposal for a regulation
Article 34 – paragraph 1 – introductory part
Article 34 – paragraph 1 – introductory part
1. The FRAND determination in respect of a standard and implementation for which an entry in the register has been created, shall be initiatedmay be initiated at any time 6 months after SEP holder and implementer have entered into licensing negotiations by any of the following persons:
Amendment 535 #
Proposal for a regulation
Article 34 – paragraph 1 – point b a (new)
Article 34 – paragraph 1 – point b a (new)
(ba) The FRAND determination shall not apply to existing licensing agreement during their term and their renewal.
Amendment 536 #
Proposal for a regulation
Article 34 – paragraph 3
Article 34 – paragraph 3
Amendment 538 #
Proposal for a regulation
Article 34 – paragraph 4
Article 34 – paragraph 4
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.
Amendment 553 #
Proposal for a regulation
Article 38 – paragraph 2
Article 38 – paragraph 2
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.
Amendment 559 #
Proposal for a regulation
Article 38 – paragraph 3 – point a
Article 38 – paragraph 3 – point a
Amendment 564 #
Proposal for a regulation
Article 38 – paragraph 3 – point b
Article 38 – paragraph 3 – point b
Amendment 569 #
Proposal for a regulation
Article 38 – paragraph 3 – point c
Article 38 – paragraph 3 – point c
(c) where the requesting party fails to request, within the time limit referred to in subparagraph (a), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination.
Amendment 570 #
Proposal for a regulation
Article 38 – paragraph 3 – point c
Article 38 – paragraph 3 – point c
(c) where the requesting party fails to request, within the time limit referred to in subparagraph (a), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination.
Amendment 573 #
Proposal for a regulation
Article 38 – paragraph 4 – introductory part
Article 38 – paragraph 4 – introductory part
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:shall continue and upon mutual agreement the outcome may be binding for both parties.
Amendment 576 #
Proposal for a regulation
Article 38 – paragraph 4 – point a
Article 38 – paragraph 4 – point a
(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;
Amendment 579 #
Proposal for a regulation
Article 38 – paragraph 4 – point b
Article 38 – paragraph 4 – point b
Amendment 584 #
Proposal for a regulation
Article 38 – paragraph 4 – point c
Article 38 – paragraph 4 – point c
Amendment 585 #
Proposal for a regulation
Article 38 – paragraph 4 – point d
Article 38 – paragraph 4 – point d
Amendment 588 #
Proposal for a regulation
Article 38 – paragraph 5
Article 38 – paragraph 5
Amendment 593 #
Proposal for a regulation
Article 38 – paragraph 6
Article 38 – paragraph 6
6. The FRAND determination shall concern a global SEP licence, unless otherwise specified by the parties in case both parties agree to the FRAND determination or by the party that requested the continuation of the FRAND determination. in force in one or more Member States, unless otherwise specified by the parties, SMEs that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination.
Amendment 598 #
Proposal for a regulation
Article 39 – paragraph 1
Article 39 – paragraph 1
1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(5), the competence centre shall propose at least 3 candidates for the FRAND determination from the roster of conciliators referred to Article 27(2). The parties or party shall select one of the proposed candidates as a conciliator for the FRAND determination.
Amendment 601 #
Proposal for a regulation
Article 39 – paragraph 2
Article 39 – paragraph 2
2. If the parties do not agree on a conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2)procedure will not continue.
Amendment 609 #
Proposal for a regulation
Article 42 – paragraph 2
Article 42 – paragraph 2
2. He/she shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure.
Amendment 616 #
Proposal for a regulation
Article 44 – paragraph 1
Article 44 – paragraph 1
1. A party may submit an objection stating that the conciliator is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, no later than in the first written submission at any time. The other party shall be given opportunity to submit its observations.
Amendment 624 #
Proposal for a regulation
Article 45 – paragraph 2
Article 45 – paragraph 2
2. The conciliator may invite the parties or the party requesting the continuation of the FRAND determination to meet with him/her or may communicate with him/her orally or in writing.
Amendment 627 #
Proposal for a regulation
Article 45 – paragraph 3
Article 45 – paragraph 3
3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the conciliator and, in particular, shall attend the meetings, comply with his/her requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator to hear witnesses and experts whom the conciliator might call.
Amendment 631 #
Proposal for a regulation
Article 45 – paragraph 4
Article 45 – paragraph 4
Amendment 634 #
Proposal for a regulation
Article 45 – paragraph 5
Article 45 – paragraph 5
5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the conciliator shall terminate the FRAND determination.
Amendment 639 #
Proposal for a regulation
Article 46 – paragraph 1 – point b
Article 46 – paragraph 1 – point b
Amendment 645 #
Proposal for a regulation
Article 46 – paragraph 2 a (new)
Article 46 – paragraph 2 a (new)
2a. If an implementer party to the FRAND determination: (a) refuses to participate or withdraw from the FRAND determination at any stage of the procedure or (b) do not commit to or withdraw its commitment to comply with its outcome, then the conciliator shall inform the Competence Center and such implementer shall be added to a public list of “unwilling licensees” by the Competence Centre. Any final court decision relating to the alleged infringement by the “unwilling licensee” shall be published in the Competence Centre database.
Amendment 647 #
Proposal for a regulation
Article 46 – paragraph 3
Article 46 – paragraph 3
Amendment 664 #
Proposal for a regulation
Article 50 – paragraph 3
Article 50 – paragraph 3
3. When submitting suggestions for FRAND terms and conditions, the conciliator shall take into account the impact of the determination FRAND terms and conditions on the value chain and on the incentives to innovation of both the SEP holder and the stakeholders in the relevant value chain. To that end, the conciliator may rely on the expert opinion referred to in Article 18 or, in case of absence of such an opinion request additional information and hear experts or stakeholders.
Amendment 684 #
Proposal for a regulation
Article 55 – paragraph 1
Article 55 – paragraph 1
1. At the latest 45 days before the end of the time limit referred to in Article 37, the conciliator shall submit a reasoned proposal for a determination of FRAND terms and conditions to the parties or, as applicable, the party requesting the continuation of the FRAND determination.
Amendment 688 #
Proposal for a regulation
Article 55 – paragraph 2
Article 55 – paragraph 2
2. Either party may submit observations to the proposal and suggest amendments to the proposal by the conciliator, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation.
Amendment 695 #
Proposal for a regulation
Article 56 – paragraph 1 – introductory part
Article 56 – paragraph 1 – introductory part
1. In addition to the termination of the FRAND determination for reasons provided for Article 38(43), Article 44(3), Article 45(54), Article 46(2), point (b), Article 46(3) and Article 47(2), the FRAND determination shall be terminated in any of the following ways:
Amendment 706 #
Proposal for a regulation
Article 56 – paragraph 1 – point d a (new)
Article 56 – paragraph 1 – point d a (new)
(da) (e) A binding FRAND determination agreed between the parties pursuant to Article 38(4) shall terminate when the conciliator makes its final reasoned proposal under Article 55.
Amendment 708 #
Proposal for a regulation
Article 56 – paragraph 4
Article 56 – paragraph 4
4. AIn any claim involving an SME as defendant, a competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination, or, in the cases foreseen in Article 38(3)(b) and Article 38(4)(c), with a notice of commitment pursuant to Article 38(5). In all other cases a court may proceed in parallel with any FRAND determination.
Amendment 711 #
Proposal for a regulation
Article 56 – paragraph 5
Article 56 – paragraph 5
Amendment 727 #
Proposal for a regulation
Article 61 – paragraph 1
Article 61 – paragraph 1
1. The competence centre shall develop an SME SEP Licensing Assistance Hub. In particular: 1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises free of charge. In particular, the competence centre shall work in close collaboration with the European Commission, national patent office and governmental schemes that support SMEs, in order to offer practical guidance and advice to SMEs, whether these are SEP holders or implementers.
Amendment 730 #
Proposal for a regulation
Article 61 – paragraph 2
Article 61 – paragraph 2
2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises on SEP related matters. Such studies may include requiring SEP holders and implementers to provide information regarding licenses entered into, royalties paid or collected, and products sold for IoT applications, and the competence center may provide estimates of licensing costs for such applications to SMEs. 3. The competence center shall require each SEP Holder with a Registered SEP to report annually: (a) all license agreements concluded with SMEs; (b) all SMEs that sent it unsolicited requests it for an SEP license; and (c) all SMEs to which it specifically directed a request to take an SEP license. The competence center shall publish an annual report on SME SEP Licensing based on such reports. 4. The competence centre shall invite SEP Holders with a Registered SEP to identify an employee to the competence center, known as an “SME Ambassador,” to whom the competence center may direct inquiries under paragraph (1), paragraph (2), or paragraph (3). SEP Holders may identify an SME Ambassador on a voluntary basis.
Amendment 732 #
Proposal for a regulation
Article 61 – paragraph 3 a (new)
Article 61 – paragraph 3 a (new)
3a. The EUIPO shall ensure that this function is sufficiently funded and resourced.
Amendment 733 #
Proposal for a regulation
Article 61 a (new)
Article 61 a (new)
Article 61a Safe harbors and ADR for micro, small and medium-sized enterprises 1. The competence centre shall seek to sign an agreement with the World Intellectual Property Organization (WIPO) to promote the use of the WIPO Arbitration and Mediation Centre for SEP disputes involving SMEs in the EU and to exchange information. 2. The competence center shall offer SMEs the opportunity to register their willingness to engage in mediation under the WIPO rules for SEP-related disputes. If an SME has registered such willingness and has not revoked it, then an SEP Holder shall not commence an action to enforce an SEP against such SME in a national court without first initiating mediation proceedings under the WIPO rules. 3. The competence center shall offer SMEs the opportunity to make an irrevocable commitment to accept a license on FRAND terms and conditions from any SEP holder that has registered an SEP. A SEP holder that is the beneficiary of such a commitment may not initiate any action seeking an injunction in any court of a member state for an SEP covered by such commitment after such commitment is made. 4. The registration or willingness to mediate and commitment to accept FRAND terms in Paragraph (2) and Paragraph (3) are purely voluntary and no adverse inference may be drawn by any court of a member state arising from a failure to register or make a commitment under those paragraphs.
Amendment 741 #
Proposal for a regulation
Article 63 – paragraph 2 – point a
Article 63 – paragraph 2 – point a
Amendment 742 #
Proposal for a regulation
Article 63 – paragraph 2 – point b
Article 63 – paragraph 2 – point b
Amendment 746 #
Proposal for a regulation
Article 63 – paragraph 3 – point a
Article 63 – paragraph 3 – point a
Amendment 748 #
Proposal for a regulation
Article 63 – paragraph 3 – point b
Article 63 – paragraph 3 – point b
Amendment 753 #
Proposal for a regulation
Article 64 – paragraph 2
Article 64 – paragraph 2
2. If the amounts requested are not paid in full within 10 days after the date of the request, the competence centre may notify the defaulting party and give it the opportunity to make the required payment within [5] days. It shall submit a copy of the request to the other party, in case of an aggregate royalty or FRAND determination.
Amendment 757 #
Proposal for a regulation
Article 66
Article 66
Amendment 762 #
Proposal for a regulation
Article 66 b (new)
Article 66 b (new)
Article66b Delegated act procedure to bring standard and use cases within the scope of the Regulation Where and when the functioning of the internal market is severely distorted due to inefficiencies in the licensing of SEPs, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, determine which standards published after the coming into effect of this Regulation, parts thereof or relevant use cases shall be brought within the scope of the Regulation.