2023/0133(COD) | [ParlTrack]

Proposal for a regulation
Recital 16

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

Amendment 101 #

Proposal for a regulation
Recital 16

Amendment 102 #

Proposal for a regulation
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 103 #

Proposal for a regulation
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 104 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 18

Amendment 105 #

Proposal for a regulation
Recital 18

Amendment 106 #

Proposal for a regulation
Recital 20

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

Amendment 107 #

Proposal for a regulation
Recital 20

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

Amendment 108 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 20

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

Amendment 109 #

Proposal for a regulation
Recital 20

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

Amendment 110 #

Proposal for a regulation
Recital 20 a (new)

(20 a) SEP holders are obliged to licence under FRAND terms and conditions and shall therefore not discriminate by refusing a licence to a licensee willing to accept the conditions of a FRAND licence, independent from the position of the potential licensee in the respective value chain.

Amendment 111 #

Proposal for a regulation
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. A record of any modifications to the SEP register should be made publicly available to maintain transparency.

Amendment 112 #

Proposal for a regulation
Recital 23

Amendment 113 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 23

Amendment 114 #

Proposal for a regulation
Recital 24

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

Amendment 115 #

Proposal for a regulation
Recital 24

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

Amendment 116 #

Proposal for a regulation
Recital 25

(25) These essentiality checks should be conducted on a sampling from SEP portfolios to ensure that the sample is capable of producing statistically valid results. The results of the sampled essentiality checks should determine the ratio of positively checked SEPs from all the SEPs registered by each SEP holder. ~~The essentiality rate should be updated annually.~~

Amendment 117 #

Proposal for a regulation
Recital 26

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

Amendment 118 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 26

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

Amendment 119 #

Proposal for a regulation
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 120 #

Proposal for a regulation
Recital 30

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

Amendment 121 #

Proposal for a regulation
Recital 31

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

Amendment 122 #

Proposal for a regulation
Recital 32

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

Amendment 123 #

Proposal for a regulation
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.deleted

Amendment 124 #

Proposal for a regulation
Recital 33

Amendment 125 #

Proposal for a regulation
Recital 33

Amendment 126 #

Proposal for a regulation
Recital 33

(33) ~~The~~In case one or more parties initiate a FRAND determination, that 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 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 before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion.

Amendment 128 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 ~~before~~and 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 129 #

Proposal for a regulation
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 ~~before~~and 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 130 #

Proposal for a regulation
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 before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that ~~commit to complying with the outcome of the FRAND determination and~~ duly engage in the procedure should be able to benefit from its completion.

Amendment 131 #

Proposal for a regulation
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, eNo FRAND determination process should prevents access to the courts. 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 132 #

Proposal for a regulation
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 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 and microenterprises, 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 134 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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, 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 135 #

Proposal for a regulation
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 136 #

Proposal for a regulation
Recital 36

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

Amendment 137 #

Proposal for a regulation
Recital 36

(36) When the parties enter into the FRAND determination, they should select a conciliator for the FRAND determination from the roster. In case of disagreement, the competence centre would select the conciliator. The FRAND determination should be concluded within 96 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination.

Amendment 138 #

Proposal for a regulation
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 139 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 37

Amendment 140 #

Proposal for a regulation
Recital 37

Amendment 141 #

Proposal for a regulation
Recital 39

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

Amendment 142 #

Proposal for a regulation
Recital 40

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

Amendment 143 #

Proposal for a regulation
Recital 42

(42) The Regulation respects the intellectual property rights of patent owners (Article 17(2) of EU Charter of Fundamental Rights), although it includes a restriction on the ability to enforce a SEP that has not been registered within a certain time-limit and introduces a requirement to conduct a FRAND determination before enforcing individual SEPs. The limitation on the exercise of intellectual property rights is allowed under the EU Charter, provided that the proportionality principle is respected. According to settled case-law, fundamental rights can be restricted provided that those restrictions correspond to objectives of general interest pursued by the Union and do not constitute, with regard to the aim pursued, a disproportionate and intolerable interference which infringes the very essence of the rights guaranteed39 . In that respect, this Regulation is in the public interest in that it provides a uniform, open and predictable information and outcome on SEPs for the benefit of SEP holder, implementers and end users, at Union level. It aims at dissemination of technology for the mutual advantage of the SEP holders and implementers. Furthermore, the rules concerning the FRAND determination are temporary thus limited and aimed at improving and streamlining the process but are not ultimately binding.40 __________________ 39 Judgment of the Court of Justice of 13 December 1979, Hauer v. Land Rheinland-Pfalz, C-44/79, EU:C:1979:290, para. 32; judgment of the Court of Justice of 11 July 1989, Hermann Schräder HS Kraftfutter GmbH & Co. KG v. Hauptzollamt Gronau, C- 256/87, EU:C:1999:332, para. 15, and judgment of the Court of Justice of 13 July 1989, Hubert Wachauf v. Bundesamt für Ernährung und Forstwirtschaft, C- 5/88, EU:C:1989:321, paras. 17 and 18. 40 The conciliation procedure follows the conditions for mandatory recourse to alternative dispute settlement procedures as a condition for the admissibility of an action before the courts, as outlined in the CJEU judgments; Joint Cases C-317/08 to C-320/08 Alassini and Others of 18 March 2010, and Case C-75/16 Menini and Rampanelli v. Banco Popolare Società Cooperativa of 14 June 2017, taking into account the specificities of SEP licensing.deleted

Amendment 144 #

Proposal for a regulation
Recital 42

Amendment 145 #

Proposal for a regulation
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 royalty~~FRAND 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 146 #

Proposal for a regulation
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 royalty~~FRAND 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 147 #

Proposal for a regulation
Recital 45 a (new)

(45 a) In addition, it is important to ensure that the new EU rules and their implementation do not undermine the EU innovation technological leadership.

Amendment 148 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
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, t~~The efficiencies produced with this Regulation ~~are likely t~~should also facilitate the licensing ~~of their SEP~~for 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 149 #

Proposal for a regulation
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, the efficiencies produced with this Regulation are likely to facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings. The SEPs of start-ups and 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 and start-up implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties.

Amendment 150 #

Proposal for a regulation
Recital 47

(47) In order to ~~supplement certain non-essential elements~~correctly 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 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 47

Amendment 152 #

Proposal for a regulation
Recital 47

(47) In order to supplement certain non- essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant ~~existing~~ standards or to identify use cases of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. __________________ 44 OJ L 123, 12.5.2016, p. 1.

Amendment 153 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
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. Evaluators and conciliators should be, at all times, of good repute and possess sufficient knowledge, skills and experience to performer their duties. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services 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 154 #

Proposal for a regulation
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 155 #

Proposal for a regulation
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 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 157 #

Proposal for a regulation
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 158 #

Proposal for a regulation
Recital 49

Amendment 159 #

Proposal for a regulation
Recital 49

Amendment 160 #

Proposal for a regulation
Recital 52 a (new)

(52 a) As a member of the World Trade Organisation (WTO), the Union is committed to promoting a rules-based, open, multilateral trading system under the WTO. Any measures introduced by the Union that affect trade must be WTO compliant. Further, all measures introduced by the Union that affect trade must take into account the possible response of the Union’s trade partners and ensure that the enforcement of the measure is not perceived as a unilateral protectionist measure. Any potential threat towards TRIPS must be taken into account before the application of this legislation.

Amendment 161 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 1 – paragraph 2 – introductory part

2. 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, after the entry into force of this Regulation, in accordance with article 66.

Amendment 162 #

Proposal for a regulation
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 163 #

Proposal for a regulation
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 164 #

Proposal for a regulation
Article 1 – paragraph 2 – introductory part

2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the current SEP holder or a former 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 165 #

Proposal for a regulation
Article 1 – paragraph 2 – introductory part

2. This Regulation shall apply to patents that are in force in one or more Member States and have been declared 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 166 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 167 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 168 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 169 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

(a) ~~aft~~where the ~~entry into force of this Reg~~re 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 difficulati~~on, with the exceptions provided in paragraph 3;~~es or inefficiencies affecting the functioning of the internal market, and

Amendment 170 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 171 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 172 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 173 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 174 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 175 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 176 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

(b) ~~before the entry into force of this Reg~~the 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 177 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 1 – paragraph 3

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

Amendment 178 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 1 – paragraph 3

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

Amendment 179 #

Proposal for a regulation
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 of such use cases, standards or parts thereof, for the purposes of paragraph 3.deleted

Amendment 180 #

Proposal for a regulation
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 and have never given rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. The Commission shall review and, where necessary, update the list at least once a year.

Amendment 181 #

Proposal for a regulation
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 of~~bring such use cases, standards or parts thereof, ~~for the purposes of paragraph 3~~within the scope of the Regulation.

Amendment 182 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 1 – paragraph 4

Amendment 183 #

Proposal for a regulation
Article 1 – paragraph 7

~~7. This Regulation is without prejudice to the application of Articles 101 and 102 TFEU or to the application of corresponding national competition law rules.~~deleted

Amendment 184 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 2 – paragraph 1 – point 1

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

Amendment 185 #

Proposal for a regulation
Article 2 – paragraph 1 – point 1

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

Amendment 186 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 ~~complies~~fully with a standard, including options therein, without infringing the patent under the current state of the art and normal technical practice;

Amendment 187 #

Proposal for a regulation
Article 2 – paragraph 1 – point 5

(5) ‘standard development organisation’ or ‘SDO’ means any standardising body that is not a private industrial association developing proprietary technical specifications, that develops technical or quality requirements or recommendations for products, production processes, services or methods;

Amendment 188 #

Proposal for a regulation
Article 2 – paragraph 1 – point 7

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

Amendment 189 #

Proposal for a regulation
Article 2 – paragraph 1 – point 10

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

Amendment 190 #

Proposal for a regulation
Article 2 – paragraph 1 – point 10

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

Amendment 191 #

Proposal for a regulation
Article 2 – paragraph 1 – point 10

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

Amendment 192 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 2 – paragraph 1 – point 11

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

Amendment 193 #

Proposal for a regulation
Article 2 – paragraph 1 – point 11

(11) ‘patent pool’ means an entity created by an agreement between two or more SEP holders to license one or more of their patents to one another or to third parties, through a single transaction and on an ongoing basis;

Amendment 194 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 2 – paragraph 1 – point 11

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

Amendment 195 #

Proposal for a regulation
Article 2 – paragraph 1 – point 11 a (new)

(11 a) ‘patent assertion entities or ‘PEA’ or ‘patent troll’ means an entity characterised by an “obtain and assert” business model, with the purpose of generating revenues through licensing fees, royalties and damage compensations;

Amendment 196 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 2 – paragraph 1 – point 11 b (new)

(11 b) ‘non-practicing entities’ or ‘NPEs’ means any entity that owns patents (either through acquisition, in-house development, or both) but does not practice them;

Amendment 197 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)

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

Amendment 198 #

Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)

(18 a) ‘significant difficulties or inefficiencies’ means material impediments to the normal operation of the internal market.

Amendment 199 #

Proposal for a regulation
Article 2 a (new)

Article2a Obligation to license on FRAND terms and conditions Holders of patents essential to a standard within the scope of this Regulation pursuant to Article 1(2) shall not refuse a licence to any party willing to accept a licence based FRAND terms and conditions.

Amendment 200 #

Proposal for a regulation
Article 3 – paragraph 2 – point a

(a) set up and maintain an electronic register and an electronic database for SEPs, complying with the General Data Protection Regulation ;

Amendment 201 #

Proposal for a regulation
Article 3 – paragraph 2 – point c

Amendment 202 #

Proposal for a regulation
Article 3 – paragraph 2 – point f

~~(f) administer a process for aggregate royalty determination;~~deleted

Amendment 203 #

Proposal for a regulation
Article 3 – paragraph 2 – point f

~~(f) administer a process for aggregate royalty determination;~~deleted

Amendment 204 #

Proposal for a regulation
Article 3 – paragraph 2 – point f

~~(f) administer a process for aggregate royalty determination;~~deleted

Amendment 205 #

Proposal for a regulation
Article 3 – paragraph 2 – point f

(f) administer a process for facilitating agreements on aggregate royalty determination;

Amendment 206 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 3 – paragraph 2 – point h

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

Amendment 207 #

Proposal for a regulation
Article 3 – paragraph 2 – point h

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

Amendment 208 #

Proposal for a regulation
Article 3 a (new)

Article 3a The competence centre shall be set up 24 months before the application of this Regulation. The competence centre shall be equipped with the right expertise and resources and coordinated with both regional and global IP organisations, such as the European Patent Organisation and the World Intellectual Property Organisation.

Amendment 209 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 4 – paragraph 3 – point c

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

Amendment 210 #

Proposal for a regulation
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 211 #

Proposal for a regulation
Article 4 – paragraph 4 – point c

(c) any information on ~~whether~~ an essentiality check or peer evaluation ~~have been performed and reference to~~performed before the registration and the result of the res~~ult~~sentiality check;

Amendment 212 #

Proposal for a regulation
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 213 #

Proposal for a regulation
Article 5 – paragraph 1

1. The competence centre shall establish and maintain an electronic database for SEPs, complying with the General Data Protection Regulation.

Amendment 214 #

Proposal for a regulation
Article 5 – paragraph 2 – point b

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

Amendment 215 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 5 – paragraph 2 – point c

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

Amendment 216 #

Proposal for a regulation
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 217 #

Proposal for a regulation
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 218 #

Proposal for a regulation
Article 5 – paragraph 2 – point g

~~(g) information on aggregate royalties pursuant to Articles 15, 16 and 17;~~deleted

Amendment 219 #

Proposal for a regulation
Article 5 – paragraph 2 – point h

~~(h) expert opinions referred to in Article 18;~~deleted

Amendment 220 #

Proposal for a regulation
Article 5 – paragraph 2 – point k

(k) the date and the grounds for removal of the SEP from the database pursuant to Article 25, and a record of all relevant information on the removed SEP;

Amendment 221 #

Proposal for a regulation
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 222 #

Proposal for a regulation
Article 6 – paragraph 1

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

Amendment 223 #

Proposal for a regulation
Article 7 – paragraph 1 – introductory part

A SEP ~~hold~~implementer shall provide to the competence centre the following information:

Amendment 224 #

Proposal for a regulation
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 holder~~implementer of a SEP.

Amendment 225 #

Proposal for a regulation
Article 7 – paragraph 1 – point b

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

Amendment 226 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 227 #

Proposal for a regulation
Article 8 – paragraph 1 – point b

Amendment 228 #

Proposal for a regulation
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

~~Patent pools shall publish on their websites at least the following information and inform the competence centre thereof: (a) licensing; (b) shareholder~~Article 9 deleted Information to be provided by patent pools standards subject to collective the administrative entity’s process for ~~ownership structure; (c) (d) residence in the Union; (e) SEPs being licensed; (f) standard; (g) processes that may be licensed through the pate~~evaluating SEPs; roster of evaluators having list of evaluated SEPs and list of illustrative cross-references to the list of products, services and royalties and discount pool ~~or the entity; (h) product category; (i) product category; (j) category; (k) category.~~icy per standard licence agreement per list of licensors in each product list of licensees for each product

Amendment 230 #

Proposal for a regulation
Article 9 – paragraph 1 – point h

(h) royalties, including, if applicable, aggregate royalty retained and detailed calculation per SEP owner in the pool, and discount policy per product category;

Amendment 231 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 9 – paragraph 1 a (new)

The competence centre shall verify and report on the accuracy of the information published by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a publicly available methodology ensuring thorough, transparent and consistent verification.

Amendment 232 #

Proposal for a regulation
Article 9 – paragraph 1 a (new)

By way of derogation from paragraph 1, patent polls, in case of confidentiality agreements and confidential procedures, shall provide the protected information directly to the competence centre.

Amendment 233 #

Proposal for a regulation
Article 10 – paragraph 1 – introductory part

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

Amendment 234 #

Proposal for a regulation
Article 10 – paragraph 2

2. Any person may inform the competence centre about any judicial proceeding ~~or alternative dispute resolution proceeding concerning a SEP~~.

Amendment 235 #

Proposal for a regulation
Article 11

~~Information on FRAND determinations~~Article 1.1 d~~ispute resolution proceedings concerning SEPs in force in a Member State shall disclos~~eleted Persons involved in alternative tNo the competence centre within 6 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined. 2. be disclosed by the competence centre without the prior consent of the affected party.confidential information shall

Amendment 236 #

Proposal for a regulation
Article 11 – paragraph 1

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

Amendment 237 #

Proposal for a regulation
Article 11 – paragraph 1

1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 64 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined.

Amendment 238 #

Proposal for a regulation
Article 11 – paragraph 2

~~2. No confidential information shall be disclosed by the competence centre without the prior consent of the affected party.~~deleted

Amendment 239 #

Proposal for a regulation
Article 13 – paragraph 2 – point c a (new)

(c a) informing the public and any interested parties of the existence of standards, with easily accessible research tools;

Amendment 240 #

Proposal for a regulation
Article 13 – paragraph 3

3. The competence centre shall include in the database case-law from competent courts of Member States, and from third country jurisdictions ~~and alternative dispute resolution bodies~~.

Amendment 241 #

Proposal for a regulation
Article 13 – paragraph 4

4. The competence centre shall collect all information on FRAND terms and conditions, including any discounts, which have been made public by SEP holders, ~~disclosed to it pursuant to Article 11~~ and included in the FRAND determination reports and shall make such disclosures accessible to public authorities in the Union, including competent courts of Member States, subject to a written request. Confidential documents shall be accompanied by a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence.

Amendment 242 #

Proposal for a regulation
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

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 244 #

Proposal for a regulation
Article 14 – paragraph 1 – point d

~~(d) implementations of the standard known to the SEP holders making the notification.~~deleted

Amendment 245 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 14 – paragraph 2

2. Such notification shall be made within ~~30 day~~6 months of the publication of the latest technical specification.

Amendment 246 #

Proposal for a regulation
Article 14 – paragraph 5

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

Amendment 247 #

Proposal for a regulation
Article 15

Notification of an aggregate royalty to the 1. more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. 2. The notification made in accordance with paragraph (1) shall contain the information on the following: (a) the commercial name of the standard; (b) that define the standard; (c) the names of the SEP holders making the notification referred to in paragraph (1); (d) the estimated percentage the SEP holders referred to in paragraph (1) represent from all SEP holders; (e) they own collectively from all SEPs for the standard; (f) the implementations known to the SEP holders referred to in point (c); (g) the global aggregate royalty, unless the notifying parties specify that the aggregate royalty is not global; (h) royalty referred to in paragraph (1) is valid. 3. The notification referred to in paragraph (1) shall be made at the latest 120 days after: (a) the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or (b) a new implementation of the standard becomes known to them. 4. The competence centre shall publish in the database the information provided under paragraph (2).Article 15 deleted competence centre Holders of SEPs in force in one or the list of technical specifications the estimated percentage of SEPs any period for which the aggregate the publication of a standard by

Amendment 248 #

Proposal for a regulation
Article 15

Notification of an aggregate royalty to the 1. more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. 2. accordance with paragraph (1) shall contain the information on the following: (a) standard; (b) that define the standard; (c) making the notification referred to in paragraph (1); (d) holders referred to in paragraph (1) represent from all SEP holders; (e) they own collectively from all SEPs for the standard; (f) the implementations known to the SEP holders referred to in point (c); (g) the global aggregate royalty, unless the notifying parties specify that the aggregate royalty is not global; (h) royalty referred to in paragraph (1) is valid. 3. The notification referred to in paragraph (1) shall be made at the latest 120 days after: (a) the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or (b) a new implementation of the standard becomes known to them. 4. The competence centre shall publish in the database the information provided under paragraph (2).Article 15 deleted competence centre Holders of SEPs in force in one or The notification made in the commercial name of the the list of technical specifications the names of the SEP holders the estimated percentage the SEP the estimated percentage of SEPs any period for which the aggregate the publication of a standard by

Amendment 249 #

Proposal for a regulation
Article 15

Notification of an aggregate royalty to the 1. more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. 2. accordance with paragraph (1) shall contain the information on the following: (a) standard; (b) that define the standard; (c) making the notification referred to in paragraph (1); (d) holders referred to in paragraph (1) represent from all SEP holders; (e) they own collectively from all SEPs forArticle 15 deleted competence centre Holders of SEPs in force in one or The notification made in the commercial name of the the list of technical specifications the names of the SEP holders the estimated percentage the SEP the est~~andard; (f) SEP holders referred to in point (c); (g) unless the notifying parties specify~~imated percentage of SEPs the implementations known to thate the global aggregate royalty is not global; (h) royalty referred to in paragraph (1) is valid. 3. paragraph (1) shall be made at the latest 120 days after: (a) the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or (b) standard becomes known to them. 4. publish in the database the information provided under paragraph (2)., any period for which the aggregate The notification referred to in the publication of a standard by a new implementation of the The competence centre shall

Amendment 250 #

Proposal for a regulation
Article 15

Notification of an aggregate royalty to the 1. more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. 2. The notification made in accordance with paragraph (1) shall contain the information on the following: (a) the commercial name of the standard; (b) that define the standard; (c) the names of the SEP holders making the notification referred to in paragraph (1); (d) the estimated percentage the SEP holders referred to in paragraph (1) represent from all SEP holders; (e) they own collectively from all SEPs for the standard; (f) the implementations known to the SEP holders referred to in point (c); (g) the global aggregate royalty, unless the notifying parties specify that the aggregate royalty is not global; (h) royalty referred to in paragraph (1) is valid. 3. The notification referred to in paragraph (1) shall be made at the latest 120 days after: (a) the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or (b) standard becomes known to them. 4. publish in the database the information provided under paragraph (2).Article 15 deleted competence centre Holders of SEPs in force in one or the list of technical specifications the estimated percentage of SEPs any period for which the aggregate the publication of a standard by a new implementation of the The competence centre shall

Amendment 251 #

Proposal for a regulation
Article 16

1. aggregate royalty, the SEP holders shall notify the competence centre about the revised aggregate royalty and the reasons for the revision. 2. publish in the database the initial aggregate royalty, the revised aggregate royalty and the reasons for the revision in the register.Article 16 deleted Revision of aggregate royalty In case of revision of the The competence centre shall

Amendment 252 #

Proposal for a regulation
Article 16

Revision of aggregate royalty 1. aggregate royalty, the SEP holders shall notify the competence centre about the revised aggregate royalty and the reasons for the revision. 2. publish in the database the initial aggregate royalty, the revised aggregate royalty and the reasons for the revision in the register.Article 16 deleted In case of revision of the The competence centre shall

Amendment 253 #

Proposal for a regulation
Article 16

Amendment 254 #

Proposal for a regulation
Article 17

Process for facilitating agreements on 1. more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty. 2. later than 90 days following the publication of the standard or no later than 120 days following the first sale of new implementation on the Union market for implementations not known at the time of publication of the standard. 3. following information: (a) standard; (b) technical specification or the date of the firArticle 17 deleted aggregate royalty determinations Holders of SEPs in force in one or Such a request shal~~e of new implementation on the Union market; (c) the implementations known to the SEP holders referred to in paragraph (1); (d) the names and contact details of the SEP holders support~~l be made no The request shall containg the request; (e) the estimated percentage of SEPs they own individually and collectively from all potential SEPs claimed for the standard. 4. the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard. 5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process. 6. conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. 8. notification, the procedure set out in Article 15(1), (2) and (4) shall apply.the commercial name of the the date of publication of the latest The competence centre shall notify SEP holders that submit to the If the contributors agree on a joint

Amendment 255 #

Proposal for a regulation
Article 17

Process for facilitating agreements on 1. more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submissiArticle 17 deleted aggregate royalty determinations Holders of SEPs in force in one o~~f an aggregate royalty. 2. later than 90 days following the publication of the standard or no later than 120 days following the fir~~r Such a request shall be made no The request shal~~e of new implementation on the Union market for implementations not known at~~l contain the the commercial name of the the ~~tim~~date of publication of the standard. 3. following information: (a) standard; (b) technical specification or the date of the first sale of new implementation on the Union market; (c) SEP holders referred to in paragraph (1); (d) the SEP holders supporting the request; (e) they own individually and collectively from all potential SEPs claimed for the standard. 4. the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to providelatest the implementations known to the the names and contact details of their estimated percentage of SEPs from all SEPs for the standard. 5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process. 6. conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. 8. notification, the procedure set out in Article 15(1), (2) and (4) shall apply.The competence centre shall notify SEP holders that submit to the If the contributors agree on a joint

Amendment 256 #

Proposal for a regulation
Article 17

Process for facilitating agreements on aggregate royalty determinations 1. more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty. 2. later than 90 days following the publication of the standard or no later than 120 days following the firArticle 17 deleted Holders of SEPs in force in one or Such a request shall be made no The request shal~~e of new implementation on the Union market for implementations not known at~~l contain the the commercial name of the the ~~tim~~date of publication of the standard. 3. following information: (a) standard; (b) technical specification or the date of the first sale of new implementation on the Union market; (c) SEP holders referred to in paragraph (1); (d) the SEP holders supporting the request; (e) they own individually and collectively from all potential SEPs claimed for the standard. 4. the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to providelatest the implementations known to the the names and contact details of their estimated percentage of SEPs from all SEPs for the standard. 5. appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process. 6. conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. 8. notification, the procedure set out in Article 15(1), (2) and (4) shall apply.The competence centre shall notify The competence centre shall SEP holders that submit to the If the contributors agree on a joint

Amendment 257 #

Proposal for a regulation
Article 17 – paragraph 1

1. Holders of SEPs in force in one or more Member States representing at least 205 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty.

Amendment 258 #

Proposal for a regulation
Article 17 – paragraph 4 a (new)

4 a. The competence centre shall publish a call for expression of interest to invite other holders of SEPs for the standard, current implementers and implementers intending to place products with the standard on the market to participate in the process.

Amendment 259 #

Proposal for a regulation
Article 17 – paragraph 5

5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders and implementers that expressed interest to participate in the process.

Amendment 260 #

Proposal for a regulation
Article 17 – paragraph 6

6. SEP holders and implementers that submit to the conciliator confidential information shall provide a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence.

Amendment 261 #

Proposal for a regulation
Article 18

~~[...]~~deleted

Amendment 262 #

Proposal for a regulation
Article 18

~~[...]~~deleted

Amendment 263 #

Proposal for a regulation
Article 18

~~[...]~~deleted

Amendment 264 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 18

~~[...]~~deleted

Amendment 265 #

Proposal for a regulation
Article 18 – paragraph 3 – point d a (new)

(d a) description of the final product in which it should be implemented.

Amendment 266 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 18 – paragraph 5

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

Amendment 267 #

Proposal for a regulation
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 268 #

Proposal for a regulation
Article 18 – paragraph 6

6. If the requests for participation include SEP holders representing collectively at least an estimated 2015% of all SEPs for the standard, and implementers holding collectively at least 105% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology.

Amendment 269 #

Proposal for a regulation
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~~or implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology.

Amendment 270 #

Proposal for a regulation
Article 18 – paragraph 8 – introductory part

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

Amendment 271 #

Proposal for a regulation
Article 18 – paragraph 8 – point b a (new)

(b a) provide any evidence or observations to assist the panel in determining an opinion on aggregate royalty.

Amendment 272 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 18 – paragraph 11

11. 1The expert opinion shall include the recommended aggregate royalty rate, a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion.

Amendment 273 #

Proposal for a regulation
Article 18 – paragraph 13 a (new)

13 a. The courts of the Member States may request the competence centre for an expert opinion/evidence on an aggregate royalty.

Amendment 274 #

Proposal for a regulation
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:~~publication by the competence centre of the standard and related information referred to in Article 14(7)

Amendment 275 #

Proposal for a regulation
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

~~(a) publication by the competence centre of the standard and r~~delaeted ~~information pursuant to Article 14(7);~~

Amendment 277 #

Proposal for a regulation
Article 19 – paragraph 1 – point b

~~(b) publication by the competence centre of an aggregate royalty and related information pursuant to Article 15(4) and Article 18(11).~~deleted

Amendment 278 #

Proposal for a regulation
Article 22 – paragraph 4

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

Amendment 279 #

Proposal for a regulation
Article 22 – paragraph 4 a (new)

4 a. If the SEP has been suspended from the register pursuant to paragraph 4, the date of registration shall be the date when the incompleteness or inaccuracy has been remedied.

Amendment 280 #

Proposal for a regulation
Article 22 – paragraph 5

5. A SEP holder whose SEP has been suspended from the register pursuant to paragraph (4) and considers that the finding of the competence centre is incorrect may apply before the Boards of Appeal of the EUIPO for a decision on the matter. The application shall be made within 2 months from the suspension. Within 2 months from the application, the Boards of Appeal of the EUIPO shall either reject the application or request the competence centre to correct its finding and inform the requesting person.deleted

Amendment 281 #

Proposal for a regulation
Article 22 – paragraph 5

Amendment 282 #

Proposal for a regulation
Article 23 – paragraph 5

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

Amendment 283 #

Proposal for a regulation
Article 23 – paragraph 6

6. A SEP holder whose SEP has been suspended from the register pursuant to paragraph (5) and considers that the finding of the competence centre is incorrect may apply before the Boards of Appeal of the EUIPO for a decision on the matter. The application shall be made within 2 months from the suspension. Within two months from the application, the Boards of Appeal of the EUIPO shall either reject the application or request the competence centre to correct its finding and inform the requesting person.deleted

Amendment 284 #

Proposal for a regulation
Article 23 – paragraph 6

Amendment 285 #

Proposal for a regulation
Article 24

Effects of absence of registration or suspension of registration of SEPs 1. the time-limit set out in Article 20(3) may not be enforced in relation to the implementation of the standard for which a registration is required in a competent court of a Member State, from the time- limit set out in Article 20(3) until its registration in the register. 2. registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to receive royalties or seek damages for infringement of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register. 3. prejudice to provisions included in contracts setting a royalty for a broad portfolio of patents, present or future, stipulating that the invalidity, non- essentiality or unenforceability of a limited number thereof shall not affect the overall amArticle 24 deleted A SEP that is not registered within A SEP holder that has not Paragraphs (1) and (2) are withount and enforceability of the royalty or other terms and conditions of the contract. 4. in case the registration of a SEP is suspended, during the suspension period pursuant to Article 22(4) or 23(5), except where the Boards of Appeal request the competence centre to correct its findings in accordance with Article 22(5) and 23(6). 5. State requested to decide on any issue related to a SEP in force in one or more Member States, shall verify whether the SEP is registered as part of the decision on admissibility of the action.Paragraphs (1) and (2) apply also A competent court of a Member

Amendment 286 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 24

Amendment 287 #

Proposal for a regulation
Article 24 – paragraph 1

1. A SEP that is not registered within the time-limit set out in Article 20(3) may not be ~~enforced in relation to the implementation of the standard for which a registration is required in a competent court of a Member State,~~licensed or implemented from the time- limit set out in Article 20(3) until its registration in the register, .without prejudice to SEPs licensed before the entry into force of this Regulation.

Amendment 288 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 24 – paragraph 2

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

Amendment 289 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 24 – paragraph 2

2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall ~~not be entitled to receive royalties or seek damages~~have no claim for infringements of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register.

Amendment 290 #

Proposal for a regulation
Article 24 – paragraph 3

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

Amendment 291 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 24 – paragraph 4

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

Amendment 292 #

Proposal for a regulation
Article 25 – paragraph 3

3. The competence centre shall remove the SEP from the register and the database. The competence centre shall maintain and make publicly available information on any SEP that had been removed from the register.

Amendment 293 #

Proposal for a regulation
Article 26 – paragraph 2 – introductory part

2. A conciliator shall ~~conduct the following tasks:~~serve in the FRAND determination.

Amendment 294 #

Proposal for a regulation
Article 26 – paragraph 2 – introductory part

2. A conciliator shall ~~conduct the following tasks~~:

Amendment 295 #

Proposal for a regulation
Article 26 – paragraph 2 – introductory part

2. A conciliator shall ~~conduct the following tasks:~~serve in a FRAND determination.

Amendment 296 #

Proposal for a regulation
Article 26 – paragraph 2 – point a

~~(a) mediate among parties in establishing an aggregate royalty;~~deleted

Amendment 297 #

Proposal for a regulation
Article 26 – paragraph 2 – point a

~~(a) mediate among parties in establishing an aggregate royalty;~~deleted

Amendment 298 #

Proposal for a regulation
Article 26 – paragraph 2 – point a

~~(a) mediate among parties in establishing an aggregate royalty;~~deleted

Amendment 299 #

Proposal for a regulation
Article 26 – paragraph 2 – point b

~~(b) provide a non-binding opinion on an aggregate royalty;~~deleted

Amendment 300 #

Proposal for a regulation
Article 26 – paragraph 2 – point b

~~(b) provide a non-binding opinion on an aggregate royalty;~~deleted

Amendment 301 #

Proposal for a regulation
Article 26 – paragraph 2 – point b

~~(b) provide a non-binding opinion on an aggregate royalty;~~deleted

Amendment 302 #

Proposal for a regulation
Article 26 – paragraph 2 – point c

~~(c) serve in a FRAND determination.~~deleted

Amendment 303 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 26 – paragraph 2 – point c

~~(c) serve in a FRAND determination.~~deleted

Amendment 304 #

Proposal for a regulation
Article 26 – paragraph 4

4. The competence centre shall appoint [10] evaluators from the roster of evaluators as peer evaluators for a period of [three] years, that shall act in anonymity.

Amendment 305 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 306 #

Proposal for a regulation
Article 26 – paragraph 4 a (new)

4 a. The competence centre shall require that evaluators shall at all times be of sufficiently good repute, independent, impartial and possess sufficient knowledge, skills and experience to perform their duties.

Amendment 307 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 26 – paragraph 4 b (new)

4 b. The competence centre shall perform a case-by-case assessment to confirm that the any situation of direct or indirect conflict of interest negatively affect the performance of the evaluator or conciliator.

Amendment 308 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 26 – paragraph 4 c (new)

4 c. The Competence centre shall create a repository of conciliations reports, and ensure that the confidential version would be accessible only to conciliators.

Amendment 309 #

Proposal for a regulation
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 310 #

Proposal for a regulation
Article 26 – paragraph 5 – introductory part

Amendment 311 #

Proposal for a regulation
Article 26 – paragraph 5 – introductory part

Amendment 312 #

Proposal for a regulation
Article 26 – paragraph 5 – point a

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

Amendment 313 #

Proposal for a regulation
Article 26 – paragraph 5 – point a

(a) the requirements for evaluators or conciliators, including a Code of Conduct and necessary qualifications, experience, and criteria for impartiality;

Amendment 314 #

Proposal for a regulation
Article 26 – paragraph 5 – point b

(b) the procedures pursuant to Articles ~~17, 18,~~ 31 and 32 and Title VI.

Amendment 315 #

Proposal for a regulation
Article 26 – paragraph 5 – point b

(b) the procedures pursuant to Articles ~~17, 18,~~ 31 and 32 and Title VI.

Amendment 316 #

Proposal for a regulation
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

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 318 #

Proposal for a regulation
Article 27 – paragraph 1

1. The competence centre shall conduct a transparent procedure of selecting candidates based on the requirements established in the implementing act referred to in Article 26(5).

Amendment 319 #

Proposal for a regulation
Article 27 – paragraph 2

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

Amendment 320 #

Proposal for a regulation
Article 27 – paragraph 3

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

Amendment 321 #

Proposal for a regulation
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 322 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 29 – paragraph 1

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

Amendment 323 #

Proposal for a regulation
Article 29 – paragraph 4

4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to This title or of an essentiality decision or check ~~referred~~ performed, in good-faith, by an independent evaluator in ~~Article 8~~the context of a patent pool, no additional essentiality check shall be done, if verified the criteria foreseen in Article 29 (4a). The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check.

Amendment 324 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 29 – paragraph 4 a (new)

4 a. Patent pools shall transmit to the competence centre all the information about the methodology of the essentiality check and the criteria used for the selection of the evaluators.

Amendment 325 #

Proposal for a regulation
Article 29 – paragraph 5

5. Each SEP holder may voluntarily propose annually up to 100 registered SEPs from different patent families to be checked for essentiality with regard to each specific standard for which SEP registration was made.deleted

Amendment 326 #

Proposal for a regulation
Article 29 – paragraph 6

6. Any implementer may voluntarily propose annually up to 100 registered SEPs from different patent families to be checked for essentiality with regard to each specific standard for which SEP registrations have been made.deleted

Amendment 327 #

Proposal for a regulation
Article 29 – paragraph 6

Amendment 328 #

Proposal for a regulation
Article 31 – paragraph 2

2. The evaluator may invite the SEP holder or implementer concerned to file observations, within a period to be fixed by the evaluator.

Amendment 329 #

Proposal for a regulation
Article 32 – paragraph 6

6. The competence centre shall notify the final reasoned opinion to the SEP holder and all other parties which have provided observations or evidence.

Amendment 330 #

Proposal for a regulation
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 initiated~~may 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)

(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

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 333 #

Proposal for a regulation
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.deleted

Amendment 334 #

Proposal for a regulation
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 335 #

Proposal for a regulation
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 336 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 34 – paragraph 4

Amendment 337 #

Proposal for a regulation
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 338 #

Proposal for a regulation
Article 34 – paragraph 5

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

Amendment 339 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 34 – paragraph 5

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

Amendment 340 #

Proposal for a regulation
Article 36 – paragraph 1 – point f a (new)

(f a) commitment to comply with the outcome of the FRAND determination.

Amendment 341 #

Proposal for a regulation
Article 37

Duration of the FRAND determination 1. parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(5)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. 2. The period for the time barring of claims before a competent court of a Member State shall be suspended for the duration of the FRAND determination.Article 37 deleted Unless otherwise agreed by the

Amendment 342 #

Proposal for a regulation
Article 37 – paragraph 2

~~2. The period for the time barring of claims before a competent court of a Member State shall be suspended for the duration of the FRAND determination.~~deleted

Amendment 343 #

Proposal for a regulation
Article 37 – paragraph 2

~~2. The period for the time barring of claims before a competent court of a Member State shall be suspended for the duration of the FRAND determination.~~deleted

Amendment 344 #

Proposal for a regulation
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 outcom~~, in case of disagreement, include the reasons for declining to participate.

Amendment 345 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 346 #

Proposal for a regulation
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 347 #

Proposal for a regulation
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 348 #

Proposal for a regulation
Article 38 – paragraph 3 – introductory part

Amendment 349 #

Proposal for a regulation
Article 38 – paragraph 3 – point a

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

Amendment 350 #

Proposal for a regulation
Article 38 – paragraph 3 – point a

Amendment 351 #

Proposal for a regulation
Article 38 – paragraph 3 – point a

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

Amendment 352 #

Proposal for a regulation
Article 38 – paragraph 3 – point b

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

Amendment 353 #

Proposal for a regulation
Article 38 – paragraph 3 – point b

Amendment 354 #

Proposal for a regulation
Article 38 – paragraph 3 – point b

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

Amendment 355 #

Proposal for a regulation
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.deleted

Amendment 356 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 357 #

Proposal for a regulation
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 358 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 38 – paragraph 4

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: (a) 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; (b) not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination. (c) requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for by the responding party in relation to the same subject matter; (d) where the responding party fails to request, within the time-limit referred to in subparagraph (b), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination.deleted the competence centre shall notify where the requesting party does where the responding party

Amendment 359 #

Proposal for a regulation
Article 38 – paragraph 4 – introductory part

Amendment 360 #

Proposal for a regulation
Article 38 – paragraph 4 – introductory part

Amendment 361 #

Proposal for a regulation
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 ishall contin~~gent upon the commitment of~~ue and, provided the re~~questing party to comply with~~ is mutual agreement, the outcome of the FRAND determination~~, the following shall apply:~~ may be finding for both parties;

Amendment 362 #

Proposal for a regulation
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;deleted

Amendment 363 #

Proposal for a regulation
Article 38 – paragraph 4 – point a

Amendment 364 #

Proposal for a regulation
Article 38 – paragraph 4 – point a

Amendment 365 #

Proposal for a regulation
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 366 #

Proposal for a regulation
Article 38 – paragraph 4 – point b

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

Amendment 367 #

Proposal for a regulation
Article 38 – paragraph 4 – point b

Amendment 368 #

Proposal for a regulation
Article 38 – paragraph 4 – point b

Amendment 369 #

Proposal for a regulation
Article 38 – paragraph 4 – point b

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

Amendment 370 #

Proposal for a regulation
Article 38 – paragraph 4 – point c

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

Amendment 371 #

Proposal for a regulation
Article 38 – paragraph 4 – point c

Amendment 372 #

Proposal for a regulation
Article 38 – paragraph 4 – point c

Amendment 373 #

Proposal for a regulation
Article 38 – paragraph 4 – point d

(d) where the responding party fails to request, within the time-limit referred to in subparagraph (b), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination.deleted

Amendment 374 #

Proposal for a regulation
Article 38 – paragraph 4 – point d

Amendment 375 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 38 – paragraph 4 a (new)

4 a. Both parties may declare a commitment to comply with the outcome of the FRAND determination at any time during the process. The commitment may be unilateral or contingent upon the other party’s agreement. The commitment shall have no impact on the outcome or continuation of the FRAND determination process.

Amendment 376 #

Proposal for a regulation
Article 38 – paragraph 5

5. Where either party commits to comply with the outcome of the FRAND determination, while the other party fails to do so within the applicable time limits, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time- limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party.deleted

Amendment 377 #

Proposal for a regulation
Article 38 – paragraph 5

Amendment 378 #

Proposal for a regulation
Article 38 – paragraph 5

Amendment 379 #

Proposal for a regulation
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. SMEs that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination.deleted

Amendment 380 #

Proposal for a regulation
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~~. SMEs that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination.

Amendment 381 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 382 #

Proposal for a regulation
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 383 #

Proposal for a regulation
Article 39 – title

Selection of the panel of conciliators

Amendment 384 #

Proposal for a regulation
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 385 #

Proposal for a regulation
Article 39 – paragraph 1

1. Following the ~~reply to~~continuation of 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~~ing and responding parties shall each nominate one conciliator from the roster of conciliators referred to in Article 27(2)~~. The parties or party shall select~~ to the panel of conciliators. Both conciliators shall jointly agree one o~~f the proposed candidates as a~~ne additional conciliator for the FRAND determination.

Amendment 386 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 39 – paragraph 1

Amendment 387 #

Proposal for a regulation
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 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 389 #

Proposal for a regulation
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

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 391 #

Proposal for a regulation
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

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 393 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 44 – paragraph 1

Amendment 394 #

Proposal for a regulation
Article 44 – paragraph 1

Amendment 395 #

Proposal for a regulation
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 396 #

Proposal for a regulation
Article 44 – paragraph 2

2. The conciliator shall decide on the objection and either reject it as unfounded before considering the merits of the case or join it to the examination of the merits of the FRAND determination. If the conciliator overrules the objection or joins it to the examination of the merits of the determination of FRAND terms and conditions, it shall resume consideration of the determination of FRAND terms and conditionsmay invite the parties to meet with him/her or may communicate with him/her orally or in writing.

Amendment 397 #

Proposal for a regulation
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 398 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 399 #

Proposal for a regulation
Article 45 – paragraph 2

2. The conciliator may invite the parties or the party requesting the continuation of the FRAND determination, as set out in Article 38 (3), 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

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 401 #

Proposal for a regulation
Article 45 – paragraph 3

Amendment 402 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 45 – paragraph 3

Amendment 403 #

Proposal for a regulation
Article 45 – paragraph 3

3. The parties or the party requesting the continuation of the FRAND determination, as set out in Article 38 (3), 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

~~4. The responding party may join the FRAND determination at any moment before its termination.~~deleted

Amendment 405 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 45 – paragraph 4

~~4. The responding party may join the FRAND determination at any moment before its termination.~~deleted

Amendment 406 #

Proposal for a regulation
Article 45 – paragraph 4

4. The responding party, that failed to respond within the time limit laid down in Article 38 (2), may join the FRAND determination at any moment before its termination.

Amendment 407 #

Proposal for a regulation
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 408 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 45 – paragraph 5

Amendment 409 #

Proposal for a regulation
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 set out in Article 38 (3), as applicable, the conciliator shall terminate the FRAND determination.

Amendment 410 #

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 411 #

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 412 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 413 #

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 414 #

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 415 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 416 #

Proposal for a regulation
Article 46 – paragraph 2 a (new)

2 a. If a party withdraws its commitment to comply with the outcome of the FRAND determination, the conciliator shall terminate the procedure.

Amendment 417 #

Proposal for a regulation
Article 46 – paragraph 3

3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the conciliator or in any other way fails to comply with a requirement relating to the FRAND determination, the conciliator shall terminate the procedure.deleted

Amendment 418 #

Proposal for a regulation
Article 46 – paragraph 3

Amendment 419 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 46 – paragraph 3

Amendment 420 #

Proposal for a regulation
Article 46 – paragraph 3

3. If the party requesting the continuation of the FRAND determination, as set out in Article 38 (3), fails to comply with any request of the conciliator or in any other way fails to comply with a requirement relating to the FRAND determination, the conciliator shall terminate the procedure.

Amendment 421 #

Proposal for a regulation
Article 47 – paragraph 2

Amendment 422 #

Proposal for a regulation
Article 48 – paragraph 2

2. The panel of conciliators may examine publicly available information and the competence centre’s register and confidential and non-confidential reports of other FRAND determinations, aggregate royalty rates submitted pursuant to Article 15, non-binding expert opinions on aggregate royalty rates established pursuant to Article 18 as well as non- confidential documents and information produced by or submitted to the competence centre.

Amendment 423 #

Proposal for a regulation
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 424 #

Proposal for a regulation
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 425 #

Proposal for a regulation
Article 54 – paragraph 3 a (new)

3 a. A conciliator shall respect the confidentiality rights of third parties, for instance concerning a confidential license from or to either party. The third party shall be notified by the conciliator and afforded a reasonable opportunity to make its representations concerning the protection of its confidential material in the conduct of the FRAND determination and any subsequent report.

Amendment 426 #

Proposal for a regulation
Article 54 – paragraph 3 b (new)

3 b. Where confidentiality provisions are agreed or imposed in a FRAND determination they shall have contractual force, and shall include the right to seek ex parte injunctive relief against disclosure in any relevant court.

Amendment 427 #

Proposal for a regulation
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 428 #

Proposal for a regulation
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 429 #

Proposal for a regulation
Article 55 – paragraph 1

Amendment 430 #

Proposal for a regulation
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 431 #

Proposal for a regulation
Article 55 – paragraph 2

Amendment 432 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 55 – paragraph 2

Amendment 433 #

Proposal for a regulation
Article 56 – paragraph 1 – introductory part

1. In addition to the termination of the FRAND determination for reasons provided for Article 38(43), Article 38 (3a), Article 44(3), Article 45(5), 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 434 #

Proposal for a regulation
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 435 #

Proposal for a regulation
Article 56 – paragraph 1 – introductory part

Amendment 436 #

Proposal for a regulation
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 437 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 56 – paragraph 4

4. 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).deleted

Amendment 439 #

Proposal for a regulation
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 56 – paragraph 4

Amendment 441 #

Proposal for a regulation
Article 56 – paragraph 4

4. 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)~~.

Amendment 442 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 56 – paragraph 5

~~5. In the cases foreseen in Article 38(3)(b) and in Article 38(4)(c), Article 34(5) shall apply mutatis mutandis in the proceedings before a competent court of a Member State.~~deleted

Amendment 443 #

Proposal for a regulation
Article 56 – paragraph 5

~~5. In the cases foreseen in Article 38(3)(b) and in Article 38(4)(c), Article 34(5) shall apply mutatis mutandis in the proceedings before a competent court of a Member State.~~deleted

Amendment 444 #

Proposal for a regulation
Article 56 – paragraph 5

~~5. In the cases foreseen in Article 38(3)(b) and in Article 38(4)(c), Article 34(5) shall apply mutatis mutandis in the proceedings before a competent court of a Member State.~~deleted

Amendment 445 #

Proposal for a regulation
Article 60 – paragraph 1 a (new)

1 a. The period specified in days ends on the last day, a period marked in weeks ends at the end of the day in the last week, a period specified in months ends on the expiry of the day corresponding to the initial day of the period, and if there was no such day in the last month - then on the last day of that month, a period marked in years ends on the expiry of the day corresponding to the initial day of a given period, and if there was no such day, the end date will be the last day of that month.

Amendment 446 #

Proposal for a regulation
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 447 #

Proposal for a regulation
Article 61 – paragraph 1

1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises free of charge, whether they are SEP holders or implementers. The competence centre will, on a regular basis, proactively seek input from micro, small and medium-size enterprises on what training and support would be most helpful.

Amendment 448 #

Proposal for a regulation
Article 61 – paragraph 2

Amendment 449 #

Proposal for a regulation
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)

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 451 #

Proposal for a regulation
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. The competence centre will, on a regular basis, proactively seek the input of micro, small and medium-size enterprises to inform its own decisions on which studies would be most helpful.

Amendment 452 #

Proposal for a regulation
Article 61 – paragraph 3 a (new)

3 a. This Article shall not apply to patent assertion entities irrespective of their status as a micro, small or medium- sized enterprise.

Amendment 453 #

Proposal for a regulation
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 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 455 #

Proposal for a regulation
Article 61 a (new)

Article 61a Safe harbour for micro, small and medium-size enterprises 1. The competence centre shall offer micro, small and medium-size enterprises in the EU the opportunity to register their willingness to engage in mediation under the World Intellectual Property Organisation (WIPO) Arbitration and Mediation system for SEP-related disputes involving SMEs. SEP holders shall not initiate any legal action to enforce a SEP against micro, small and medium-sized enterprises in the EU having registered their willingness to engage in such mediation system. 2.The competence centre shall offer the possibility to micro, small and medium- size enterprises in the EU to make an commitment to accept a licence on FRAND terms and conditions from any SEP holder with a registered SEP. In such case, the relevant SEP holder may not initiate any legal action seeking an injunction if a Member State court.

Amendment 456 #

Proposal for a regulation
Article 62 – paragraph 1

1. When negotiating a SEP licence with micro, small and medium-sized enterprises, SEP holders shall ~~consider~~ offer~~ing~~ to them FRAND terms and conditions that are more favourable than the FRAND terms and conditions they offer to enterprises that are not micro, small and medium-sized for the same standard and implementations.

Amendment 457 #

Proposal for a regulation
Article 62 – paragraph 3

3. SEP holders shall also consider discounts, spreading payments into interest-free instalments or royalty-free licensing for low sales volumes irrespective of the size of the implementer taking the licence. Such discounts or royalty-free licensing shall be fair, reasonable and non-discriminatory and shall be available in the electronic database as set out in Article 5(2), point (b).

Amendment 458 #

Proposal for a regulation
Article 63 – paragraph 2 – point a

~~(a) for the conciliators facilitating agreements on aggregate royalty determinations in accordance with Article 17;~~deleted

Amendment 459 #

Proposal for a regulation
Article 63 – paragraph 2 – point a

~~(a) for the conciliators facilitating agreements on aggregate royalty determinations in accordance with Article 17;~~deleted

Amendment 460 #

Proposal for a regulation
Article 63 – paragraph 2 – point b

~~(b) for the expert opinion on aggregate royalty in accordance with Article 18;~~deleted

Amendment 461 #

Proposal for a regulation
Article 63 – paragraph 2 – point b

~~(b) for the expert opinion on aggregate royalty in accordance with Article 18;~~deleted

Amendment 462 #

Proposal for a regulation
Article 63 – paragraph 2 – point b

~~(b) for the expert opinion on aggregate royalty in accordance with Article 18;~~deleted

Amendment 463 #

Proposal for a regulation
Article 63 – paragraph 3 – point a

~~(a) the fees referred to in paragraph (2), point (a) by the SEP holders that participated in the process based on their estimated percentage of SEPs from all SEPs for the standard;~~deleted

Amendment 464 #

Proposal for a regulation
Article 63 – paragraph 3 – point a

~~(a) the fees referred to in paragraph (2), point (a) by the SEP holders that participated in the process based on their estimated percentage of SEPs from all SEPs for the standard;~~deleted

Amendment 465 #

Proposal for a regulation
Article 63 – paragraph 3 – point a

~~(a) the fees referred to in paragraph (2), point (a) by the SEP holders that participated in the process based on their estimated percentage of SEPs from all SEPs for the standard;~~deleted

Amendment 466 #

Proposal for a regulation
Article 63 – paragraph 3 – point b

(b) the fees referred to in paragraph (2), point (b) equally by the parties that participated in the procedure of the expert opinion on aggregate royalty, unless they agree otherwise, or the panel suggests a different apportionment based on the size of the parties determined on the basis of their turnover;deleted

Amendment 467 #

Proposal for a regulation
Article 63 – paragraph 3 – point b

Amendment 468 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 63 – paragraph 3 – point b

Amendment 469 #

Proposal for a regulation
Article 63 – paragraph 3 – point b

(b) the fees referred to in paragraph (2), point (b) ~~equally~~ by the part~~ies~~y that ~~participated in~~requested the procedure of the expert opinion on aggregate royalty~~, unless they agree otherwise, or the panel suggests a different apportionment based on the size of the parties determined on the basis of their turnover~~;

Amendment 470 #

Proposal for a regulation
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 471 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 64 – paragraph 2

Amendment 472 #

Proposal for a regulation
Article 64 – paragraph 2

Amendment 473 #

Proposal for a regulation
Article 64 – paragraph 2

Amendment 474 #

Proposal for a regulation
Article 66

Opening registration for an existing 1. 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 2. 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 3. 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. 4. 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. 5. This article shall apply without prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].Article 66 deleted standard Until [OJ: please insert the date = Until [OJ: please insert the date = Until [OJ: please insert the date = Where the functioning of the

Amendment 475 #

Proposal for a regulation
Article 66

Opening registration for an existing 1. 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in theArticle 66 delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 2. 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 3. 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. 4. 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. 5. prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].standard Until [OJ: please insert the date = Until [OJ: please insert the date = Until [OJ: please insert the date = Where the functioning of the This article shall apply without

Amendment 476 #

Proposal for a regulation
Article 66

Opening registration for an existing 1. 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in theArticle 66 delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 3. 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts therestandard Until [OJ: please insert the date = Until [OJ: please insert the date = Where the functioning of, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. 4. 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. 5. prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].e This article shall apply without

Amendment 477 #

Proposal for a regulation
Article 66

Opening registration for an existing 1. 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in theArticle 66 delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 3. 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts therestandard Until [OJ: please insert the date = Until [OJ: please insert the date = Where the functioning of, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. 4. 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. 5. prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].e This article shall apply without

Amendment 478 #

Proposal for a regulation
Article 66 – title

~~Opening registration for an existing standard~~Delegated act procedure to bring standard and use cases within the scope of the Regulation

Amendment 479 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 66 – paragraph 1

1. ~~Until [OJ: please insert the date = 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Reg~~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 (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be deterprocess, by means of a delegated act pursuant to Article 67, determine which standards published after the cominedg in ~~the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis~~to effect of this Regulation, parts thereof or relevant use cases shall be brought within the scope of the Regulation.

Amendment 480 #

Proposal for a regulation
Article 66 – paragraph 1

1. Until [OJ: please insert the date = 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the ~~existing~~ standards or parts thereof that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis.

Amendment 481 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 66 – paragraph 2

2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis.deleted

Amendment 482 #

Proposal for a regulation
Article 66 – paragraph 2

2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard~~, standard published before the entry into force of this Regulation,~~ for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the ~~existing~~ standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis.

Amendment 483 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 66 – paragraph 3

3. Until [OJ: please insert the date = 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis.deleted

Amendment 484 #

Proposal for a regulation
Article 66 – paragraph 3

3. Until [OJ: please insert the date = 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to a~~n existing~~ standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis.

Amendment 485 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 66 – paragraph 4

4. Where 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation].deleted

Amendment 486 #

Proposal for a regulation
Article 66 – paragraph 4

4. Where 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 of the ~~existing~~ standards, parts thereof or relevant use cases can be notified i~~n accordance with paragraph (1) or paragraph (2)~~, or for which an expert opinion can be requested ~~in accordance with paragraph (3)~~. The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those ~~existing~~ standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation].

Amendment 487 #

Proposal for a regulation
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 488 #

Proposal for a regulation
Article 69 a (new)

Article 69a Impact assessment No later than 6 months after the application of this Regulation, external experts shall create an impact assessment evaluating its WTO compatibility, its impact on the European and global IP and innovation ecosystem as well as its effect on European competitiveness.

Amendment 489 #

Proposal for a regulation
Article 70 – paragraph 1

1. By [OJ: please insert the date = 51 years from entry into force of this regulation] the Commission shall rev~~aluate the effectiveness and efficiency of the SEP registration and the essentiality check system~~iew the application, enforcement and impact of this Regulation and present a report to the European Parliament and the Council. The report shall in particular assess the following issues: a) the effectiveness of this Regulation in achieving its intended goal, increasing transparency b) the cost-benefit to SEP holders and implementers of this Regulation c) the overall impact on the IP and innovation ecosystem in Europe and globally d) the impact of this regulation on SMEs and micro enterprises e) the impact on trade and the competitiveness of the Union’s industry g) the impact in terms of administrative burdens for the economic operators h) whether the regulation goes against WTO compatibility and TRIPS. Where the Commission considers it appropriate, the report should be accompanied by relevant legislative proposals or repeal the existing regulation.

Amendment 490 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
Article 70 – paragraph 1

1. By [OJ: please insert the date = 53 years from entry into force of this regulation] the Commission shall evaluate the effectiveness and efficiency of the SEP registration and the essentiality check system.

Amendment 491 #

Proposal for a regulation
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.

Amendment 492 #

Proposal for a regulation
Article 70 – paragraph 2

2. By [OJ: please insert the date = 8 years from entry into force of this regulation], and every ~~fiv~~three years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods.

Amendment 493 #

Proposal for a regulation
Article 70 – paragraph 2

2. By [OJ: please insert the date = 85 years from entry into force of this regulation], and every ~~five~~3 years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods.

Amendment 494 #

Proposal for a regulation
Article 70 – paragraph 3

3. When preparing the evaluation reports referred to in paragraphs (1) and (2), the Commission shall consult the EUIPO ~~and stakeholder~~, EPO, the World Intellectual Property Organisation and other global stakeholders, including third country governments, as well as business representatives and innovators, including small and medium enterprises.

Amendment 495 #

Proposal for a regulation
Article 72 – paragraph 2

2. It shall apply from … [OP: please insert the date = 2436 months after the date of entry into force of this Regulation].

Amendment 76 #

Proposal for a regulation
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 77 #

Proposal for a regulation
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 the European Union 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 78 #

Proposal for a regulation
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 that are essential to a standard that has been published by a standard development organisation, to which the SEP holder or a previous holder of the SEPs in question has 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

(4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, ~~certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be~~this Regulation, shall only appl~~ied~~y 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 80 #

Proposal for a regulation
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~~this Regulation shall only 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.

Amendment 81 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 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.

Amendment 82 #

Proposal for a regulation
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~~the 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 83 #

Proposal for a regulation
Recital 5

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

Amendment 84 #

Proposal for a regulation
Recital 5

Amendment 85 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 5

Amendment 86 #

Proposal for a regulation
Recital 5

(5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof ~~that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered.~~ and the relevant use cases, for which SEPs can be registered. However, the inclusion within the scope of this Regulation of standards that have been published before its entry into force should not impact licences that are already in force.

Amendment 87 #

Proposal for a regulation
Recital 5

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

Amendment 88 #

Proposal for a regulation
Recital 7 a (new)

(7 a) Because royalty-free and open standards are key in the development of our digital society - including the development of open software - prevent vendor lock-in and other barriers to interoperability, promote choice between vendors and technology solutions, ensure full market competition and innovation, this regulation should apply to such standards, while not discouraging SEP holders to innovate and participate in open standards development.

Amendment 89 #

Proposal for a regulation
Recital 8

Amendment 90 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Pilar DEL CASTILLO VERA

Proposal for a regulation
Recital 8

Amendment 91 #

Proposal for a regulation
Recital 8

(8) In view of the global character of SEP licensing, references to aggregate royalty and FRAND determination may refer to global aggregate royalties and global FRAND determinations, or as otherwise agreed by ~~the notifying stakeholders or the parties to the proceeding~~parties, between a SEP holder and an implementer. When referring to aggregate royalty and FRAND determination it is necessary to attend the trade circumstances.

Amendment 92 #

Proposal for a regulation
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 93 #

Proposal for a regulation
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. The electronic register and the database should serve as primary reference points for users, providing easily accessible information about SEPs free of charge. The information made accessible should not be subject to licensing terms, so that it can be used freely.

Amendment 94 #

Maria da Graça CARVALHO, Andreas SCHWAB, Ivan ŠTEFANEC, Lara COMI, Pilar DEL CASTILLO VERA

Proposal for a regulation
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 95 #

Proposal for a regulation
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 ~~SMEs~~them. 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 96 #

Proposal for a regulation
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 microenterprises, the competence centre should offer assistance to SMEs and microenterprises. 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 97 #

Proposal for a regulation
Recital 15

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

Amendment 98 #

Proposal for a regulation
Recital 15

Amendment 99 #

Proposal for a regulation
Recital 15

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

source: 754.964

2023/10/31 JURI 662 amendments...

Amendment 119 #

Proposal for a regulation
Recital 2

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

Amendment 120 #

Proposal for a regulation
Recital 2

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

Amendment 121 #

Proposal for a regulation
Recital 2 a (new)

(2a) Good faith negotiations between parties willing to participate occur in many FRAND cases, yet in other instances, SEPs become the subject of legal proceedings. This Regulation aims to provide advantages to both Union SEP holders and SEP implementers by introducing mechanisms designed to address two key issues: firstly, situations where SEP implementers unreasonably delay or decline FRAND licenses; and secondly, scenarios where SEP holders impose non-FRAND royalties due to the threat of injunction and a lack of transparency.

Amendment 122 #

Proposal for a regulation
Recital 3

Amendment 123 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 ~~that ar~~in force in one or more Member States that have been declared to be 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 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 that are essential to a standard that has been published by a standard development organisation, to which the SEP holder or a previous holder of the SEPs in question has 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 125 #

Proposal for a regulation
Recital 3 a (new)

(3a) The key role of Standards Development Organisations (SDOs) in developing and defining technical standards for interoperable technologies should be strengthened. The global and collaborative effort of increasing transparency of SEPs should be reinforced not only through FRAND licensing obligations, but also thanks to an efficient cooperation between SDOs and the competent patent offices, so that the declaration of standards has a maximum level of legal certainty, with robust essentiality checks from the start of the assessment chain.

Amendment 126 #

Proposal for a regulation
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 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.deleted

Amendment 127 #

Proposal for a regulation
Recital 4

Amendment 128 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 generation~~standards 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 -~~ standards such as e.g. Wi-Fi, HEVC, and cellular standards, including LTE and 5G, with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified ~~use cases of certain~~ standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies.

Amendment 129 #

Proposal for a regulation
Recital 4

Amendment 130 #

Proposal for a regulation
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 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.

Amendment 131 #

Proposal for a regulation
Recital 4 b (new)

(4b) There are already structures in place like the unitary patent system encompassing the Unitary Patent (UP), entrusted to the EPO, which is a legal title that provides uniform protection across all participating countries on a one-stop- shop basis, providing huge cost advantages and reducing administrative burdens. And the Unified Patent Court (UPC) which offers Member States a single and specialised patent jurisdiction.

Amendment 132 #

Proposal for a regulation
Recital 4 c (new)

(4c) The EPO has an existing register with a wealth of information on European patents that is tied to the UP register which contains patent holders’ commitment to license patents on FRAND terms. The owners of SEPs are thus already required to license the patents on FRAND terms.

Amendment 133 #

Proposal for a regulation
Recital 5

Amendment 134 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 5

Amendment 135 #

Proposal for a regulation
Recital 5

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

Amendment 136 #

Proposal for a regulation
Recital 7

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

Amendment 137 #

Proposal for a regulation
Recital 7 a (new)

(7a) Because royalty-free and open standards are key in the development of our digital society - including the development of open software - , prevent vendor lock-in and other barriers to interoperability, promote choice between vendors and technology solutions, ensure full market competition and innovation, this regulation should apply to such standards, while not discouraging SEP holders to innovate and participate in the open collaborative standards development.

Amendment 138 #

Proposal for a regulation
Recital 8

Amendment 139 #

Proposal for a regulation
Recital 10

Amendment 140 #

Proposal for a regulation
Recital 11 a (new)

(11a) The measures of this Regulation should be balanced and proportionate and rely on existing tools and the best available practices, thus avoiding duplication of work. Relevant structures have already been set up and should be built on. Patent registers and databases providing for relevant data and know how on patent procedures are already set up and administrated at the European Patent Office. This is equally valid for the Unified Patent Court which has introduced a dedicated Patent Mediation and Arbitration Centre. To build on this expertise, the European Patent Office should be mandated with the tasks of the new competence centre, namely setting up and maintaining an electronic register and an electronic database for SEPs, setting up and managing rosters of evaluators and conciliators, setting up and administering a system for assessment of the essentiality of SEPs, setting up and administering the process for the FRAND determination, providing training to evaluators and conciliators, administering a process for aggregate royalty determination, enhancing transparency and information sharing, providing training, support and general advice on SEPs to SMEs, conducting studies and any other necessary activities to support the objectives of this Regulation, raising awareness about SEP licensing, including SEP licensing in the value chain. The European Patent Office should find a procedure for national patent offices to contribute technical advice to the work of the competence centre.

Amendment 141 #

Proposal for a regulation
Recital 12

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

Amendment 142 #

Proposal for a regulation
Recital 12

(12) ~~To facilitate the implementation of this regulation~~Without impinging upon the powers of the European Patents Office, the European Union Intellectual Property Office (EUIPO) should perform the relevant tasks by means of a competence centre. The EUIPO has extensive experience with managing databases, electronic registers and alternative dispute settlement mechanisms, which are key aspects of the functions assigned under this Regulation. It is necessary to equip the competence centre with necessary human and financial resources to fulfil its tasks.

Amendment 143 #

Proposal for a regulation
Recital 12

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

Amendment 144 #

Proposal for a regulation
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~~of 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 145 #

Proposal for a regulation
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 146 #

Proposal for a regulation
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 147 #

Proposal for a regulation
Recital 13 a (new)

(13a) The register and the electronic database should serve as primary reference points for users, providing easily accessible and information about SEPs free of charge. The information made accessible should not be subject to licensing terms, so that it can be used freely. The register administered by the competence centre should offer a high level of legal certainty and should guarantee easy access to members of the public, so that it becomes a reference in the field in the near future.

Amendment 148 #

Proposal for a regulation
Recital 13 b (new)

(13b) The rules of coexistence between the register administered by the EUIPO competence centre and the other SEPs registers should be clarified by the Commission in its evaluation exercise.

Amendment 149 #

Proposal for a regulation
Recital 14

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

Amendment 150 #

Proposal for a regulation
Recital 14

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

Amendment 151 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 15

Amendment 152 #

Proposal for a regulation
Recital 15

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

Amendment 153 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 16

Amendment 154 #

Proposal for a regulation
Recital 16

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

Amendment 155 #

Proposal for a regulation
Recital 16

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

Amendment 156 #

Proposal for a regulation
Recital 18

Amendment 157 #

Proposal for a regulation
Recital 19

(19) In order to ensure transparency of about SEPs, it is appropriate to require from SEP holders to register their patents which are essential to the standard for which the registration is open. SEP holders should register their SEPs within 6 months following the opening of the registration by the competence centre or the grant of the relevant SEPs, whichever is first. In case of timely registration, SEPs holders should be able to collect royalties and claim damages for uses and infringements that happened before the registration, provided that the amount thereof has been established in accordance with the FRAND determination rules set out in this Regulation.

Amendment 158 #

Proposal for a regulation
Recital 20

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

Amendment 159 #

Proposal for a regulation
Recital 20

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

Amendment 160 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 20

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

Amendment 161 #

Proposal for a regulation
Recital 20

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

Amendment 162 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 20 a (new)

(20a) SEP holders are obliged to licence under FRAND terms and conditions and shall therefore not discriminate by refusing a licence to a licensee willing to accept the conditions of a FRAND licence, independent from the position of the potential licensee in the respective value chain.

Amendment 163 #

Proposal for a regulation
Recital 20 a (new)

(20a) Regardless of the position within the supply chain at which a potential licensee operates, an SEP holder must not decline to grant a FRAND license to any party seeking one, for any standard to which the SEP holder or a prior holder has made a FRAND commitment

Amendment 164 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 22

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

Amendment 165 #

Proposal for a regulation
Recital 23

Amendment 166 #

Proposal for a regulation
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~~. Information on modifications to SEP registration shall be maintained to preserve transparency.

Amendment 167 #

Proposal for a regulation
Recital 23

Amendment 168 #

Proposal for a regulation
Recital 24

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

Amendment 169 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 24

Amendment 170 #

Proposal for a regulation
Recital 24

Amendment 171 #

Proposal for a regulation
Recital 25

(25) These essentiality checks should be conducted on a sampling from SEP portfolios to ensure that the sample is capable of producing statistically valid results. The results of the sampled essentiality checks should determine the ratio of positively checked SEPs from all the SEPs registered by each SEP holder. The essentiality rate should be updated annually.deleted

Amendment 172 #

Proposal for a regulation
Recital 25

(25) These essentiality checks should be conducted on a sampling from SEP portfolios to ensure that the sample is capable of producing statistically valid results. The results of the sampled essentiality checks should determine the ratio of positively checked SEPs from all the SEPs registered by each SEP holder. The essentiality rate should be updated annually.deleted

Amendment 173 #

Proposal for a regulation
Recital 26

Amendment 174 #

Proposal for a regulation
Recital 26

Amendment 175 #

Proposal for a regulation
Recital 26

Amendment 176 #

Proposal for a regulation
Recital 26 a (new)

(26a) The technical conciliation procedure could also help the parties to discuss the relevant technical details for their specific licensing negotiation, e.g., how the SEP portfolio relates to the specific product and/or service implementation. The processes would be similar to current industry practices: following the execution of a mutual Non- Disclosure Agreement provided by the competence centre, SEP holders shall provide a relevant sample of claim charts for the patent families that it offers to license. In the event the licensor-SEP holder that enforces its patent-rights is an SME, the competence centre shall advice such SME in relation to the evaluation and exercise of its IP rights. The parties should be allowed to bring external technical advisors to the procedure.

Amendment 177 #

Proposal for a regulation
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 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.deleted

Amendment 178 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 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.deleted

Amendment 179 #

Proposal for a regulation
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 be indicated in the register. Those SEPs should not be re-checked for essentiality after the relevant evidence supporting the information in the register is provided to the competence centre, unless relevant stakeholders provide sufficient evidence to the evaluator about potential inaccuracies of this essentiality check.

Amendment 180 #

Proposal for a regulation
Recital 27 a (new)

(27a) The technical conciliation procedure should not take more than 5 months, unless otherwise agreed between the parties, and should be offered separately or combined with the FRAND determination procedure. The overall timing for the combined procedure should not go beyond the timing of 9 months foreseen in Article 37(1).

Amendment 181 #

Proposal for a regulation
Recital 27 a (new)

(27a) The role of patent pools, including those created by SEP implementers, should be evaluated by the Commission, in order to assess their benefit once this Regulation is in place, notably in terms of their incidence on competitiveness on the EU market.

Amendment 182 #

Proposal for a regulation
Recital 28

(28) The evaluators should work independently in accordance with the rules of procedure and Code of Conduct to be determined by the Commission. The SEP holder would be able request a peer evaluation before the issuance of a reasoned opinion. Unless a SEP is the subject of a peer review, there would be no further review of the essentiality check results. The results of the peer evaluation should serve to improve the essentiality check process, to identify and remedy shortcomings and improve consistency.deleted

Amendment 183 #

Proposal for a regulation
Recital 28

Amendment 184 #

Proposal for a regulation
Recital 29

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

Amendment 185 #

Proposal for a regulation
Recital 29

Amendment 186 #

Proposal for a regulation
Recital 30

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

Amendment 187 #

Proposal for a regulation
Recital 30

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

Amendment 188 #

Proposal for a regulation
Recital 30 a (new)

(30a) Recognizing the complexity and technical specificity inherent in negotiations surrounding SEPs, it is imperative to institute a structured ‘Technical Conciliation Procedure’, thereby facilitating more streamlined, transparent, and efficient discussions between concerned parties. This specialized procedure shall be organized and overseen by the competence centre, ensuring that both SEP holders and implementers have a fair and knowledgeable platform for negotiation.

Amendment 189 #

Proposal for a regulation
Recital 30 b (new)

(30b) The Technical Conciliation Procedure aims to mediate disputes by enabling parties to present their respective standpoints concerning the technical dimensions crucial to SEP licensing negotiations. By appointing a skilled technical conciliator from its roster, the competence centre ensures that the discussions are guided by technical expertise and a balanced perspective, essential for reaching mutually agreeable licensing terms.

Amendment 190 #

Proposal for a regulation
Recital 30 c (new)

(30c) To maintain the inclusivity and efficacy of this procedure, provision is designed for the participation of SMEs, either as SEP holders or implementers, guaranteeing their right to request this mandatory procedure. Conversely, entities other than SMEs may opt for this procedure upon mutual consent, reinforcing its role as a versatile tool for resolving disputes and aiding license agreement renewals. The procedure is designed to be time-efficient, with a maximum duration of five months for a standalone process, and not exceeding nine months when combined with a FRAND determination procedure, as per Article 37(1). This stipulation ensures that the parties involved are incentivized towards expedient and constructive engagement, minimizing potential delays in reaching licensing agreements.

Amendment 191 #

Proposal for a regulation
Recital 30 d (new)

(30d) The procedure hinges on detailed technical discussions where parties scrutinize the relevance of the SEP portfolio to their specific products or services. The competence centre shall provide the necessary resources, including a mutual NDA and assistance for SMEs, thereby ensuring that negotiations are based on a thorough understanding of the patents in question. Post-procedure, the technical conciliator shall compile a comprehensive report detailing the discussions, arguments, and a recommendation based on the deliberations. While maintaining confidentiality under the mutual NDA, this report shall be admissible in subsequent FRAND Determination procedures or ensuing litigation, ensuring continuity and reference to the insights gained during conciliation.

Amendment 192 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 30 e (new)

(30e) For SMEs, the procedure is particularly advantageous when combined with additional training and resources provided by the competence centre. By enhancing their understanding of SEP licensing and reducing financial burdens through reduced fees or pro bono services, SMEs are better positioned to engage in standard development, thereby aligning with broader EU objectives of technological innovation and SME participation. Additionally, the consistent application of the TPC enables the EUIPO’s competence centre to gain invaluable expertise in various technical realms pertinent to SEP licensing. This accumulated knowledge is instrumental in refining the centre’s approaches and methodologies, ultimately contributing to more sophisticated and informed handling of SEP-related matters

Amendment 193 #

Proposal for a regulation
Recital 31

Amendment 194 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 32

Amendment 195 #

Proposal for a regulation
Recital 33

Amendment 196 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 33

Amendment 197 #

Proposal for a regulation
Recital 33

(33) ~~The~~In case one or more parties initiate a FRAND determination process, it would be a mandatory step before a SEP holder would be able to ~~initiat~~pursue 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 can proceed 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

(34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement ~~before~~and 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 199 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 34

Amendment 200 #

Proposal for a regulation
Recital 34

Amendment 201 #

Proposal for a regulation
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 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.deleted

Amendment 202 #

Proposal for a regulation
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 203 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 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 204 #

Proposal for a regulation
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 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 205 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 36

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

Amendment 206 #

Proposal for a regulation
Recital 36

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

Amendment 207 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 37

Amendment 208 #

Proposal for a regulation
Recital 37

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

Amendment 209 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 38

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

Amendment 210 #

Proposal for a regulation
Recital 38

Amendment 211 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 39

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

Amendment 212 #

Proposal for a regulation
Recital 39

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

Amendment 213 #

Proposal for a regulation
Recital 39

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

Amendment 214 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 40

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

Amendment 215 #

Proposal for a regulation
Recital 40

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

Amendment 216 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Recital 41

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

Amendment 217 #

Proposal for a regulation
Recital 41

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

Amendment 218 #

Proposal for a regulation
Recital 41

Amendment 219 #

Proposal for a regulation
Recital 42

Amendment 220 #

Proposal for a regulation
Recital 42

Amendment 221 #

Proposal for a regulation
Recital 43

(43) The FRAND determination is also consistent with the right to an effective remedy and to access to justice as laid down in Article 47 of the Charter of Fundamental Rights of the European Union as the implementer and the SEP holder fully retain that right. In case of failure to register within the prescribed time limit, the exclusion of the right to effective enforcement is limited and necessary and meets objectives of general interest. As confirmed by the CJEU41 , the provision of a mandatory dispute resolution as a precondition to access to competent courts of Member States is deemed to be compatible with the principle of effective judicial protection. The FRAND determination follows the conditions for mandatory dispute resolution outlined in the CJEU judgments, taking into account the particular characteristics of SEP licensing. __________________ 41 Judgment of the Court of Justice of 18 March 2010, Rosalba Alassini v Telecom Italia SpA (C-317/08), Filomena Califano v Wind SpA (C-318/08), Lucia Anna Giorgia Iacono v Telecom Italia SpA (C- 319/08) and Multiservice Srl v Telecom Italia SpA (C-320/08), Joined cases C- 317/08, C-318/08, C-319/08 and C-320/08, EU:C:2010:146, and judgement of the Court of Justice of 14 June 2017,Livio Menini and Maria Antonia Rampanelli v Banco Popolare – Società Cooperativa, C- 75/16, EU:C:2017:457deleted

Amendment 222 #

Proposal for a regulation
Recital 43

Amendment 223 #

Proposal for a regulation
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 royalty~~FRAND 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
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, the efficiencies produced with this Regulation are likely to facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced or waiver of 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 toconciliation related fees in addition to free support and trainings. 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 225 #

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

Amendment 226 #

Proposal for a regulation
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, t~~The efficiencies produced with this Regulation ~~are likely t~~should also facilitate the licensing of ~~their SEP~~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 227 #

Proposal for a regulation
Recital 47

Amendment 228 #

Proposal for a regulation
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 229 #

Proposal for a regulation
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 Council45 . __________________ 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 230 #

Proposal for a regulation
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 231 #

Proposal for a regulation
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, technical conciliation procedure 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 232 #

Proposal for a regulation
Recital 49

Amendment 233 #

Proposal for a regulation
Article 1 – paragraph 1 – point c

~~(c) a procedure to evaluate the essentiality of registered SEPs;~~deleted

Amendment 234 #

Proposal for a regulation
Article 1 – paragraph 1 – point c

Amendment 235 #

Proposal for a regulation
Article 1 – paragraph 1 a (new)

1a. This Regulation shall only apply to patents that are in force after the entry into force of this Regulation.

Amendment 236 #

Proposal for a regulation
Article 1 – paragraph 2 – introductory part

2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, if the Commission has determined with regard to the standard concerned, by means of a delegated act pursuant to Article 67, that the functioning of the internal market is severely distorted.

Amendment 237 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 1 – paragraph 2 – introductory part

Amendment 238 #

Proposal for a regulation
Article 1 – paragraph 2 – introductory part

2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the current SEP holder or former 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 239 #

Proposal for a regulation
Article 1 – paragraph 2 – introductory part

Amendment 240 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 241 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 242 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 243 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 244 #

Proposal for a regulation
Article 1 – paragraph 2 – point a

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

Amendment 245 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 246 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 247 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 248 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 249 #

Proposal for a regulation
Article 1 – paragraph 2 – point b

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

Amendment 250 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 1 – paragraph 3

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

Amendment 251 #

Proposal for a regulation
Article 1 – paragraph 3

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

Amendment 252 #

Proposal for a regulation
Article 1 – paragraph 3

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

Amendment 253 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 1 – paragraph 4

Amendment 254 #

Proposal for a regulation
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 and have never given rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. The Commission shall review and where necessary update the list at least once a year.

Amendment 255 #

Proposal for a regulation
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, by [OJ: please insert the date: 24 months from the date of entry into force of this Regulation], and after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof~~, for the purposes of paragraph 3~~.

Amendment 256 #

Proposal for a regulation
Article 1 – paragraph 4

Amendment 257 #

Proposal for a regulation
Article 1 – paragraph 4

Amendment 258 #

Proposal for a regulation
Article 1 – paragraph 5

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

Amendment 259 #

Proposal for a regulation
Article 2 – paragraph 1 – point 2

Amendment 260 #

Proposal for a regulation
Article 2 – paragraph 1 – point 6

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

Amendment 261 #

Proposal for a regulation
Article 2 – paragraph 1 – point 7

(7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system; regardless of where in the supply chain the potential licensee operates.

Amendment 262 #

Proposal for a regulation
Article 2 – paragraph 1 – point 7

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

Amendment 263 #

Proposal for a regulation
Article 2 – paragraph 1 – point 10

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

Amendment 264 #

Proposal for a regulation
Article 2 – paragraph 1 – point 10

10) ‘aggregate royalty’ means the maximum amount of royalty for all patents essential to a standard used in a product, process, service or system;

Amendment 265 #

Proposal for a regulation
Article 2 – paragraph 1 – point 11

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

Amendment 266 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 2 – paragraph 1 – point 11

(11) ‘patent pool’ means a~~n entity created by an agreement between~~ consortium of at least two companies agreeing to cross-license patents relating two ~~or more SEP~~a particular technology. The creation of a patent pool can save holders toand license ~~one or more of their patents to~~ es not only time, but also often offer better scrutiny on essentiality, more clarity on aggregate licensing fees and the license rates can be expected to be FRAND. Additionally, they can function as one- stop-shop solutiones an~~other or to third parties;~~d should therefore be stimulated in its use.

Amendment 267 #

Proposal for a regulation
Article 2 – paragraph 1 – point 11

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

Amendment 268 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 2 – paragraph 1 – point 12

~~(12) ‘peer evaluation’ means a process for the re-examination of the preliminary results of essentiality checks by evaluators other that those that carried out the original essentiality check;~~deleted

Amendment 269 #

Proposal for a regulation
Article 2 – paragraph 1 – point 16

(16) ‘patent family’ means a collection of patent documents that ~~cover the same invention and whose members have the same prioriti~~all have at least one priority in common, including the priority document(s) themselves;

Amendment 270 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)

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

Amendment 271 #

Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)

(18a) ‘Unitary Patent’ means a legal title that provides uniform protection across all participating countries on a one-stop- shop basis, providing huge cost advantages and reducing administrative burdens;

Amendment 272 #

Proposal for a regulation
Article 2 – paragraph 1 – point 18 b (new)

(18b) ‘Unified Patent Court ’ means an agreement between EU countries to set up a single and specialised patent jurisdiction, used for resolving SEP disputes;

Amendment 273 #

Proposal for a regulation
Article 2 – paragraph 1 – point 18 c (new)

(18c) ‘Unitary Patent Register’ means a register that contains patent holders’ commitment to license patents on FRAND terms;

Amendment 274 #

Proposal for a regulation
Article 2 – paragraph 1 – point 18 d (new)

(18d) ‘Patent Mediation and Arbitration Centre’ means a centre that can be used to resolve SEP disputes, such as determining the essentiality of the patent(s) concerned and the appropriate FRAND licensing conditions. It offers support in the settlement of disputes relating to “classic” European patents and Unitary Patents. The Court may explore with the parties, the possibility to reach a settlement using the facilities of the Patent Mediation and Arbitration Centre;

Amendment 275 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 2 a (new)

Article 2a License to all Standard essential patent holders, whether their patents pertain to standards covered by this Regulation or not, and where they or previous owners have committed to FRAND terms, must not decline to grant a FRAND license to any party seeking one, regardless of the position of the potential licensee within the supply chain.

Amendment 276 #

Proposal for a regulation
Article 2 a (new)

Article2a Non-discriminatory licensing Holders of patents essential to a standard within the scope of this Regulation pursuant to Article 1(2) shall not refuse a licence to any party willing to accept a licence based FRAND terms and conditions.

Amendment 277 #

Proposal for a regulation
Article -3 (new)

Article-3 Composition of the competence centre The competence centre shall be composed of independent experts having proven experience in the patent field. The independence of these experts shall be verified by the Management Board of the European Patent Office before they take office and any time deemed necessary by the during the performance of their tasks.

Amendment 278 #

Proposal for a regulation
Article 3 – paragraph 1

1. The tasks under this Regulation shall be performed by a competence centre established within the EUIPO with the necessary human and financial resources and in close cooperation with the European Patent Office, national patent offices and standards development organisations.

Amendment 279 #

Proposal for a regulation
Article 3 – paragraph 2 – point b

(b) set up and manage rosters of ~~evaluators and conciliators;~~conciliators for the technical conciliation and FRAND determination procedures

Amendment 280 #

Proposal for a regulation
Article 3 – paragraph 2 – point c

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

Amendment 281 #

Proposal for a regulation
Article 3 – paragraph 2 – point c

Amendment 282 #

Proposal for a regulation
Article 3 – paragraph 2 – point e

(e) provide training to ~~evaluators and conciliators~~conciliators for the technical conciliation procedure and FRAND determination;

Amendment 283 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 3 – paragraph 2 – point f

~~(f) administer a process for aggregate royalty determination;~~deleted

Amendment 284 #

Proposal for a regulation
Article 3 – paragraph 2 – point f

~~(f) administer a process for aggregate royalty determination;~~deleted

Amendment 285 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 3 – paragraph 2 – point f

(f) administer a process for facilitating agreements on aggregate royalty determination;

Amendment 286 #

Proposal for a regulation
Article 3 – paragraph 2 – point g – point i

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

Amendment 287 #

Proposal for a regulation
Article 3 – paragraph 2 – point g – point i

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

Amendment 288 #

Proposal for a regulation
Article 3 – paragraph 2 – point g – point i

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

Amendment 289 #

Proposal for a regulation
Article 3 – paragraph 2 – point j

j) raestabliseh a~~wareness about SEP licensing, including SEP~~ dedicated working group on conditions for licensing SEPs in the value chain.

Amendment 290 #

Proposal for a regulation
Article -4 (new)

Article-4 European Patent Office 1. A Union register for SEPs ('the register') is established, in cooperation with the European Patent Office. 2. The essentiality check of standard essential patents shall be conducted, where necessary, as part of a patent application at the European Patent Office.

Amendment 291 #

Proposal for a regulation
Article 4 – paragraph 1

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

Amendment 292 #

Proposal for a regulation
Article 4 – paragraph 3 – point b

b) identification of registered SEPs, i~~dentific~~ncluding SEPs already in force in one or more Member States before the entry into force of this Regulation, including the country of registration and patent number ;

Amendment 293 #

Proposal for a regulation
Article 4 – paragraph 3 – point c

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

Amendment 294 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 4 – paragraph 3 – point h

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

Amendment 295 #

Proposal for a regulation
Article 4 – paragraph 4 – point b

~~(b) the grant or transfer of a licence through patent pools, where applicable pursuant to Article 9;~~deleted

Amendment 296 #

Proposal for a regulation
Article 4 – paragraph 4 – point c

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

Amendment 297 #

Proposal for a regulation
Article 4 – paragraph 4 – point c

(c) information on whether an essentiality check or peer evaluation haves been performed and ~~reference to the result~~, unless not possible because of contractual obligations agreed upon between parties, the outcome of that process;

Amendment 298 #

Proposal for a regulation
Article 4 – paragraph 4 – point c

(c) information on whether an essentiality check ~~or peer evaluation have been performed~~has been performed by a competent court of a Member State and reference to the result; if from a final judgement

Amendment 299 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 4 – paragraph 4 – point c

(c) Any information on ~~whether~~ an essentiality check or peer evaluation ~~have been performed and reference to~~performed before the registration and the result of the res~~ult~~sentiality check;

Amendment 300 #

Proposal for a regulation
Article 4 – paragraph 4 – point f

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

Amendment 301 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 4 – paragraph 4 – point g

~~(g) the date of suspension of the SEP from the Register pursuant to Article 22;~~deleted

Amendment 302 #

Proposal for a regulation
Article 4 – paragraph 4 – point i

~~(i) the date of removal of the SEP from the register pursuant to Article 25 and the grounds for removal;~~deleted

Amendment 303 #

Proposal for a regulation
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 304 #

Proposal for a regulation
Article 4 – paragraph 7

7. The competence centre shall keep the register easily accessible for public inspection. The competence centre shall provide a copy translated into the official languages of the European Union if necessary. The data shall be considered to be of public interest and may be accessed by any third party free of charge.

Amendment 305 #

Proposal for a regulation
Article 5 – paragraph 2 – point b

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

Amendment 306 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 5 – paragraph 2 – point b

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

Amendment 307 #

Proposal for a regulation
Article 5 – paragraph 2 – point b a (new)

(ba) any commitment by an SEP holder to offer SMEs favourable conditions or royalty-free access to its SEPs in line with Article 62;

Amendment 308 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 5 – paragraph 2 – point d

Amendment 309 #

Proposal for a regulation
Article 5 – paragraph 2 – point f

~~(f) non-confidential information on FRAND determinations pursuant to Article 11;~~deleted

Amendment 310 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 5 – paragraph 2 – point g

~~g) information on aggregate royalties pursuant to Articles 15, 16 and 17;~~deleted

Amendment 311 #

Proposal for a regulation
Article 5 – paragraph 2 – point g

~~(g) information on aggregate royalties pursuant to Articles 15, 16 and 17;~~deleted

Amendment 312 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 5 – paragraph 2 – point h

~~(h) expert opinions referred to in Article 18;~~deleted

Amendment 313 #

Proposal for a regulation
Article 5 – paragraph 2 – point h

h) binding expert opinions referred to in Article 18;

Amendment 314 #

Proposal for a regulation
Article 5 – paragraph 2 – point j

~~(j) SEPs selected for essentiality checks pursuant to Article 29, the reasoned opinions or the final reasoned opinions pursuant to Article 33;~~deleted

Amendment 315 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 5 – paragraph 2 – point j

~~(j) SEPs selected for essentiality checks pursuant to Article 29, the reasoned opinions or the final reasoned opinions pursuant to Article 33;~~deleted

Amendment 316 #

Proposal for a regulation
Article 5 – paragraph 2 – point k

(k) the date and the grounds for removal of the SEP from the database pursuant to Article 25, and a record of all relevant information on the removed SEP;

Amendment 317 #

Proposal for a regulation
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 318 #

Proposal for a regulation
Article 5 – paragraph 3

3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) shall be free by principle. It may be subject to the payment of a fee on a case- by-case basis. The information made accessible shall not be subject to licensing terms, so that it can be used freely.

Amendment 319 #

Proposal for a regulation
Article 5 – paragraph 3

3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) may be subject to the payment of a ~~fee~~reasonable fee, as set out in Article 63.

Amendment 320 #

Proposal for a regulation
Article 5 – paragraph 4

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

Amendment 321 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 5 – paragraph 4

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

Amendment 322 #

Proposal for a regulation
Article 6 – paragraph 1

Amendment 323 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 6 – paragraph 5

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

Amendment 324 #

Proposal for a regulation
Article 7 – paragraph 1 – introductory part

A ~~SEP holder~~ny holder of a patent which is essential to a standard for which FRAND commitments have been made in one or more Member States shall provide to the competence centre the following information:

Amendment 325 #

Proposal for a regulation
Article 7 – paragraph 1 – introductory part

A SEP ~~hold~~implementer shall provide to the competence centre the following information:

Amendment 326 #

Proposal for a regulation
Article 7 – paragraph 1 – point a

a) information as regards the products, a) processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard, to the extent such information is known to the SEP holder. in this regard, components or modules which may be incorporated into other products, processes, services or systems constitute in themselves ‘products, processes, services or systems’ in so far as the subject matter of the SEP may be incorporated into or intended to be applied to those components or modules.

Amendment 327 #

Proposal for a regulation
Article 7 – paragraph 1 – point a

Amendment 328 #

Proposal for a regulation
Article 7 – paragraph 1 – point b

Amendment 329 #

Proposal for a regulation
Article 7 – paragraph 1 a (new)

The competence centre shall liaise with the relevant patent offices and standards development organisations to verify the robustness of the information provided by the SEP holder.

Amendment 330 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 8

Information pertaining to essentiality A SEP holder shall provide to the competence centre the following information to be included in the database and referenced in the register: (a) a registered SEP made by a competent court of a Member State within 6 months from the publication of such decision. (b) 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.Article 8 deleted a final decision on essentiality for any essentiality check prior to [OJ:

Amendment 331 #

Proposal for a regulation
Article 8 – paragraph 1 – introductory part

Amendment 332 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 8 – paragraph 1 – point a

(a) a final decision on essentiality for a registered SEP made by a competent court of a Member State within 63 months from the publication of such decision.

Amendment 333 #

Proposal for a regulation
Article 8 – paragraph 1 – point a

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

Amendment 334 #

Proposal for a regulation
Article 8 – paragraph 1 – point b

Amendment 335 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 afor example, a patent pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator.

Amendment 336 #

Proposal for a regulation
Article 8 – paragraph 1 – point b

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

Amendment 337 #

Proposal for a regulation
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)

(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

~~Information to be provided by patent Patent pools shall publish on their websites at least the following information and inform the competence centre thereof: (a) licensing; (b) sharehold~~Article 9 deleted pools standards subject to collective the administrative entity’s process for evaluating SEPs; rosters or ownership structure; (c) (d) residence in the Union; (e) SEPs being licensed; (f) standard; (g) processes that may be licensed through the patent pool or the entity; (h) product category; (i) product category; (j) category; (k) category.f evaluators having list of evaluated SEPs and list of illustrative cross-references to the list of products, services and royalties and discount policy per standard licence agreement per list of licensors in each product list of licensees for each product

Amendment 340 #

Proposal for a regulation
Article 9 – paragraph 1

Patent pools shall publish on their websites at least the following information and inform the competence centre thereof: (a) licensing; (b) the administrative entity’s shareholders or ownership structure; (c) (d) roster of evaluators having residence in the Union; (e) list of evaluated SEPs and list of SEPs being licensed; (f) illustradeleted standards subject to collective cpross-references to the standard; (g) list of products, services and processes that may be licensed through the patent pool or the entity; (h) royalties and discount policy per product category; (i) standard licence agreement per product category; (j) list of licensors in each product category; (k) list of licensees for each product category.cess for evaluating SEPs;

Amendment 341 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 9 – paragraph 1 – point a a (new)

(aa) standards identified as ‘open standards’;

Amendment 342 #

Proposal for a regulation
Article 9 – paragraph 1 – point c

~~(c) process for evaluating SEPs;~~deleted

Amendment 343 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 9 – paragraph 1 – point d

~~(d) roster of evaluators having residence in the Union;~~deleted

Amendment 344 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 9 – paragraph 1 – point e

~~(e) list of evaluated SEPs and list of SEPs being licens~~deleted;

Amendment 345 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 9 – paragraph 1 – point g

g) list of products, services and processes that may be licensed through the patent pool or the entity; in this regard, components or modules which may be incorporated into other products, processes, services or systems constitute in themselves ‘products, processes, services or systems’ in so far as the subject matter of the SEP may be incorporated into or intended to be applied to those components or modules.

Amendment 346 #

Proposal for a regulation
Article 9 – paragraph 1 – point g

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

Amendment 347 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 9 – paragraph 1 – point h

(h) royalties and discount policy per product category, including information on royalty calculation per SEP owner in the pool and aggregate royalty rate, if applicable;

Amendment 348 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 9 – paragraph 1 – point h

(h) royalties, royalty-free and discount policyies per product category;

Amendment 349 #

Proposal for a regulation
Article 9 – paragraph 1 a (new)

(1a) The competence centre shall verify and report on the accuracy of the information published by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a publicly available methodology ensuring thorough, transparent and consistent verification.

Amendment 350 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 10 – paragraph 1 – introductory part

1. Competent courts of Member States shall notify the competence centre within ~~6 months from the adoption of a~~two weeks after the final judgement concerning SEPs on:

Amendment 351 #

Proposal for a regulation
Article 11

~~Information on FRAND determinations~~Article 1.1 dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 6 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined. 2. be disclosed by the competence centre without the prior consent of the affected party.eleted Persons involved in alternative No confidential information shall

Amendment 352 #

Proposal for a regulation
Article 11 – paragraph 1

Amendment 353 #

Proposal for a regulation
Article 13 – paragraph 1

1. The competence centre shall store in the database all the data provided by stakeholders, including all relevant data to be provided by the standards development organisations, as well as opinions and reports of evaluators and conciliators.

Amendment 354 #

Proposal for a regulation
Article 13 – paragraph 1

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

Amendment 355 #

Proposal for a regulation
Article 13 – paragraph 2 – point a

(a) administering the registrations of SEPs~~, essentiality checks~~ and conciliation proceedings pursuant to this Regulation;

Amendment 356 #

Proposal for a regulation
Article 13 – paragraph 2 – point a

(a) administering the registrations of SEPs~~, essentiality checks~~ and conciliation proceedings pursuant to this Regulation;

Amendment 357 #

Proposal for a regulation
Article 13 – paragraph 2 – point c a (new)

(ca) informing the public and all interested parties of the existence and quality of standards, with easily accessible research tools and reasonably understandable search results;

Amendment 358 #

Proposal for a regulation
Article 13 – paragraph 3

3. The competence centre shall include in the database case-law from competent courts of Member States, from third country jurisdictions ~~and~~from WIPO and other alternative dispute resolution bodies.

Amendment 359 #

Proposal for a regulation
Article 13 a (new)

Article13a Enhanced cooperation with the European Patent Office, national patent offices and Standards Development Organisations In performing its tasks under this Regulation, the competence centre shall proceed to regular checks with the European Patent Office, national patent offices and Standards Development Organisations in order to establish a maximum level of legal certainty. The format and frequency of such verification procedures shall be determined by delegated acts.

Amendment 360 #

Proposal for a regulation
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 361 #

Proposal for a regulation
Chapter 2 – title

Notification of a standard ~~and an aggregate royalty~~

Amendment 362 #

Proposal for a regulation
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

~~(d) implementations of the standard known to the SEP holders making the notification.~~deleted

Amendment 364 #

Proposal for a regulation
Article 14 – paragraph 2

2. Such notification shall be made (a) within 90 days of the entry into force of this Regulation for standards already adopted, (b) within 30 days of the publication of the latest technical specification adopted after the entry into force of this Regulation.

Amendment 365 #

Proposal for a regulation
Article 14 – paragraph 2

2. Such notification shall be made within ~~30 day~~6 months of the publication of the latest technical specification.

Amendment 366 #

Proposal for a regulation
Article 14 – paragraph 3

3. In the absence of the notification under paragraph (1), any holder of a SEP in force in one or more Member State shall notify individually: (a) the standards already adopted within a maximum period of 150 days from the entry into force of this Regulation; (b) within a maximum period of 90 day, no later than 90 days from the publication of the latest technical specification, to the competence centre the information referred to in paragraph (1).

Amendment 367 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 15

Notification of an aggregate royalty to the 1. more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. 2. The notification made in accordance with paragraph (1) shall contain the information on the following: a) commercial name of the standard; b) that define the standard; c) holders making the notification referred to in paragraph (1); d) holders referred to in paragraph (1) represent from all SEP holders; e) they own collectively from all SEPs for the standard; f) the implementations known to the SEP holders referred to in point (c); g) the global aggregate royalty, unless the notifying parties specify that the aggregate royalty is not global; h) royalty referred to in paragraph (1) is valid. 3. The notification referred to in paragraph (1) shall be made at the latest 120 days after: a) the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or b) a new implementArticle 15 deleted competence centre Holders of SEPs in force in one or the list of technical specifications the names of the SEP the estimated percentage the SEP the estimated percentage of SEPs any period for which the aggregate the publication of ~~the~~a standard b~~ecomes known to them. 4. The competence centre shall publish in the database the information provided under paragraph (2).~~y

Amendment 368 #

Proposal for a regulation
Article 15

Notification of an aggregate royalty to the 1. more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. 2. accordance with paragraph (1) shall contain the information on the following: (a) standard; (b) that define the standard; (c) making the notification referred to in paragraph (1); (d) holders referred to in paragraph (1) represent from all SEP holders; (e) they own collectively from all SEPs forArticle 15 deleted competence centre Holders of SEPs in force in one or The notification made in the commercial name of the the list of technical specifications the names of the SEP holders the estimated percentage the SEP the est~~andard; (f) SEP holders referred to in point (c); (g) unless the notifying parties specify~~imated percentage of SEPs the implementations known to thate the global aggregate royalty is not global; (h) royalty referred to in paragraph (1) is valid. 3. paragraph (1) shall be made at the latest 120 days after: (a) the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or (b) a new implementation of the standard becomes known to them. 4. The competence centre shall publish in the database the information provided under paragraph (2)., any period for which the aggregate The notification referred to in the publication of a standard by

Amendment 369 #

Proposal for a regulation
Article 15

~~Notification of an aggregate royalty to the 1. Holders of SEPs in force in one or more Member States for which FRAND commitments have been made may jointly notify the~~Article 15 deleted competence centre tThe aggregate royalty for the SEPs covering a standard. 2. accordance with paragraph (1) shall contain the information on the following: (a) standard; (b) that define the standard; (c) making the notification referred to in paragraph (1); (d) holders referred to in paragraph (1) represent from all SEP holders; (e) they own collectively from all SEPs fornotification made in the commercial name of the the list of technical specifications the names of the SEP holders the estimated percentage the SEP the est~~andard; (f) SEP holders referred to in point (c); (g) unless the notifying parties specify~~imated percentage of SEPs the implementations known to thate the global aggregate royalty is not global; (h) royalty referred to in paragraph (1) is valid. 3. paragraph (1) shall be made at the latest 120 days after: (a) the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or (b) standard becomes known to them. 4. publish in the database the information provided under paragraph (2)., any period for which the aggregate The notification referred to in the publication of a standard by a new implementation of the The competence centre shall

Amendment 370 #

Proposal for a regulation
Article 15 – paragraph 1

1. Holders and implementers of SEPs in force in one or more Member States related to a standard identified under Article 1(4) for which FRAND commitments have been made may jointly notify the competence centre of the aggregate royalty for the SEPs covering a standard.

Amendment 371 #

Proposal for a regulation
Article 15 – paragraph 2 – point c

Amendment 372 #

Proposal for a regulation
Article 15 – paragraph 2 – point f

(f) the implementations known to the SEP holders and/or implementers referred to in point (c);

Amendment 373 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 16

Amendment 374 #

Proposal for a regulation
Article 16

Amendment 375 #

Proposal for a regulation
Article 16

Amendment 376 #

Proposal for a regulation
Article 16 – paragraph 1

1. In case of revision of the aggregate royalty, the SEP holders and implementers shall notify the competence centre about the revised aggregate royalty and the reasons for the revision.

Amendment 377 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 17

Process for facilitating agreements on 1. more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty. 2. later than 90 days following the publication of the standard or no later than 120 days following the first sale of new implementation on the Union market for implementations not known at the time of publication of the standard. 3. The request shall contain the following information: a) commercial name of the standard; b) technical specification or the date of the first sale of new implementation on the Union market; c) the implementations known to the SEP holders referred to in paragraph (1); d) the names and contact details of the SEP holders supporting the request; e) the estimated percentage of SEPs they own individually and collectively from all potential SEPs claimed for the standard. 4. the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard. 5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process. 6. conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. 7. make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. 8. notification, the procedure set out in Article 15(1), (2) and (4) shall apply.Article 17 deleted aggregate royalty determinations Holders of SEPs in force in one or Such a request shall be made no the date of publication of the latest The competence centre shall notify SEP holders that submit to the Where the SEP holders fail to If the contributors agree on a joint

Amendment 378 #

Proposal for a regulation
Article 17

Amendment 379 #

Proposal for a regulation
Article 17

Process for facilitating agreements on 1. more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submissiArticle 17 deleted aggregate royalty determinations Holders of SEPs in force in one o~~f an aggregate royalty. 2. later than 90 days following the publication of the standard or no later than 120 days following the fir~~r Such a request shall be made no The request shal~~e of new implementation on the Union market for implementations not known at~~l contain the the commercial name of the the ~~tim~~date of publication of the standard. 3. following information: (a) standard; (b) technical specification or the date of the first sale of new implementation on the Union market; (c) SEP holders referred to in paragraph (1); (d) the SEP holders supporting the request; (e) they own individually and collectively from all potential SEPs claimed for the standard. 4. the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to providelatest the implementations known to the the names and contact details of their estimated percentage of SEPs from all SEPs for the standard. 5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process. 6. conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. 8. notification, the procedure set out in Article 15(1), (2) and (4) shall apply.The competence centre shall notify SEP holders that submit to the If the contributors agree on a joint

Amendment 380 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 17 – paragraph 1

1. Holders of SEPs in force in one or more Member States representing at least 20 % of all SEPs of a standard, or implementers seeking to implement the standard, may request the competence centre to appoint a conciliator or a panel of conciliators according to Article 39, from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty.

Amendment 381 #

Proposal for a regulation
Article 17 – paragraph 4 a (new)

4a. The competence centre shall publish a call for expression of interest to invite other holders of SEPs for the standard, current implementers and implementers intending to place products with the standard on the market to participate in the process.

Amendment 382 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 17 – paragraph 5

5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders and implementers that expressed interest to participate in the process.

Amendment 383 #

Proposal for a regulation
Article 17 – paragraph 5

5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders and implementers that expressed interest to participate in the process.

Amendment 384 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 17 – paragraph 6

Amendment 385 #

Proposal for a regulation
Article 17 – paragraph 6

Amendment 386 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 17 – paragraph 7

7. Where the SEP holders referred to in paragraph (3) fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process.

Amendment 387 #

Proposal for a regulation
Article 17 – paragraph 7

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

Amendment 388 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 18

~~[...]~~deleted

Amendment 389 #

Proposal for a regulation
Article 18

~~[...]~~deleted

Amendment 390 #

Proposal for a regulation
Article 18 – title

~~Non-binding expert opin~~Determination of an aggregate royalty by a non-binding expert opinion

Amendment 391 #

Proposal for a regulation
Article 18 – title

~~Non-b~~Binding expert opinion on aggregate royalty

Amendment 392 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 1

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

Amendment 393 #

Proposal for a regulation
Article 18 – paragraph 2 – point b a (new)

(ba) the standard has been included in the Delegated Act pursuant to Article 1(4).

Amendment 394 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 4

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

Amendment 395 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 5

Amendment 396 #

Proposal for a regulation
Article 18 – paragraph 5

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

Amendment 397 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 SME~~any combination of five SEP holders or implementers, 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 398 #

Proposal for a regulation
Article 18 – paragraph 6

6. If the requests for participation include 5 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 implementers, or at least 103 SMEs, , the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology.

Amendment 399 #

Proposal for a regulation
Article 18 – paragraph 6

6. If the requests for participation include SEP holders representing collectively ~~at least~~ an estimated 210% of all SEPs for the standard, and ~~implementers holding collectively at least 10% relevant market share in the Union or at least 10 SME~~at least 10 implementers, 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 400 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 6

Amendment 401 #

Marion WALSMANN

Proposal for a regulation
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~~ or implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology.

Amendment 402 #

Proposal for a regulation
Article 18 – paragraph 8 – introductory part

8. Following the appointment, the panel shall request the ~~participating SEP~~ interested parties, including SEP holders, implementers and other stakeholders to, within one month:

Amendment 403 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 8 – introductory part

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

Amendment 404 #

Proposal for a regulation
Article 18 – paragraph 8 – introductory part

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

Amendment 405 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 8 – point b a (new)

(ba) provide any evidence or observations to assist the panel in determining an opinion on aggregate royalty.

Amendment 406 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 8 – point b a (new)

(ba) Submit proof and documentation that could aid the panel in establishing an aggregate royalty.

Amendment 407 #

Proposal for a regulation
Article 18 – paragraph 8 a (new)

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

Amendment 408 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 9 – point a

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

Amendment 409 #

Proposal for a regulation
Article 18 – paragraph 9 – point a

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

Amendment 410 #

Proposal for a regulation
Article 18 – paragraph 9 – point a

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

Amendment 411 #

Proposal for a regulation
Article 18 – paragraph 9 – point b

(b) to provide the binding expert opinion.

Amendment 412 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 10

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

Amendment 413 #

Proposal for a regulation
Article 18 – paragraph 10

10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 89(a) or of the decision referred to in paragraph 89(b). The opinion shall be supported by at least two of the three conciliators.

Amendment 414 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 18 – paragraph 11

11. 1The expert opinion shall include a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the recommended aggregate royalty rate, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion.

Amendment 415 #

Proposal for a regulation
Article 18 – paragraph 11

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

Amendment 416 #

Proposal for a regulation
Article 18 – paragraph 12

12. The binding expert opinion shall include an analysis of the value chain concerned and the potential impact of the aggregate royalty on the innovation incentives ~~of both SEP holders and~~, in particular for stakeholders in the value chain where licensing is to take place.

Amendment 417 #

Proposal for a regulation
Article 18 – paragraph 13

13. The competence centre shall publish the binding expert opinion and notify the participants of that publication.

Amendment 418 #

Proposal for a regulation
Article 19 – paragraph 1 – introductory part

Amendment 419 #

Proposal for a regulation
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:~~

Amendment 420 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 19 – paragraph 1 – point a

~~(a) publication by the competence centre of the standard and r~~delaeted ~~information pursuant to Article 14(7);~~

Amendment 421 #

Proposal for a regulation
Article 19 – paragraph 1 – point b

~~(b) publication by the competence centre of an aggregate royalty and related information pursuant to Article 15(4) and Article 18(11).~~deleted

Amendment 422 #

Proposal for a regulation
Article 19 – paragraph 1 – point b

~~(b) publication by the competence centre of an aggregate royalty and related information pursuant to Article 15(4) and Article 18(11).~~deleted

Amendment 423 #

Proposal for a regulation
Article 19 – paragraph 2

2. The competence centre shall publish a notice on the EUIPO website informing stakeholders that an entry in the register has been made ~~and refer to the publications referred to in paragraph (1)~~. The competence centre shall notify known SEP holders individually by electronic means and the relevant standard development organisation of the notice in this paragraph.

Amendment 424 #

Proposal for a regulation
Article 20 – paragraph 5

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

Amendment 425 #

Proposal for a regulation
Article 20 – paragraph 6

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

Amendment 426 #

Proposal for a regulation
Article 22

Examination of the conditions of 1. shall be checked annually for completeness and correctness. 2. methodology for selecting a sample of SEP registrations for checks. 3. contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 2 months. 4. the correct and complete information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. 5. suspended from the register pursuant to paragraph (4) and considers that the finding of the competence centre is incorrect may apply before the Boards of Appeal of the EUIPO for a decision on the matter. The application shall be made within 2 months from the suspension. Within 2 months from the application, the Boards of Appeal of the EUIPO shall either reject the application or request the competence centre to correct its finding and inform the requesting person. 6. information on a SEP pursuant to this article shall be made free of charge.Article 22 deleted registration A sample of SEP registrations The EUIPO shall adopt a Where the registration does not If the SEP holder fails to provide A SEP holder whose SEP has been Any completing or correcting

Amendment 427 #

Proposal for a regulation
Article 22 – paragraph 1

1. ~~A sample of~~ SEP registrations ~~shall~~may be checked annually for completeness and correctness, if the SEP holder agrees to do so.

Amendment 428 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 22 – paragraph 3

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

Amendment 429 #

Proposal for a regulation
Article 22 – paragraph 4

Amendment 430 #

Proposal for a regulation
Article 22 – paragraph 4

Amendment 431 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 22 – paragraph 4

4. If the SEP holder fails to provide the correct and complete information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. The registration shall be removed if the SEP holder fails to react within 12 months of the date of suspension from the register.

Amendment 432 #

Proposal for a regulation
Article 22 – paragraph 4 a (new)

4a. If an SEP has been suspended from the register pursuant to paragraph (4), the date of registration shall be the date when the incompleteness or inaccuracy has been remedied.

Amendment 433 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 22 – paragraph 5

Amendment 434 #

Proposal for a regulation
Article 22 – paragraph 5

Amendment 435 #

Proposal for a regulation
Article 23 – paragraph 1

1. A SEP holder may request a correction of its SEP registration or of the information contained in the database by filing an appropriate request to the competence centre~~, except as provided for in paragraph (2)~~ when the SEP is subject to an examination of essentiality in accordance with Article 31, until the publication of the result of that examination of essentiality.

Amendment 436 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 23 – paragraph 4 – point c a (new)

(ca) (d): a negative result of an examination of essentiality in accordance with Articles 32(5) and 33(1)

Amendment 437 #

Proposal for a regulation
Article 23 – paragraph 5

Amendment 438 #

Proposal for a regulation
Article 23 – paragraph 5

Amendment 439 #

Proposal for a regulation
Article 23 – paragraph 5

Amendment 440 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 23 – paragraph 6

Amendment 441 #

Proposal for a regulation
Article 23 – paragraph 6

Amendment 442 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 23 – paragraph 7

7. The treatment of requests for correction pursuant to This article by the competence centre shall be suspended from the selection of the SEP for essentiality check pursuant to Article 29 until the publication of the result of the essentiality check in the register and the database pursuant to Article 33(1).deleted

Amendment 443 #

Proposal for a regulation
Article 24

Amendment 444 #

Proposal for a regulation
Article 24

1. the time-limit set out in Article 20(3) may not be enforced in relation to the implementation of the standard for which a registration is required in a competent court of a Member State, from the time- limit set out in Article 20(3) until its registration in the register. 2. registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to receive royalties or seek damages for infringement of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register. 3. prejudice to provisions included in contracts setting a royalty for a broad portfolio of patents, present or future, stipulating that the invalidity, non- essentiality or unenforceability of a limited number thereof shall not affect the overall amount and enforceability of the royalty or other terms and conditions of the contract. 4. in case the registration of a SEP is suspended, during the suspension period pursuant to Article 22(4) or 23(5), except where the Boards of Appeal request the competence centre to correct its findings in accordance with Article 22(5) and 23(6). 5. State requested to decide on any issue related to a SEP in force in one or more Member States, shall verify whether the SEP is registered as part of the decision on admissibility of the action.Article 24 deleted Effects of absence of registration or suspension of registration of SEPs A SEP that is not registered within A SEP holder that has not Paragraphs (1) and (2) are without Paragraphs (1) and (2) apply also A competent court of a Member

Amendment 445 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 24

Amendment 446 #

Proposal for a regulation
Article 24 – paragraph 1

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

Amendment 447 #

Proposal for a regulation
Article 24 – paragraph 1

Amendment 448 #

Proposal for a regulation
Article 24 – paragraph 2

Amendment 449 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 24 – paragraph 3

Amendment 450 #

Proposal for a regulation
Article 24 – paragraph 3

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

Amendment 451 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 24 – paragraph 4

Amendment 452 #

Proposal for a regulation
Article 24 – paragraph 4

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

Amendment 453 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 24 – paragraph 5

5. A competent court of a Member State requested to decide on any issue related to a SEP in force in one or more Member States, shall verify whether the SEP is registered as part of the decision on admissibility of the action.deleted

Amendment 454 #

Proposal for a regulation
Article 24 – paragraph 5

5. A competent court of a Member State requested to decide on any issue in relat~~ed to~~ion to the implementation of a SEP in force in one or more Member States, shall verify whether the SEP is registered as part of the decision on admissibility of the action pursuant to paragraph 1.

Amendment 455 #

Proposal for a regulation
Article 25 – paragraph 1 – point d

~~(d) as a consequence of a negative result from the essentiality check pursuant to Article 31(5) and Article 33(1).~~deleted

Amendment 456 #

Proposal for a regulation
Article 25 – paragraph 1 – point d

~~(d) as a consequence of a negative result from the essentiality check pursuant to Article 31(5) and Article 33(1).~~deleted

Amendment 457 #

Proposal for a regulation
Article 25 – paragraph 2

2. Such a request may be made at any time, except from the selection of the SEP for essentiality check pursuant to Article 29 until the publication of the result of the essentiality check in the register and database pursuant to Article 33(1).

Amendment 458 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 25 – paragraph 2

Amendment 459 #

Proposal for a regulation
Article 25 – paragraph 3 a (new)

3a. The competence centre shall maintain and make publicly available a record of all SEPs removed from the register and the database.

Amendment 460 #

Proposal for a regulation
Title IV

IV ~~Evaluators and~~ Conciliators

Amendment 461 #

Proposal for a regulation
Article 26 – title

~~Evaluators and c~~Conciliators

Amendment 462 #

Proposal for a regulation
Article 26 – paragraph 1

~~1. An evaluator shall conduct essentiality checks.~~deleted

Amendment 463 #

Proposal for a regulation
Article 26 – paragraph 1

~~1. An evaluator shall conduct essentiality checks.~~deleted

Amendment 464 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 26 – paragraph 1

1. An evaluator shall conduct essentiality checks, the result of which shall be binding on the SEP holder.

Amendment 465 #

Proposal for a regulation
Article 26 – paragraph 2 – introductory part

2. A conciliator shall ~~conduct the following tasks:~~serve in a FRAND determination.

Amendment 466 #

Proposal for a regulation
Article 26 – paragraph 2 – introductory part

2. A conciliator shall ~~conduct the following tasks~~:

Amendment 467 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 26 – paragraph 2 – point a

~~a) mediate among parties in establishing an aggregate royalty;~~deleted

Amendment 468 #

Proposal for a regulation
Article 26 – paragraph 2 – point a

~~(a) mediate among parties in establishing an aggregate royalty;~~deleted

Amendment 469 #

Proposal for a regulation
Article 26 – paragraph 2 – point a

~~(a) mediate among parties in establishing an aggregate royalty;~~deleted

Amendment 470 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 26 – paragraph 2 – point a

(a) mediate among parties in establishing an aggregate royalty;

Amendment 471 #

Proposal for a regulation
Article 26 – paragraph 2 – point b

~~(b) provide a non-binding opinion on an aggregate royalty;~~deleted

Amendment 472 #

Proposal for a regulation
Article 26 – paragraph 2 – point b

~~(b) provide a non-binding opinion on an aggregate royalty;~~deleted

Amendment 473 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 26 – paragraph 2 – point b

(b) provide a ~~non-~~binding opinion on an aggregate royalty;

Amendment 474 #

Proposal for a regulation
Article 26 – paragraph 2 – point c

~~(c) serve in a FRAND determination.~~deleted

Amendment 475 #

Proposal for a regulation
Article 26 – paragraph 2 – point c a (new)

(ca) mediate between parties in the technical conciliation procedure;

Amendment 476 #

Proposal for a regulation
Article 26 – paragraph 3

3. The ~~evaluators and~~ conciliators shall have the requisite expertise and experience, be unbiased and independent and adhere to a code of conduct.

Amendment 477 #

Proposal for a regulation
Article 26 – paragraph 3

3. The ~~evaluators and~~ conciliators shall adhere to a code of conduct.

Amendment 478 #

Proposal for a regulation
Article 26 – paragraph 4

~~4. The competence centre shall appoint [10] evaluators from the roster of evaluators as peer evaluators for a period of [three] years.~~deleted

Amendment 479 #

Proposal for a regulation
Article 26 – paragraph 4

~~4. The competence centre shall appoint [10] evaluators from the roster of evaluators as peer evaluators for a period of [three] years.~~deleted

Amendment 480 #

Proposal for a regulation
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 481 #

Proposal for a regulation
Article 26 – paragraph 5 – introductory part

5. By [OJ: please insert the date = 1824 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 482 #

Proposal for a regulation
Article 26 – paragraph 5 – introductory part

Amendment 483 #

Proposal for a regulation
Article 26 – paragraph 5 – introductory part

5. By [OJ: please insert the date = 182 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in , lay down the practical and operational arrangements concerning:

Amendment 484 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 26 – paragraph 5 – point a

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

Amendment 485 #

Proposal for a regulation
Article 26 – paragraph 5 – point a

(a) the requirements for evaluators or conciliators, including a Code of Conduct, necessary qualifications, experience, and criteria for impartiality;

Amendment 486 #

Proposal for a regulation
Article 26 – paragraph 5 – point a

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

Amendment 487 #

Proposal for a regulation
Article 26 – paragraph 5 – point a

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

Amendment 488 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 26 – paragraph 5 – point b

(b) the procedures pursuant to Articles 17, 18, ~~31 and 32~~Title V and Title VI.

Amendment 489 #

Proposal for a regulation
Article 26 – paragraph 5 – point b

(b) the procedures pursuant to Articles ~~17, 18,~~ 31 and 32 and Title VI.

Amendment 490 #

Proposal for a regulation
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

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 492 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 27 – paragraph 2

2. The competence centre shall establish a roster of suitable candidates for ~~evaluators o~~technical conciliators and other conciliators. There ~~may~~shall be different rosters of ~~evaluators and~~ conciliators depending on the technical area of their specialisation or expertise and the qualification required for the procedure being conducted under this Regulation.

Amendment 493 #

Proposal for a regulation
Article 27 – paragraph 2

2. The competence centre shall establish a roster of ~~suitable~~qualified, impartial candidates for evaluators or conciliators~~. There may be~~ with sufficient experience. The competence centre may decide to establish different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise.

Amendment 494 #

Proposal for a regulation
Article 27 – paragraph 2

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

Amendment 495 #

Proposal for a regulation
Article 27 – paragraph 3

Amendment 496 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 27 – paragraph 3

Amendment 497 #

Proposal for a regulation
Article 27 – paragraph 3

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

Amendment 498 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 27 – paragraph 3

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

Amendment 499 #

Proposal for a regulation
Article 27 – paragraph 4 a (new)

4a. The competence centre shall publish the list of rosters of evaluators and conciliators.

Amendment 500 #

Proposal for a regulation
Title V

~~Essentiality checks of standard essential patents~~deleted

Amendment 501 #

Proposal for a regulation
Title V

~~Essentiality checks of standard essential patents~~Technical conciliation procedure

Amendment 502 #

Proposal for a regulation
Article 28

General requirement for essentiality 1. administer a system of essentiality checks, ensuring that they are conducted in an objective and impartial manner and that confidentiality of the information obtained is safeguarded 2. The essentiality check shall be conducted by an evaluator selected pursuant to Article 27. Evaluators shall conduct essentiality checks of registered SEPs for the standard for which they are registered. 3. done on more than one SEP from the respective patent family. 4. or an ongoing essentiality check shall not preclude licensing negotiations or any court or administrative procedure in relation to a registered SEP. 5. result of the essentiality check and the reasons for it in a reasoned opinion, or, in case of peer evaluation, in a final reasoned opinion, which shall not be legally binding. 6. conducted and the reasoned opinion of the evaluator or the final reasoned opinion of the peer evaluator may be used as evidence before stakeholders, patent pools, public authorities, courts or arbitrators.Article 28 deleted checks The competence centre shall Essentiality checks shall not be The lack of an essentiality check The evaluator shall summarise the The result of the essentiality check

Amendment 503 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 28 – title

~~General requirement for essentiality checks~~Technical conciliation procedure

Amendment 504 #

Proposal for a regulation
Article 28 – paragraph 1

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

Amendment 505 #

Proposal for a regulation
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 506 #

Proposal for a regulation
Article 28 – paragraph 5

5. The evaluator shall summarise the result of the essentiality check and the reasons for it in a reasoned opinion, or, in case of peer evaluation, in a final reasoned opinion, which shall ~~not~~ be legally binding on the SEP holder.

Amendment 507 #

Proposal for a regulation
Article 28 – paragraph 5 a (new)

5a. A SEP holder who believes that the evaluator’s final reasoned opinion is incorrect may appeal to the Boards of Appeal of the EUIPO within two months of the notification of the evaluation. The Boards of Appeal of the EUIPO shall rule on the essentiality of the SEP and notify the SEP holder of its binding decision.

Amendment 508 #

Proposal for a regulation
Article 28 a (new)

Article 28a 1. The competence centre shall set up and administer a technical conciliation procedure to support the parties in dealing with technical aspects typically covered during SEP licensing. 2. The competence centre shall appoint a technical conciliator from the roster of conciliators to mediate the procedure. 3. The initiation of the technical conciliation procedure shall be mandatory upon the request of an SME that is engaged in SEP licensing, either as a SEP holder or as a SEP implementer. 4. Upon initiation of the technical conciliation procedure, the parties shall execute a mutual Non-Disclosure Agreement, which shall be provided by the competence centre. 5. The parties shall submit their arguments and documents for the technical discussions. In accordance with customary industry practice, the SEP holder shall provide the other party and the technical conciliator a relevant sample of claim charts for the portfolio of SEP patent families for which a license is being offered 6. Where the SEP holder is an SME, the competence centre shall provide assistance for the technical evaluation and exercise of its relevant SEP families. 7. The parties shall be allowed to be assisted by external technical advisors during the procedure. 8. The technical conciliator shall propose and agree with the parties on the schedule, but the technical conciliation procedure shall not exceed a duration of 5 months. 9. The appointed technical conciliator shall mediate between the parties on the technical aspects with the aim to help facilitating the execution of a SEP license. 10. At the end of the technical conciliation procedure, the technical conciliator shall prepare a report establishing the key points of the procedure, the main elements brought by the parties and provide a recommendation. The report shall remain confidential pursuant to the mutual NDA signed by the parties, provided, however, that it may be utilized during the FRAND determination procedure of Title VI or, in the event the parties fail to agree on a SEP license during such determination, in legal proceeding related to the subject matter. 11. The technical conciliation procedure should be available as a separate procedure. However, upon request of one of the parties, the procedure could be combined with the FRAND determination procedure of Title VI. In the event both procedures are combined, the overall timeline for the merged procedure shall not exceed the 9 months duration stipulated in Article 37(1). 12. The technical conciliator procedure should be available for non-SMEs upon mutual agreement where the parties believe the procedure would be helpful to facilitate technical discussions.

Amendment 509 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 29

~~[...]~~deleted

Amendment 510 #

Proposal for a regulation
Article 29 – paragraph 1

Amendment 511 #

Proposal for a regulation
Article 29 – paragraph 1

1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 182 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. The implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).

Amendment 512 #

Proposal for a regulation
Article 29 – paragraph 1

1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 1824 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).

Amendment 513 #

Proposal for a regulation
Article 29 – paragraph 5

Amendment 514 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 29 – paragraph 6

Amendment 515 #

Proposal for a regulation
Article 29 – paragraph 6

Amendment 516 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 29 – paragraph 11

11. The party that requests the review of the examination of the essentiality check or peer evaluation and re- appointment of the evaluator and considers that the finding of the competence centre is incorrect may apply before the Boards of Appeal of the EUIPO for a decision on the matter. The application shall be made within 2 months from the finding of the competence centre. The Boards of Appeal of the EUIPO shall either reject the application or request the competence centre to appoint a new evaluator and inform the requesting person and, where relevant, the SEP holderdeleted

Amendment 517 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 30

~~Observations by stakeholders 1. publication of the list of registered SEPs s~~Article 30 delected for sampling, any stakeholder may submit to the competence centre written observations concerning the essentiality of the selected SEPs. 2. paragraph (1) shall be communicated to the SEP holder who may comment on them within the time limit established by the competence centre. 3. provide the observations and the responses by the SEP holder to the evaluator following the expiry of the set time limits.Within 90 days following the The observations referred to in The competence centre shall

Amendment 518 #

Proposal for a regulation
Article 30 – paragraph 1

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

Amendment 519 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 30 – paragraph 3

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

Amendment 520 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 31

Examination of the essentiality of a 1. shall be conducted following procedure that ensures sufficient time, rigorousness and high-quality. 2. The evaluator may invite the SEP holder concerned to file observations, within a period to be fixed by the evaluator. 3. believe that the SEP may not be essential to the standard, the competence centre shall inform the SEP holder of any such reasons and specify a period within which the SEP holder may submit its observations, or submit an amended claim chart. 4. any information provided by the SEP holder. 5. reasoned opinion to the competence centre within 6 months from its appointment. The reasoned opinion shall include the name of the SEP holder and of the evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination procedure, the result of the essentiality check and the reasons on which that result is based. 6. The competence centre shall notify the reasoned opinion to the SEP holder.Article 31 deleted registered SEP The examination of essentiality Where an evaluator has reasons to The evaluator shall duly consider The evaluator shall issue his

Amendment 521 #

Proposal for a regulation
Article 31 – paragraph 2

2. The evaluator may invite the SEP holder, implementers and other stakeholders concerned to file observations and evidence, within a period to be fixed by the evaluator.

Amendment 522 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 31 – paragraph 3

3. Where an evaluator has reasons to believe that the SEP may not be essential to the standard, the competence centre shall inform the SEP holder, implementers and other stakeholders which have provided observations or evidence of any such reasons and specify a period within which the SEP holder may submit its observations, or submit an amended claim chart.

Amendment 523 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 31 – paragraph 4

4. The evaluator shall duly consider any information provided by the SEP holder, implementers and other stakeholders.

Amendment 524 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 31 – paragraph 6

6. The competence centre shall notify the reasoned opinion to the SEP holder, and implementers and other stakeholders which have provided observations or evidence.

Amendment 525 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 32

~~1. informed the SEP holder pursuant to Article 31(3), the SEP holder may request peer evaluation before the expiry of the period to submit its observations pursuant to Article 31(3). 2. evaluation,~~Article 32 deleted Peer evaluation Where the competence centre shall appoint a peer evaluator. 3. consider all the information submitted by the SEP holder, the reasons of the initial evaluator why the SEP may not be essential to the standard and any amended claim chart or additional observations provided by the SEP holder. 4. confirmed the preliminary conclusions of the evaluator that the evaluated SEP may not be essential to the standard for which it was registered, the peer evaluator shall inform the competence centre and provide the reasons for this opinion. The competence centre shall inform the SEP holder and invite the SEP holder to submit its observations. 5. consider the observations of the SEP holder and issue a final reasoned opinion to the competence centre within 3 months from its appointment. The final reasoned opinion shall include the name of the SEP holder, of the evaluator and of the peer evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination and peer evaluation procedure, the preliminary conclusion of the evaluator, the result of the peer evaluation and the reasons on which that result is based. 6. the final reasoned opinion to the SEP holder. 7. shall serve to improve the essentiality check process and ensure consistency.s If the SEP holder requests a peer The peer evaluator shall duly In case the peer evaluation The peer evaluator shall duly The competence centre shall notify The results of the peer evaluation

Amendment 526 #

Proposal for a regulation
Article 32 – paragraph 1

1. Where the competence centre has informed the SEP holder, implementers and other stakeholders which have provided observations or evidence pursuant to Article 31(3), the SEP holder may request peer evaluation before the expiry of the period to submit its observations pursuant to Article 31(3).

Amendment 527 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 32 – paragraph 3

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

Amendment 528 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 32 – paragraph 4

4. In case the peer evaluation confirmed the preliminary conclusions of the evaluator that the evaluated SEP may not be essential to the standard for which it was registered, the peer evaluator shall inform the competence centre and provide the reasons for this opinion. The competence centre shall inform the SEP holder ~~and invite the SEP holder~~, implementers and other stakeholders which have provided observations or evidence and invite them to submit ~~its~~their observations.

Amendment 529 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 32 – paragraph 5

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

Amendment 530 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 32 – paragraph 6

6. The competence centre shall notify the final reasoned opinion to the SEP holder, implementers and other stakeholders which have provided observations or evidence.

Amendment 531 #

Proposal for a regulation
Article 33

Publication of the results of the 1. the result of the essentiality check or of the peer evaluation in the register and the reasoned opinion and final reasoned opinion in the database. The result of the essentiality check under this Regulation shall be valid for all SEPs from the same patent family. 2. publish in the register the percentage of sampled SEPs per SEP holder and per specific registered standard that passed successfully the essentiality test. 3. results contains an error attributable to the competence centre, tArticle 33 deleted essentiality checks The competence centre shall enter The competence centre shall ~~of its own motion or at t~~Whe re~~quest of the SEP holder registrant correct the error and publish the correction.~~ the publication of the

Amendment 532 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 34 – paragraph 1 – introductory part

Amendment 533 #

Proposal for a regulation
Article 34 – paragraph 1 – point a

(a) SEP holder, prior to ~~any initiation of~~pursuing a SEP infringement claim before a competent court of a Member State;

Amendment 534 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 34 – paragraph 1 – point b

(b) an implementer of a SEP prior to pursuing any request for the determination or assessment of FRAND terms and conditions of a SEP licence before a competent court of a Member State.

Amendment 535 #

Proposal for a regulation
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 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 34 – paragraph 3

3. The FRAND determination may be 3. 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 537 #

Proposal for a regulation
Article 34 – paragraph 4

Amendment 538 #

Proposal for a regulation
Article 34 – paragraph 4

Amendment 539 #

Proposal for a regulation
Article 34 – paragraph 4

4. The o~~bligation to initiate~~pening of a 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 provisionalrocedure in accordance with paragraph 1 shall prevent the SEP holder from requesting an injunction, provisional or final, in connection with the SEPs concerned. This shall apply to injunctions 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 merias well as injunctions that would impact the marketing of the implementer’s products for ~~the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent co~~involve their recall or the seizurte o~~f a Member States shall consider that a procedure for FRAND determination is ongoing~~r delivery of the implementer’s goods.

Amendment 540 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 541 #

Proposal for a regulation
Article 34 – paragraph 4

4. The obligation to initiate FRAND determination pursuant to paragraph 1 prior to ~~the~~pursuing 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 542 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 34 – paragraph 4 a (new)

4a. 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 claims concerning a SEP in force in one or more Member States subject to 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.

Amendment 543 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 34 – paragraph 5

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

Amendment 544 #

Proposal for a regulation
Article 34 – paragraph 5

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

Amendment 545 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 34 – paragraph 5

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

Amendment 546 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 36 – paragraph 2 – introductory part

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

Amendment 547 #

Proposal for a regulation
Article 37 – paragraph 1

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

Amendment 548 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 37 – paragraph 2

~~2. The period for the time barring of claims before a competent court of a Member State shall be suspended for the duration of the FRAND determination.~~deleted

Amendment 549 #

Proposal for a regulation
Article 37 – paragraph 2

~~2. The period for the time barring of claims before a competent court of a Member State shall be suspended for the duration of the FRAND determination.~~deleted

Amendment 550 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 1

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

Amendment 551 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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~~, itn c~~ommits to comply with its outcome~~ase of disagreement, include the reasons for declining participation.

Amendment 552 #

Proposal for a regulation
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 553 #

Proposal for a regulation
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 554 #

Proposal for a regulation
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 555 #

Proposal for a regulation
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 556 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 3 – introductory part

Amendment 557 #

Proposal for a regulation
Article 38 – paragraph 3 – introductory part

Amendment 558 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 3 – introductory part

Amendment 559 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 3 – point a

Amendment 560 #

Proposal for a regulation
Article 38 – paragraph 3 – point a

Amendment 561 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 3 – point a

Amendment 562 #

Proposal for a regulation
Article 38 – paragraph 3 – point a

Amendment 563 #

Proposal for a regulation
Article 38 – paragraph 3 – point a

Amendment 564 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 3 – point b

Amendment 565 #

Proposal for a regulation
Article 38 – paragraph 3 – point b

Amendment 566 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 3 – point b

Amendment 567 #

Proposal for a regulation
Article 38 – paragraph 3 – point b

Amendment 568 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 3 – point c

Amendment 569 #

Proposal for a regulation
Article 38 – paragraph 3 – point c

Amendment 570 #

Proposal for a regulation
Article 38 – paragraph 3 – point c

Amendment 571 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 4 – introductory part

Amendment 572 #

Proposal for a regulation
Article 38 – paragraph 4 – introductory part

Amendment 573 #

Proposal for a regulation
Article 38 – paragraph 4 – introductory part

Amendment 574 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
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 ishall contin~~gent upon the commitment of the requesting party to comply with the outcome of the FRAND determination, the following shall apply:~~ue and, upon mutual agreement, the outcome may be binding for both parties.

Amendment 575 #

Proposal for a regulation
Article 38 – paragraph 4 – point a

Amendment 576 #

Proposal for a regulation
Article 38 – paragraph 4 – point a

Amendment 577 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 4 – point a

Amendment 578 #

Proposal for a regulation
Article 38 – paragraph 4 – point a

Amendment 579 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 4 – point b

Amendment 580 #

Proposal for a regulation
Article 38 – paragraph 4 – point b

Amendment 581 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 4 – point b

Amendment 582 #

Proposal for a regulation
Article 38 – paragraph 4 – point b

Amendment 583 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 4 – point c

Amendment 584 #

Proposal for a regulation
Article 38 – paragraph 4 – point c

Amendment 585 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 4 – point d

Amendment 586 #

Proposal for a regulation
Article 38 – paragraph 4 – point d

Amendment 587 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 4 a (new)

4a. Both parties may declare a commitment to comply with the outcome of the FRAND determination at any time during the process. The commitment may be unilateral or contingent upon the other party’s agreement. The commitment shall have no impact on the outcome or continuation of the FRAND determination process.

Amendment 588 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 5

Amendment 589 #

Proposal for a regulation
Article 38 – paragraph 5

Amendment 590 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 5

Amendment 591 #

Proposal for a regulation
Article 38 – paragraph 5

5. Where either party commits to comply with the outcome of the FRAND determination, ~~while the other party fails to do so within the applicable time limits~~, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time-limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party.

Amendment 592 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 38 – paragraph 6

Amendment 593 #

Proposal for a regulation
Article 38 – paragraph 6

Amendment 594 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 38 – paragraph 6

6. The FRAND determination shall concern a global SEP licence on patents in force in one or more Member States, 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. SMEs that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination.

Amendment 595 #

Proposal for a regulation
Article 39 – title

Selection of the panel of conciliators

Amendment 596 #

Proposal for a regulation
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 appoint a panel of 3 conciliators 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. The selection of conciliators shall begin by each party selecting one conciliator, and the two selected conciliators selecting a third conciliator. If a party wishes to nominate a qualified conciliator outside the roster of conciliators referred to in Article 27(2), such a conciliator may be selected providing she/he meets the criteria for qualification of conciliators established by the competence centre. If one or both parties to the FRAND determination fails to select a conciliator within the specified time period, the selection(s) shall be made by the competence centre.

Amendment 597 #

Proposal for a regulation
Article 39 – paragraph 1

Amendment 598 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 39 – paragraph 1

Amendment 599 #

Proposal for a regulation
Article 39 – paragraph 1

1. Following the ~~reply to~~continuation of 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~~ing and responding parties shall each nominate one conciliator from the roster of conciliators referred to in Article 27(2)~~. The parties or party shall select~~ to the panel of conciliators. Both conciliators shall jointly agree one o~~f the proposed candidates as a~~ne further conciliator for the FRAND determination from the roster of conciliators referred to in Article 27(2).

Amendment 600 #

Proposal for a regulation
Article 39 – paragraph 2

2. The parties may agree to have a single conciliator conduct the FRAND determination, in which case the competence centre shall propose at least 3 candidates from the roster of conciliators referred to in Article 27(2) and the parties shall select one of the proposed candidates as a conciliator for the FRAND determination. Alternatively, the parties may jointly agree to a conciliator that is not on the roster and such conciliator shall be appointed by the competence centre providing she/he meets the criteria for qualification of conciliators established by the competence centre. 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).

Amendment 601 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 602 #

Proposal for a regulation
Article 39 – paragraph 2

2. If the parties do not agree on a third conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2).

Amendment 603 #

Proposal for a regulation
Article 40 – title

Appointment of conciliators

Amendment 604 #

Proposal for a regulation
Article 40 – paragraph 1

1. The selected candidates shall communicate to the competence centre the acceptance to take up the task of a conciliator for the FRAND determination, which shall notify the communication of acceptance to the parties.

Amendment 605 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 40 – paragraph 2

2. The day following the notification of the acceptance to the parties, the panel of conciliators is appointed, and the competence centre shall refer the case to ~~him/her~~the panel.

Amendment 606 #

Proposal for a regulation
Article 40 – paragraph 2

2. The day following the notification of the acceptance to the parties, the panel of conciliators is appointed, and the competence centre shall refer the case to ~~him/her~~it.

Amendment 607 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 42 – paragraph 1

1. After the case is referred to the panel of conciliators in accordance with Article 40(2), the~~/she~~ panel shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure.

Amendment 608 #

Proposal for a regulation
Article 42 – paragraph 1

1. After the case is referred to the panel of conciliators in accordance with Article 40(2), ~~he/she~~it shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure.

Amendment 609 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 610 #

Proposal for a regulation
Article 42 – paragraph 2

2. ~~He/she~~The panel 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 611 #

Proposal for a regulation
Article 42 – paragraph 2

2. ~~He/she~~The panel 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 612 #

Proposal for a regulation
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 613 #

Proposal for a regulation
Article 43 – paragraph 1

The panel of conciliators shall invite each party to file written submissions setting out its arguments concerning the determination of the applicable FRAND terms and conditions, including supporting documentation and evidence, and set appropriate time limits.

Amendment 614 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 44 – paragraph 1

1. A party may submit an objection stating that the panel of conciliators 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 one month following the first written submission. The other party shall be given opportunity to submit its observations.

Amendment 615 #

Proposal for a regulation
Article 44 – paragraph 1

1. A party may submit an objection stating that ~~the~~panel of conciliators 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. The other party shall be given opportunity to submit its observations.

Amendment 616 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 44 – paragraph 1

Amendment 617 #

Proposal for a regulation
Article 44 – paragraph 2

2. The panel of conciliators shall decide on the objection and either reject it as unfounded before considering the merits of the case or join it to the examination of the merits of the FRAND determination. If the panel of conciliators overrules the objection or joins it to the examination of the merits of the determination of FRAND terms and conditions, it shall resume consideration of the determination of FRAND terms and conditions.

Amendment 618 #

Proposal for a regulation
Article 44 – paragraph 2

Amendment 619 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 44 – paragraph 3

3. If the panel of conciliators decides that the objection is founded, it shall terminate the FRAND determination and shall draw up a report stating the reasons of the decision.

Amendment 620 #

Proposal for a regulation
Article 44 – paragraph 3

3. If the panel of conciliators decides that the objection is founded, it shall terminate the FRAND determination and shall draw up a report stating the reasons of the decision.

Amendment 621 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 45 – paragraph 1

1. The panel of conciliators shall assist the parties in an independent and impartial manner in their endeavour to reach a determination of FRAND terms and conditions.

Amendment 622 #

Proposal for a regulation
Article 45 – paragraph 1

1. The panel of conciliators shall assist the parties in an independent and impartial manner in their endeavour to reach a determination of FRAND terms and conditions.

Amendment 623 #

Proposal for a regulation
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 624 #

Proposal for a regulation
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 625 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 45 – paragraph 2

2. The panel of conciliators may invite the parties or the party requesting the continuation of the FRAND determination to meet with ~~him/her~~them or may communicate with him/her orally or in writing.

Amendment 626 #

Proposal for a regulation
Article 45 – paragraph 2

2. The panel of conciliators may invite the parties or the party requesting the continuation of the FRAND determination to meet with ~~him/her~~it or may communicate with ~~him/her~~it orally or in writing.

Amendment 627 #

Proposal for a regulation
Article 45 – paragraph 3

Amendment 628 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 45 – paragraph 3

3. The parties ~~or the party requesting 3. 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 629 #

Proposal for a regulation
Article 45 – paragraph 3

3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the panel of conciliators and, in particular, shall attend the meetings, comply with ~~his/her~~its requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the panel of conciliators to hear witnesses and experts whom the conciliator might call.

Amendment 630 #

Proposal for a regulation
Article 45 – paragraph 3

3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the panel of conciliators and, in particular, shall attend the meetings, comply with ~~his/her~~the panel’s requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the ~~conciliator~~panel to hear witnesses and experts whom the ~~conciliator~~panel might call.

Amendment 631 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 45 – paragraph 4

~~4. The responding party may join the FRAND determination at any moment before its termination.~~deleted

Amendment 632 #

Proposal for a regulation
Article 45 – paragraph 4

~~4. The responding party may join the FRAND determination at any moment before its termination.~~deleted

Amendment 633 #

Proposal for a regulation
Article 45 – paragraph 5

Amendment 634 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 45 – paragraph 5

Amendment 635 #

Proposal for a regulation
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 panel of conciliators shall terminate the FRAND determination.

Amendment 636 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 46 – paragraph 1 – point a

(a) fails to comply with any request of the panel of conciliators, Rrules of procedure or schedule of procedure referred to in Article 42(2), or

Amendment 637 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 46 – paragraph 1 – point a

(a) fails to comply with any request of the panel of conciliators, Rules of procedure or schedule of procedure referred to in Article 42(2),

Amendment 638 #

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 639 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 640 #

Proposal for a regulation
Article 46 – paragraph 1 – point b

~~(b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or~~deleted

Amendment 641 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 46 – paragraph 1 – concluding part

the panel of conciliators shall inform both parties thereof.

Amendment 642 #

Proposal for a regulation
Article 46 – paragraph 1 – concluding part

the panel of conciliators shall inform both parties thereof.

Amendment 643 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 46 – paragraph 2 – introductory part

2. Having received the notification of the panel of conciliators about the failure of the concerned party, the complying party may ask the ~~conciliator~~panel to take one of the following actions:

Amendment 644 #

Proposal for a regulation
Article 46 – paragraph 2 – introductory part

2. Having received the notification of the panel of conciliators, the complying party may ask the panel of conciliators to take one of the following actions:

Amendment 645 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
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 646 #

Proposal for a regulation
Article 46 – paragraph 3

Amendment 647 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 46 – paragraph 3

Amendment 648 #

Proposal for a regulation
Article 46 – paragraph 3

3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the panel of conciliators or in any other way fails to comply with a requirement relating to the FRAND determination, the panel of conciliators shall terminate the procedure.

Amendment 649 #

Proposal for a regulation
Article 46 – paragraph 3

3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the panel of conciliators or in any other way fails to comply with a requirement relating to the FRAND determination, the ~~conciliator~~panel shall terminate the procedure.

Amendment 650 #

Proposal for a regulation
Article 47 – paragraph 2

2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the conciliator, or where he/she has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any other party. If the other party chooses to pursue the proceeding, the resulting FRAND determination shall be binding throughout the EU, notwithstanding parallel proceedings in the third country.

Amendment 651 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 47 – paragraph 2

2. Where a parallel proceeding relating to the concerned SEP has been initiated before or during the FRAND determination by a party , the panel of conciliators, or where he/she the panel has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any other party.

Amendment 652 #

Proposal for a regulation
Article 47 – paragraph 2

2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the panel of conciliators, or where ~~he/she~~it has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any other party with the consent of the other party.

Amendment 653 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 47 – paragraph 2

Amendment 654 #

Proposal for a regulation
Article 48 – paragraph 1

1. Without prejudice to the protection of confidentiality in accordance with Article 54(3) at any time during the FRAND determination, at the request of a party or on its own motion, the panel of conciliators may request the production of documents or other evidence.

Amendment 655 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 48 – paragraph 1

Amendment 656 #

Proposal for a regulation
Article 48 – paragraph 2

2. The panel of conciliators may examine publicly available information and the competence centre’s register and confidential and non-confidential reports of other FRAND determinations, aggregate royalty rates submitted pursuant to Article 15, non-binding expert opinions on aggregate royalty rates established pursuant to Article 18 as well as other non-confidential documents and information produced by or submitted to the competence centre.

Amendment 657 #

Proposal for a regulation
Article 48 – paragraph 2

Amendment 658 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 49

The panel of conciliators may hear witnesses and experts requested by either party provided that the evidence is necessary for the FRAND determination and that there is time to consider such evidence.

Amendment 659 #

Proposal for a regulation
Article 49

Amendment 660 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 50 – paragraph 1

1. At any time during the FRAND determination, the panel of conciliators or a party on its own motion or by invitation of the panel of conciliators may submit proposals for a determination of FRAND terms and conditions.

Amendment 661 #

Proposal for a regulation
Article 50 – paragraph 1

1. At any time during the FRAND determination, the panel of conciliators or a party on its own motion or by invitation of the ~~conciliator~~panel may submit proposals for a determination of FRAND terms and conditions

Amendment 662 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 50 – paragraph 2

2. If the requesting party has submitted a written proposal for FRAND terms and conditions in its written submission, the responding party shall be given opportunity to comment on it and/or submit a written counter-proposal in its reply within 30 days of the date of the written proposal of the requesting party.

Amendment 663 #

Proposal for a regulation
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 664 #

Proposal for a regulation
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 665 #

Proposal for a regulation
Article 50 – paragraph 3

3. When submitting suggestions for FRAND terms and conditions, the panel of conciliators 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 panel of conciliators 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 666 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 binding 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 667 #

Proposal for a regulation
Article 51 – title

Recommendation of a determination of FRAND terms and conditions by the panel of conciliators

Amendment 668 #

Proposal for a regulation
Article 51 – title

Recommendation of a determination of FRAND terms and conditions by the panel of conciliators

Amendment 669 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 51 – paragraph 1

The panel of conciliators shall notify the parties a written recommendation of a determination of FRAND terms and conditions at the latest 5 months before the time limit referred to in Article 37.

Amendment 670 #

Proposal for a regulation
Article 51 – paragraph 1

The panel of conciliators shall notify the parties a written recommendation of a determination of FRAND terms and conditions at the latest 5 months before the time limit referred to in Article 37.

Amendment 671 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 52 – paragraph 1

Following the notification of the written recommendation of FRAND terms and conditions by the panel of conciliators, either party shall submit a detailed and reasoned proposal for a determination of FRAND terms and conditions. If a party has already submitted a proposal for the determination of FRAND terms and conditions, revised versions shall be submitted, if necessary, taking into account the recommendation of the panel of conciliators.

Amendment 672 #

Proposal for a regulation
Article 52 – paragraph 1

Amendment 673 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 53 – paragraph 1

If the panel of conciliators considers it necessary or if a party so requests, an oral hearing shall be held within 20 days after the submission of reasoned proposals for determination of FRAND terms and conditions.

Amendment 674 #

Proposal for a regulation
Article 53 – paragraph 1

Amendment 675 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 54 – paragraph 1

1. When the panel of conciliators receives information for the purposes of FRAND determination from a party, it shall disclose it to the other party so that the other party has the opportunity to present any explanation.

Amendment 676 #

Proposal for a regulation
Article 54 – paragraph 1

Amendment 677 #

Proposal for a regulation
Article 54 – paragraph 1

Amendment 678 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 54 – paragraph 2

2. A party may request the panel of conciliators that specific information in a submitted document is kept confidential. Rules governing the protection of confidential information shall be established such that a party’s confidential information may be shared with outside counsel and experts for the other party, provided appropriate undertakings are signed by such experts and outside counsel to ensure that the information will be maintained as confidential.

Amendment 679 #

Proposal for a regulation
Article 54 – paragraph 2

2. A party may request the panel of conciliators that specific information in a submitted document is kept confidential.

Amendment 680 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 54 – paragraph 3

3. When a party requests the information in a document it had submitted to be kept confidential, the panel of conciliators shall not disclose that information only to the other party’s outside counsel and outside experts who have signed an appropriate confidentiality obligation. The party invoking confidentiality shall also provide a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. This non-confidential version shall be disclosed to the other party.

Amendment 681 #

Proposal for a regulation
Article 54 – paragraph 3

3. When a party requests the information in a document it had submitted to be kept confidential, the panel of conciliators shall not disclose that information to the other party. The party invoking confidentiality shall also provide a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. This non-confidential version shall be disclosed to the other party.

Amendment 682 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 55 – title

Reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators

Amendment 683 #

Proposal for a regulation
Article 55 – title

Reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators

Amendment 684 #

Proposal for a regulation
Article 55 – paragraph 1

Amendment 685 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 55 – paragraph 1

Amendment 686 #

Proposal for a regulation
Article 55 – paragraph 1

1. At the latest 45 days before the end of the time limit referred to in Article 37, the panel of conciliators 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 687 #

Proposal for a regulation
Article 55 – paragraph 1

Amendment 688 #

Proposal for a regulation
Article 55 – paragraph 2

Amendment 689 #

Proposal for a regulation
Article 55 – paragraph 2

Amendment 690 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 55 – paragraph 2

2. Either party may submit observations to the proposal and suggest amendments to the proposal by the panel of conciliators, 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 691 #

Proposal for a regulation
Article 55 – paragraph 2

Amendment 692 #

Proposal for a regulation
Article 55 – paragraph 2

2. Either party may submit observations to the proposal and suggest amendments ~~to the proposal~~within a deadline set 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 693 #

Proposal for a regulation
Article 55 – paragraph 2 a (new)

2a. The conciliator shall promptly notify the parties that its proposal, after reformulation where applicable, is now final and constitutes a binding decision for the parties as regards the FRAND terms and conditions to be applied.

Amendment 694 #

Proposal for a regulation
Article 55 – paragraph 2 b (new)

2b. The SEP holders or an implementer who consider the binding determination by the conciliator of the FRAND terms and conditions to be incorrect may appeal to the Boards of Appeal of the EUIPO. The application must be made within two months of the publication of the conciliator’s decision. The Boards of Appeal of the EUIPO shall determine the FRAND terms and conditions in a reasoned decision, which shall be binding on the SEP holders and the implementer. The decision shall be notified to the SEP holders and the implementer.

Amendment 695 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 56 – paragraph 1 – introductory part

Amendment 696 #

Proposal for a regulation
Article 56 – paragraph 1 – introductory part

Amendment 697 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 56 – paragraph 1 – point b

(b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55;

Amendment 698 #

Proposal for a regulation
Article 56 – paragraph 1 – point b

(b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55;

Amendment 699 #

Proposal for a regulation
Article 56 – paragraph 1 – point c

~~c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the conciliator referred to in Article 55;~~deleted

Amendment 700 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 56 – paragraph 1 – point c

(c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55;

Amendment 701 #

Proposal for a regulation
Article 56 – paragraph 1 – point c

(c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55;

Amendment 702 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 56 – paragraph 1 – point d

d~~) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the conciliator referred to in Article 55.~~eleted

Amendment 703 #

Proposal for a regulation
Article 56 – paragraph 1 – point d

(d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55.

Amendment 704 #

Proposal for a regulation
Article 56 – paragraph 1 – point d

(d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55.

Amendment 705 #

Proposal for a regulation
Article 56 – paragraph 1 – point d a (new)

(da) A binding FRAND determination agreed between parties pursuant to Article 38(4) shall terminate when the conciliator makes its final seasoned proposal under Article 55.

Amendment 706 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
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 707 #

Proposal for a regulation
Article 56 – paragraph 4

Amendment 708 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 56 – paragraph 4

Amendment 709 #

Proposal for a regulation
Article 56 – paragraph 4

4. 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)~~.

Amendment 710 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 56 – paragraph 5

~~5. In the cases foreseen in Article 38(3)(b) and in Article 38(4)(c), Article 34(5) shall apply mutatis mutandis in the proceedings before a competent court of a Member State.~~deleted

Amendment 711 #

Proposal for a regulation
Article 56 – paragraph 5

~~5. In the cases foreseen in Article 38(3)(b) and in Article 38(4)(c), Article 34(5) shall apply mutatis mutandis in the proceedings before a competent court of a Member State.~~deleted

Amendment 712 #

Proposal for a regulation
Article 57 – title

~~Rapport~~Publication and use of the FRAND determination

Amendment 713 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 57 – paragraph 1

~~1. The conciliator shall provide the parties with a written report following the termination of the FRAND determination in cases listed in Article 56(1), point (c) and Article 56(1), point (d).~~deleted

Amendment 714 #

Proposal for a regulation
Article 57 – paragraph 1

1. The panel of conciliators shall provide the parties with a written report following the termination of the FRAND determination in cases listed in Article 56(1), point (c) and Article 56(1), point (d).

Amendment 715 #

Proposal for a regulation
Article 57 – paragraph 1

Amendment 716 #

Proposal for a regulation
Article 57 – paragraph 2 – introductory part

~~2. The report shall include the following:~~deleted

Amendment 717 #

Proposal for a regulation
Article 57 – paragraph 2 – point a

~~a) the names of the parties;~~deleted

Amendment 718 #

Proposal for a regulation
Article 57 – paragraph 2 – point b

~~b) a confidential assessment of the FRAND determination;~~deleted

Amendment 719 #

Proposal for a regulation
Article 57 – paragraph 2 – point c

~~c) confidential summary of the main issues of disagreement;~~deleted

Amendment 720 #

Proposal for a regulation
Article 57 – paragraph 2 – point d

d~~) a non-confidential methodology and the assessment of the determination of FRAND terms and conditions by the conciliator.~~eleted

Amendment 721 #

Proposal for a regulation
Article 57 – paragraph 2 – point d

(d) a non-confidential methodology and the assessment of the determination of FRAND terms and conditions by ~~the~~each conciliator on the panel of conciliators.

Amendment 722 #

Proposal for a regulation
Article 57 – paragraph 3

3. The ~~confidential report~~final proposal of the conciliator determining the FRAND terms and conditions and, where applicable, the decision of the Boards of Appeal shall be a~~vaila~~ccessible only to the parties and to the competence centre. The competence centre shall publish ~~the~~ non-confidential ~~report~~versions in the database.

Amendment 723 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 57 – paragraph 4

4. Either party to the FRAND determination may file the ~~report~~final proposal of the conciliator determining the FRAND terms and conditions and, where applicable, the decision of the Boards of Appeal in any proceedings before a competent court of a Member State against the other party to the FRAND determination, notwithstanding any procedural bar.

Amendment 724 #

Proposal for a regulation
Article 58 – paragraph 1

1. Except the methodology and the assessment of the FRAND determination by the panel of conciliators referred to in Article 57(2), point (d), the competence centre shall keep confidential the determination of FRAND terms and conditions, any proposals for determination of FRAND terms and conditions submitted during the procedure and any documentary or other evidence disclosed during the FRAND determination which is not publicly available, unless otherwise provided by the parties.

Amendment 725 #

Proposal for a regulation
Article 58 – paragraph 2

2. Notwithstanding paragraph (1), the competence centre may include information concerning the FRAND determination in any aggregate statistical data that it publishes concerning its activities~~, provided that such information does not allow identification the parties or the particular circumstances of the dispute to be identified~~.

Amendment 726 #

Proposal for a regulation
Article 60 – paragraph 1

1. Time limits shall be laid down in terms of full years, months, weeks or days. Calculation shall start on the day following the day on which the relevant event occurred. The period specified in days ends on the last day, a period marked in weeks ends at the end of the day in the last week, a period specified in months ends on the expiry of the day corresponding to the initial day of the period, and if there was no such day in the last month - then on the last day of that month, a period marked in years ends on the expiry of the day corresponding to the initial day of a given period, and if there was no such day, the end date will be the last day of that month.

Amendment 727 #

Proposal for a regulation
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 728 #

Proposal for a regulation
Article 61 – paragraph 1

1. The competence centre shall offer training, guidance and support on SEP related matters for micro, small and medium-size enterprises free of charge. To offer these trainings, the competence centre can work together with the Commission, national patent offices and governmental schemes.

Amendment 729 #

Proposal for a regulation
Article 61 – paragraph 1 a (new)

1a. The competence centre will maintain a list all the relevant existing patent pools for the various standards and facilitate establishing contacts between those patent pools and SMEs.

Amendment 730 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
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 731 #

Proposal for a regulation
Article 61 – paragraph 3 a (new)

3a. This Article shall not apply to patent assertion entities irrespective of their status as a micro, small or medium- sized enterprise.

Amendment 732 #

Proposal for a regulation
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 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 734 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 61 a (new)

Article61a Judicial and financial support 1. Competent courts of Member States and the Unified Patent Court shall ensure that the court fees do not exceed the fee of registering a patent. 2. A relevant part of the patent application fee shall contribute to an insurance to ensure that the relevant natural and legal persons receive, under certain conditions, free of charge judicial support, such as a legal representative during court proceedings.

Amendment 735 #

Proposal for a regulation
Article 62 – paragraph 1

1. When negotiating a SEP licence with micro, small and medium-sized enterprises, SEP holders shall ~~consider offering to~~offer them FRAND terms and conditions that ~~are more favourable than the FRAND terms and conditions they offer to enterprises that are not micro, small and medium-sized for the same standard and implementations~~take account of the economic capacity of the micro, small and medium-sized enterprises in line with their obligation to ensure that the terms and conditions are fair, reasonable and non-discriminatory.

Amendment 736 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 62 – paragraph 1

Amendment 737 #

Proposal for a regulation
Article 62 – paragraph 2

2. IfWhen a SEP holder ~~offer~~concludes a SEP licence that includes more favourable ~~FRAND~~ terms and conditions t~~o micro, small and medium-sized enterprises, or concludes a SEP licence that includes more favourable terms and conditions,~~han those offered to companies that are not a micro, small or medium-sized enterprise pursuant to paragraph (1), such FRAND terms and conditions shall not be considered in a FRAND determination, unless the FRAND determination is conducted solely with regard to FRAND terms and conditions for another micro, small or medium-sized enterprise.

Amendment 738 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 62 – paragraph 3

Amendment 739 #

Proposal for a regulation
Article 62 – paragraph 3 a (new)

3a. Where a SEP holder can demonstrate that the FRAND terms and conditions offered to one or more micro, small or medium-sized enterprises are more favourable than FRAND terms and conditions offered to companies that are not a micro, small or medium-sized enterprise, they shall not be subject to the obligations of Title IV of this Regulation in relation to the SEP license offered to these micro, small or medium-sized enterprises.

Amendment 740 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 63 – paragraph 2 – point a

~~(a) for the conciliators facilitating agreements on aggregate royalty determinations in accordance with Article 17;~~deleted

Amendment 741 #

Proposal for a regulation
Article 63 – paragraph 2 – point a

~~(a) for the conciliators facilitating agreements on aggregate royalty determinations in accordance with Article 17;~~deleted

Amendment 742 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 63 – paragraph 2 – point b

~~(b) for the expert opinion on aggregate royalty in accordance with Article 18;~~deleted

Amendment 743 #

Proposal for a regulation
Article 63 – paragraph 2 – point b

~~(b) for the expert opinion on aggregate royalty in accordance with Article 18;~~deleted

Amendment 744 #

Proposal for a regulation
Article 63 – paragraph 2 – point c

~~(c) for the essentiality check carried out by the evaluator in accordance with Article 31 and by the peer evaluator in accordance with Article 32;~~deleted

Amendment 745 #

Proposal for a regulation
Article 63 – paragraph 2 – point c

(c) for the ~~essentiality check carried out by the evaluator in accordance with Article 31 and by the peer evaluator~~technical conciliation procedure in accordance with Article 328;

Amendment 746 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 63 – paragraph 3 – point a

~~(a) the fees referred to in paragraph (2), point (a) by the SEP holders that participated in the process based on their estimated percentage of SEPs from all SEPs for the standard;~~deleted

Amendment 747 #

Proposal for a regulation
Article 63 – paragraph 3 – point a

~~(a) the fees referred to in paragraph (2), point (a) by the SEP holders that participated in the process based on their estimated percentage of SEPs from all SEPs for the standard;~~deleted

Amendment 748 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 63 – paragraph 3 – point b

Amendment 749 #

Proposal for a regulation
Article 63 – paragraph 3 – point b

Amendment 750 #

Proposal for a regulation
Article 63 – paragraph 3 – point c

(c) the fees referred to in paragraph (2), point (c) by the SEP holder that requested an essentiality check pursuant to Article 29(5) or peer evaluation pursuant to Article 32(1) and the implementer that requested an essentiality check pursuant to Article 29(6);deleted

Amendment 751 #

Proposal for a regulation
Article 63 – paragraph 3 – point c

(c) (c) the fees referred to in paragraph (2), point (c) by the SEP holder that requested an essentiality check pursuant to Article 29(5) or peer evaluation pursuant to Article 32(1) and the implementer that requested an essentiality check pursuant to Article 29(6);, shall be divided equally by the parties that participated the procedure. If SMEs are involved, the competence centre shall consider offering the procedure for free or for a reduced fee for such SMEs.

Amendment 752 #

Proposal for a regulation
Article 63 – paragraph 5

5. By [OJ: please insert the date = 182 months from entry into force of this Regulation], the Commission shall adopt an implementing act determining the amounts of the fees referred to in Article 63, the arrangement concerning the payment methods related to the rules set out in paragraph (3) and paragraph (4) of this Article. The implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).

Amendment 753 #

Proposal for a regulation
Article 64 – paragraph 2

Amendment 754 #

Tiemo WÖLKEN, Ibán GARCÍA DEL BLANCO, René REPASI, Maria-Manuel LEITÃO-MARQUES

Proposal for a regulation
Article 64 – paragraph 2

Amendment 755 #

Proposal for a regulation
Article 66

1. 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 3. 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereArticle 66 deleted Opening registration for an existing standard Until [OJ: please insert the date = Until [OJ: please insert the date = Where the functioning of, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. 4. 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. 5. prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].e This article shall apply without

Amendment 756 #

Catharina RINZEMA, Bart GROOTHUIS, Annie SCHREIJER-PIERIK, Antonius MANDERS

Proposal for a regulation
Article 66

1. 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in theArticle 66 delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 2. 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this RegulOpening registration, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 3. 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. 4. 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. 5. This article shall apply without prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].an existing standard Until [OJ: please insert the date = Until [OJ: please insert the date = Until [OJ: please insert the date = Where the functioning of the

Amendment 757 #

Proposal for a regulation
Article 66

1. 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in theArticle 66 delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 2. 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this RegulOpening registration, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. 3. 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. 4. 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 of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. 5. This article shall apply without prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].an existing standard Until [OJ: please insert the date = Until [OJ: please insert the date = Until [OJ: please insert the date = Where the functioning of the

Amendment 758 #

Proposal for a regulation
Article 66 – paragraph 1

1. Until [OJ: please insert the date = 284 months from the entry into force of this regulation] ~~implementers of a standard,~~holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14~~(4) the competence centre~~, 15 and 17 of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis.

Amendment 759 #

Proposal for a regulation
Article 66 – paragraph 2

2. Until [OJ: please insert the date = 284 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis.

Amendment 760 #

Proposal for a regulation
Article 66 – paragraph 3

3. Until [OJ: please insert the date = 3024 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis.

Amendment 761 #

Proposal for a regulation
Article 66 – paragraph 4

Amendment 762 #

Proposal for a regulation
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.

Amendment 763 #

Proposal for a regulation
Article 67 – paragraph 2

2. The power to adopt a delegated act referred to in Articles 1(4), 4(5), 13.a (new) and 66(4) shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation.

Amendment 764 #

Proposal for a regulation
Article 67 – paragraph 2

2. The power to adopt a delegated act referred to in Articles 1(4)2, 4(5) and ~~66(4~~4(5) shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation.

Amendment 765 #

Proposal for a regulation
Article 67 – paragraph 3

3. The delegation of power referred to in Articles 1(4), 4(5), 13.a (new) and 66(4) may be revoked at any time by the European Parliament or by the Council. A decision to revoke shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force.

Amendment 766 #

Proposal for a regulation
Article 67 – paragraph 3

3. The delegation of power referred to in Articles 1(4)2, 4(5) and ~~66(4~~4(5) may be revoked at any time by the European Parliament or by the Council. A decision to revoke shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force.

Amendment 767 #

Proposal for a regulation
Article 67 – paragraph 6

6. A delegated act adopted pursuant to Articles 1(4), 4(5), 13.a (new) and 66(4) shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or of the Council.

Amendment 768 #

Proposal for a regulation
Article 67 – paragraph 6

6. A delegated act adopted pursuant to Articles 1(4)2, 4(5) and ~~66(4~~4(5) shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or of the Council.

Amendment 769 #

Proposal for a regulation
Article 70 – paragraph 1

Amendment 770 #

Proposal for a regulation
Article 70 – paragraph 1

Amendment 771 #

Proposal for a regulation
Article 70 – paragraph 1 a (new)

1a. By ... [OJ: please insert the date = 4 years from entry into force of this regulation], the Commission shall evaluate the impact of the essentiality check system, the aggregate royalties determination system and the FRAND determination system, in particular on the competitiveness of EU SEP holders on a global level and on innovation in the EU.

Amendment 772 #

Proposal for a regulation
Article 70 – paragraph 2

2. By [OJ: please insert the date = 85 years from entry into force of this regulation], and every ~~fiv~~three years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods.

Amendment 773 #

Proposal for a regulation
Article 70 – paragraph 2

Amendment 774 #

Proposal for a regulation
Article 70 – paragraph 2

2. By [OJ: please insert the date = 85 years from entry into force of this regulation], and every five years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods.

Amendment 775 #

Proposal for a regulation
Article 72 – paragraph 1

1. This Regulation shall only enter into force ~~on the twentieth day following that of its publication in the Official Journal of the European Union.~~after:

Amendment 776 #

Proposal for a regulation
Article 72 – paragraph 1 – point a (new)

(a) the Commission has beyond reasonable doubt shown that the functioning of the current system causes major disruption in the internal market, and therefore justifying the measures proposed in this Regulation; and

Amendment 777 #

Proposal for a regulation
Article 72 – paragraph 1 – point b (new)

(b) the European Patent Office has been consulted and following this consultation this Regulation has been amended accordingly; and

Amendment 778 #

Proposal for a regulation
Article 72 – paragraph 1 – point c (new)

(c) the Unified Patent Court has been consulted and following this consultation this Regulation has been amended accordingly.

Amendment 779 #

Proposal for a regulation
Article 72 – paragraph 1 – subparagraph 1 (new)

This Regulation shall enter into force on the twentieth day following that of its publication in the Official Journal of the European Union.

Amendment 780 #