23 Amendments of Lara COMI related to 2023/0133(COD)
Amendment 82 #
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, certainthe 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 within the single market.
Amendment 95 #
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 and start-ups, the competence centre should offer assistance to SMEsthem. 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 119 #
Proposal for a regulation
Recital 27
Recital 27
(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 voluntarily 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.
Amendment 129 #
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, tThe 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 135 #
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, 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 and start-ups, 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 140 #
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 162 #
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
Article 1 – paragraph 2 – introductory part
2. TIn accordance with article 66, this Regulation shall apply to patents that are in force in one or more Member States and 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 169 #
Proposal for a regulation
Article 1 – paragraph 2 – point a
Article 1 – paragraph 2 – point a
(a) aftwhere the entry into force of this Regre is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do give rise to significant difficulation, with the exceptions provided in paragraph 3;es or inefficiencies affecting the functioning of the internal market, and
Amendment 176 #
Proposal for a regulation
Article 1 – paragraph 2 – point b
Article 1 – paragraph 2 – point b
(b) before the entry into force of this Regthe Commission has, after an appropriate consultation, in accordance with Article 66 process, by means of a delegated act pursuant to Article 67, established a list of such use cases, standards or parts thereof.
Amendment 207 #
Proposal for a regulation
Article 3 – paragraph 2 – point h
Article 3 – paragraph 2 – point h
(h) provide training, support and general advice on SEPs to SMEs and start- ups;
Amendment 210 #
Proposal for a regulation
Article 4 – paragraph 3 – point i
Article 4 – paragraph 3 – point i
(i) the existence of any public standard terms and conditions for SEP licensing to SMEs and start-ups;
Amendment 216 #
Proposal for a regulation
Article 5 – paragraph 2 – point c
Article 5 – paragraph 2 – point c
(c) public standard terms and conditions for SEP licensing to SMEs and start-ups pursuant to Article 62(1), if available;
Amendment 267 #
Proposal for a regulation
Article 18 – paragraph 6
Article 18 – paragraph 6
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 and start-ups, 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.
Amendment 288 #
Proposal for a regulation
Article 24 – paragraph 2
Article 24 – paragraph 2
Amendment 290 #
Proposal for a regulation
Article 24 – paragraph 3
Article 24 – paragraph 3
Amendment 291 #
Proposal for a regulation
Article 24 – paragraph 4
Article 24 – paragraph 4
Amendment 346 #
Proposal for a regulation
Article 38 – paragraph 3 – introductory part
Article 38 – paragraph 3 – introductory part
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:
Amendment 357 #
Proposal for a regulation
Article 38 – paragraph 3 a (new)
Article 38 – paragraph 3 a (new)
3 a. Where the responding party informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome the competence centre shall terminate the FRAND determination.
Amendment 376 #
Proposal for a regulation
Article 38 – paragraph 5
Article 38 – paragraph 5
Amendment 382 #
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. SME, as set out in paragraph (3). SMEs and start-ups that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination.
Amendment 394 #
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 438 #
Proposal for a regulation
Article 56 – paragraph 4
Article 56 – paragraph 4
Amendment 491 #
Proposal for a regulation
Article 70 – paragraph 1 a (new)
Article 70 – paragraph 1 a (new)
1 a. By [OJ: please insert the date = 3 years from entry into force of this regulation] the Commission shall evaluate the impact that the essentiality check system and the FRAND determination system on the competitiveness of the Union SEP holders on a global level and on innovation in the Union.