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What changed

From · opinion parliamentary committee · 2023-12-04 INTA-AD-753729 on the Proposal for a Regulation of the European Parliament and of the Council on Standard essential patents and amending Regulation (EU)2017/1001
To · opinion parliamentary committee draft · 2023-10-02 INTA-PA-753729 on the Proposal for a Regulation of the European Parliament and of the Council on Standard essential patents and amending Regulation (EU)2017/1001
+453 added · −30 removed · 194 modified paragraphs

Amendment 1

Proposal for a regulationRegulation

Recital 2

Amendment 2

Proposal for a regulation

Recital 3

Amendment 3

Or. en

Proposal for a regulation

Justification

The amendments reflects the fact that the European Union competence and jurisdiction is limited to European patents, and as such the Union does not have jurisdiction in respect of patent rights granted by non-EU states.

Amendment 2

Proposal for a Regulation

Recital 4

Amendment 4

Or. en

Proposal for a regulation

Justification

The proposed Regulation is based on the understanding that there are concerns about SEP licensing and, in particular, about SEP licensing in future IoT industries. However, current evidence is inconclusive (see the "Empirical Assessment"), and the proposed measures are therefore in contrast with the Better Regulation principles, which require that any intervention in the markets is evidence-based. The Regulation should therefore not apply where significant difficulties or inefficiencies are not observed.

Amendment 3

Proposal for a Regulation

Recital 5

Or. en

Justification

Considering that there is no evidence of market failure in the impact assessment, the recital should be deleted and, more generally, there should not be retroactive effect (unless duly justified).

Amendment 4

Proposal for a Regulation

Recital 6

Or. en

Justification

The recital lacks a clear rationale and a clear scope. Regulations need total clarity as not to create legal uncertainty.

Amendment 5

Proposal for a regulationRegulation

Recital 8

Or. en

Justification

The amendments reflects the fact that the European Union competence and jurisdiction is limited to European patents, and as such the Union does not have jurisdiction in respect of patent rights granted by non-EU states.

Amendment 6

Proposal for a regulationRegulation

Recital 1310

Or. en

Justification

Determination of validity and infringement of patent procedures are a prerequisite to any EU court determination of FRAND terms. It should therefore not be delayed by the FRAND determination procedure as provided in the COM Proposal.

Amendment 7

Proposal for a regulationRegulation

Recital 1513

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 8

Proposal for a regulationRegulation

Recital 1615

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 9

Proposal for a regulationRegulation

Recital 1816

Or. en

Justification

A provision for SEP holders to collectively set an aggregate royalty for their SEPs risks a breach of competition law principles. The aggregate royalty may, in any event, be calculated from individual rates that SEP holders are encouraged to publish. The determination of an aggregate royalty for an entire standard and specific use cases that the Commission proposes is fraught with difficulty and it has so far only been attempted a few times by national courts outside the EU. The few such cases have so far clearly demonstrated that the determination of an aggregate royalty for SEPs is a task that belongs to the courts of law. More generally, the Commission proposal appears to allow top-down price regulation, which is an infringement of Union principles unless there is a clear evidence of market failure (which in this case is absent). This provision should therefore be removed.

Amendment 10

Proposal for a regulationRegulation

Recital 2018

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 11

Proposal for a regulationRegulation

Recital 2220

Or. en

Justification

This provision is not compatible with the fundamental property right, granted under Article 17(2) of the Charter of Fundamental Rights of the European Union (2000/C 364/01) TFEU, namely the right to damages, and its non-observance should not be allowed merely in order to encourage compliance with an administrative procedure. It also runs counter Article13(1) of the Enforcement Directive (2004/48/EC).

Amendment 12

Proposal for a regulationRegulation

Recital 2623

Or. en

Justification

The EUIPO is not a court. Removal from the register renders a patent unenforceable.

Amendment 13

Proposal for a regulationRegulation

Recital 3325

Or. en

Justification

Essentiality checks are highly time consuming and it would be a too big work burden to redo annually.

Amendment 14

Proposal for a regulationRegulation

Recital 3426

Or. en

Justification

The scope for implementers to each nominate up to 100 patents per year for essentiality checking has the potential to overwhelm the competence centre and could be used to "game" the system and cause further delays to licensing.

Amendment 15

Proposal for a regulationRegulation

Recital 3530

Or. en

Amendment 16

Proposal for a regulationRegulation

Recital 3633

Or. en

Justification

The Regulation should not affect access to courts which should remain available during FRAND determination.

Amendment 17

Proposal for a regulationRegulation

Recital 4034

Or. en

Justification

The one-sided continuation can be used in bad faith to cause further delay without risk. Furthermore, because a one-sided continuation is inherently unreliable and will be biased against the absent party, it is effectively a punitive measure. It seems inappropriate to introduce punitive measures in this Regulation.

Amendment 18

Proposal for a regulationRegulation

Recital 4435

Or. en

Justification

Commitment to comply is not binding and can be manipulated according to one's own interests. Validity and infringement need to be addressed at the same time as FRAND determination. This provision further assists a bad faith one-sided continuation by placing the continuing party at a litigation advantage. Manipulation of the litigation positions, i.e. respective access to justice, to encourage use of this procedure is inadvisable for the reasons given above and is probably unlawful. A defence of lack of essentiality or invalidity takes time to conclude; this is another reason why the FRAND determination should proceed in parallel with any court proceedings.

Amendment 19

Proposal for a regulationRegulation

Recital 4537

Or. en

Justification

This AM is needed for consistency with the idea that both parties have to agree to continue the FRAND determination (no one-sided continuation).

Amendment 20

Proposal for a regulationRegulation

Recital 4640

Or. en

Justification

It should be allowed to any party to make the request to terminate the procedure.

Amendment 21

Proposal for a regulationRegulation

Recital 4742

Or. en

Justification

The cases mentioned in footnote 40 concerned consumer disputes with service providers under the Universal Services Directive. The CJEU held that a delay of 30 days for a mandatory dispute resolution procedure, in which there were no fees charged and the procedure itself was "transparent simple and inexpensive", was not unlawful, provided that interim measures remained available where necessary. This was in the context of reducing the workload on the courts concerning consumer debt for universal services, and the cases did not concern property rights of any kind and are not comparable to the context of this Regulation.Case C-75/16 similarly concerns consumer disputes with traders and a mandatory mediation scheme intended to protect consumers, and the outcome of that case is, once more, not comparable with the scheme proposed in the Regulation.

Amendment 22

Proposal for a regulationRegulation

Recital 4844

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 23

Proposal for a regulationRegulation

Recital 4946

Or. en

Justification

The European Commission has been actively promoting and funding the participation of European SMEs in EU standards efforts and the patenting of their inventions. This regulation should be consistent with this policy, and it should seek to promote European technological ambitions, including fostering the growth of EU technology champions.

Amendment 24

Proposal for a regulationRegulation

Article 1 – paragraph 2

Recital 47

Or. en

Justification

Only use cases to the extent there is proof that they do not give rise to inefficiencies.

Amendment 25

Proposal for a regulationRegulation

Article 1 – paragraph 3

Recital 48

Or. en

Justification

Only future standard and use cases should be covered in this Regulation, in order to ensure legal certainty.

Amendment 26

Proposal for a regulationRegulation

Article 1 – paragraph 4

Recital 49

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 27

Proposal for a regulationRegulation

Article 1 – paragraph 52 – introductory part

Or. en

Justification

The Regulation should apply to future standards, to have legal certainty.

Amendment 28

Proposal for a regulationRegulation

Article 21 – paragraph 12 – point 1a

Or. en

Amendment 29

Proposal for a regulationRegulation

Article 21 – paragraph 12 – point 7b

Or. en

Amendment 30

Proposal for a regulationRegulation

Article 2 – paragraph 1 – pointparagraph 103

Or. en

Justification

Paragraph no longer necessary under the revised structure.

Amendment 31

Proposal for a regulationRegulation

Article 2 – paragraph 1 – pointparagraph 164

Or. en

Justification

The proposed Regulation is based on the understanding that there are concerns about SEP licensing and, in particular, about SEP licensing in future IoT industries. However, current evidence is inconclusive (see the "Empirical Assessment"), and the proposed measures are therefore in contrast with the Better Regulation principles, which require that any intervention in the markets is evidence-based. The Regulation should therefore not apply where significant difficulties or inefficiencies are not observed.

Amendment 32

Proposal for a regulationRegulation

Article 32 – paragraph 21 – point f1

Or. en

Justification

The Regulation cannot extend beyond European patents that are essential and for which a FRAND commitment has been made.

Amendment 33

Proposal for a regulationRegulation

Article 32 – paragraph 31 – point 7

Or. en

Justification

Unless an implementer intends to use inventions that are protected by a European patent the implementer has no legal nexus with the European Union (unless they are resident in a Member State).

Amendment 34

Proposal for a regulationRegulation

Article 42 – paragraph 41 – point c10

Or. en

Justification

No longer necessary under the revised structure.

Amendment 35

Proposal for a regulationRegulation

Article 42 – paragraph 41 – point f11

Or. en

Justification

See definition of SEP.

Amendment 36

Proposal for a regulationRegulation

Article 52 – paragraph 21 – point d15

Or. en

Justification

No longer necessary under the revised structure.

Amendment 37

Proposal for a regulationRegulation

Article 52 – paragraph 21 – point g16

Or. en

Justification

The current text of the definition of "patent family" is very difficult to implement because "cover the same invention" is open to interpretation and has a subjective element. The definition has important effects – see footnote 60 at page 68 of the Pilot Study for Essentiality Assessment of Standard Essential Patents published by the JRC – we therefore suggest using the ETSI patent family definition.

Amendment 38

Proposal for a regulationRegulation

Article 53 – paragraph 2 – point hf

Or. en

Amendment 39

Proposal for a Regulation

Article 64 – paragraph 13 – point c

Or. en

Justification

Data expressed by numerical values such as royalty rates, product volumes, etc cannot be reduced to a non-confidential form.

It is unnecessary, burdensome and costly to require identification of all sections for which the standard is essential. Such a provision is likely to lead to further litigation and is not necessary for the purposes of establishing whether a patent is essential and therefore required to be licensed.

Amendment 40

Proposal for a regulationRegulation

Article 74 – paragraph 14 a (new)point b

Or. en

Justification

The COM proposal seems to be unnecessary because under Article 9 patent pools are required to publish lists of licensees by sector. For significant patent pools, this additional requirement would impose a large administrative burden. This amendment is also consistent with the deletion of the aggregate royalty and of the possibility to suspend SEPs from the register.

Amendment 41

Proposal for a regulationRegulation

Article 8

Article 4 – paragraph 4 – point f

Or. en

Justification

The COM proposal seems to be unnecessary because under Article 9 patent pools are required to publish lists of licensees by sector. For significant patent pools this additional requirement would impose a large administrative burden. This AM is also consistent with the deletion of the aggregate royalty and of the possibility to suspend SEPs from the register.

Amendment 42

Proposal for a regulationRegulation

Article 124 – paragraph 14 – point g

Or. en

Justification

The COM proposal seems to be unnecessary because under Article 9 patent pools are required to publish lists of licensees by sector. For significant patent pools this additional requirement would impose a large administrative burden. This AM is also consistent with the deletion of the aggregate royalty and of the possibility to suspend SEPs from the register.

Amendment 43

Proposal for a regulationRegulation

Article 124 – paragraph 2 a (new)5

Or. en

Justification

The registration requirements constitute a heavy administrative burden and it is unjustified for the Commission to continuously change the set of requirements.

Amendment 44

Proposal for a regulationRegulation

Article 15

Article 5 – paragraph 2 – point a

Or. en

Justification

The registration of patent bibliographic data is administratively burdensome, costly, and duplicative, since all of this information (and much more) is readily available free of charge on the European Patent Office's "Espacenet" online database, which is a primary tool used by patent professionals.

Amendment 45

Proposal for a regulationRegulation

Article 16

Article 5 – paragraph 2 – point d

Or. en

Amendment 46

Proposal for a regulationRegulation

Article 17

Article 5 – paragraph 2 – point f

Or. en

Justification

Deletion of point (f) is consistent with the suggestions to protect confidentiality put forward in other AMs.

Amendment 47

Proposal for a regulationRegulation

Article 18

Article 5 – paragraph 2 – point g

Or. en

Justification

Deletion of point (g) is consistent with the deletion of aggregate royalty put forward in other AMs.

Amendment 48

Proposal for a regulationRegulation

Article 195 – paragraph 12 – point h

Or. en

Justification

Deletion of point (h) is consistent with the deletion of aggregate royalty put forward in other AMs.

Amendment 49

Proposal for a regulationRegulation

Article 196 – paragraph 21

Or. en

Justification

Data expressed by numerical values such as royalty rates, product volumes, etc cannot be reduced to a non-confidential form.

Amendment 50

Proposal for a regulationRegulation

Article 227 - paragraph 3- 1a (new)

Or. en

Amendment 51

Proposal for a regulationRegulation

Article 227 – paragraph 41 – introductory part

Or. en

Justification

Implementers using, or intending to use, standardised technologies should seek licenses for their use. The starting point is to inform the EUIPO competence centre of the uses they make. SEP holders are not in a position to do this, and it is necessary for implementers to engage.

Amendment 52

Proposal for a regulationRegulation

Article 237 – paragraph 31 – point a

Or. en

Amendment 53

Proposal for a regulationRegulation

Article 237 – paragraph 4 –- introductory1a part(new)

Or. en

Amendment 54

Proposal for a regulationRegulation

Article 238 – paragraph 51 – introductory part

Or. en

Amendment 55

Proposal for a regulationRegulation

Article 268 – paragraph 21 – point a

Or. en

Amendment 56

Proposal for a regulationRegulation

Article 268 – paragraph 51introductorypoint partb

Or. en

Justification

Point (b) is removed as this provision would require the SEP holder to act in breach of confidence and in breach of the contractual provisions governing the patent pool.

Amendment 57

Proposal for a regulationRegulation

Article 269 – paragraph 51 – point bg

Or. en

Justification

For consistency with the revised Article 7.

Amendment 58

Proposal for a regulationRegulation

Article 2710 – paragraph 2

Or. en

Justification

Alternative dispute resolution proceedings are voluntary, contractual in nature and almost invariably agreed to be confidential. Usually, the existence of the proceedings is itself confidential. This provision could be read as endorsing or permitting breach of confidence and breach of contract.

Amendment 59

Proposal for a regulationRegulation

Article 29 – paragraph 5

Article 11

Or. en

Justification

Alternative dispute resolution proceedings are voluntary, contractual in nature and confidential. This provision could endorse or permit breach of confidence/contract. It would undermine attempts at alternative dispute resolution for SEP licenses worldwide, nullifying the value of similar systems established by international arbitration institutions (e.g. ICC, LCIA, WIPO, AAA and many others). In addition, the EUIPO cannot be forcibly introduced to the confidentiality regimes of all SEP licensing resolution mechanisms, which are often established under non-EU jurisdictions.

Amendment 60

Proposal for a regulationRegulation

Article 2913 – paragraph 63

Or. en

Justification

Alternative dispute resolution proceedings are voluntary, contractual in nature and almost invariably agreed to be confidential. Usually, the existence of the proceedings is itself confidential. This provision could lead to breach of confidence and breach of contract.

Amendment 61

Proposal for a regulationRegulation

Article 3613 – paragraph 1 – point d4

Or. en

Justification

For consistency with the revised structure.

Amendment 62

Proposal for a regulationRegulation

Article 36 – paragraph 1 – point f

Article 15

Or. en

Justification

The provision for SEP holders to collectively set an aggregate royalty for their SEPs risks a breach of competition law principles. The aggregate royalty may, in any event, be calculated from individual rates that SEP holders are encouraged to publish. The determination of an aggregate royalty for an entire standard and specific use cases that the Commission proposes is fraught with difficulty and it has so far only been attempted a few times by national courts outside the EU. The few such cases have so far clearly demonstrated that the determination of an aggregate royalty for SEPs is a task that belongs to the courts of law. More generally, the Commission proposal appears to allow top-down price regulation, which is an infringement of Union principles unless there is a clear evidence of market failure (which in this case is absent). This provision should therefore be removed.

Amendment 63

Proposal for a regulationRegulation

Article 37 – paragraph 2

Article 16

Or. en

Justification

See comment to Article 15.

Amendment 64

Proposal for a regulationRegulation

Article 38 – paragraph 2

Article 17

Or. en

Justification

See comment to Article 15.

Amendment 65

Proposal for a regulationRegulation

Article 38 – paragraph 3 – introductory part

Article 18

Or. en

Justification

See comments to Article 15.

Amendment 66

Proposal for a regulationRegulation

Article 3819 – paragraph 31pointintroductory apart

Or. en

Justification

Amended to reflect the removal of aggregate royalty rate.

Amendment 67

Proposal for a regulationRegulation

Article 3819 – paragraph 3 – point b2

Or. en

Justification

Amended to reflect the previous amendment.

Amendment 68

Proposal for a regulationRegulation

Article 3820 – paragraph 4 – introductory part1

Or. en

Justification

See definition of SEP.

Amendment 69

Proposal for a regulationRegulation

Article 3820 – paragraph 4 – point a2

Or. en

Justification

A recommendation is not a basis for essentiality; see the ETSI definitions.

Amendment 70

Proposal for a regulationRegulation

Article 3822 – paragraph 4 – point b

Or. en

Justification

This provision has a wholly disproportionate effect since a suspended patent becomes unenforceable.

Amendment 71

Proposal for a regulationRegulation

Article 3822 – paragraph 4 a (new)5

Or. en

Justification

This provision has a wholly disproportionate effect, since a suspended patent becomes unenforceable.

Amendment 72

Proposal for a regulationRegulation

Article 3823 – paragraph 5

Or. en

Justification

This provision has a wholly disproportionate effect since a suspended patent becomes unenforceable.

Amendment 73

Proposal for a regulationRegulation

Article 39

Article 23 – paragraph 6

Or. en

Justification

This provision has a wholly disproportionate effect since a suspended patent becomes unenforceable.

Amendment 74

Proposal for a regulationRegulation

Article 42 – paragraph 1

Article 24

Or. en

Justification

This provision is incompatible with the fundamental property right granted under Article 17(2) of the Charter of Fundamental Rights of the European Union (2000/C 364/01) TFEU and its non-observance should not be allowed merely in order to encourage compliance with an administrative procedure.

Amendment 75

Proposal for a regulationRegulation

Article 4226 – paragraph 2 – introductory part

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 76

Proposal for a regulationRegulation

Article 4426 – paragraph 12 – point a

Or. en

Amendment 77

Proposal for a regulationRegulation

Article 4426 – paragraph 2 – point b

Or. en

Amendment 78

Proposal for a regulationRegulation

Article 4426 – paragraph 32 – point c

Or. en

Amendment 79

Proposal for a regulationRegulation

Article 4526 – paragraph 15 – introductory part

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 80

Proposal for a regulationRegulation

Article 4526 – paragraph 25 – point b

Or. en

Justification

For consistency with the deletion of the aggregate royalty mechanism.

Amendment 81

Proposal for a regulationRegulation

Article 4527 – paragraph 32

Or. en

Justification

The skillsets required for essentiality checking (evaluators) and for FRAND determination (conciliators) are very different. For instance, evaluators require engineering and legal skills, whereas conciliators require economic and negotiation skills.

Amendment 82

Proposal for a regulationRegulation

Article 4529 – paragraph 51

Or. en

Justification

More time is necessary to define the correct methodology.

Amendment 83

Proposal for a regulationRegulation

Article 4629 – paragraph 1 – point a6

Or. en

Justification

There are many implementers and there will only ever be more. This provision leaves scope for implementers to collectively challenge very large numbers of registered SEPs, albeit at their own expense. The consequent burden on the EUIPO is likely to lead to delays, which may be used to justify delays in negotiating SEP licenses.

Amendment 84

Proposal for a regulationRegulation

Article 4632 – paragraph 1 –3 pointa b(new)

Or. en

Justification

The positive case also needs to be provided for, as in the current AM.

Amendment 85

Proposal for a regulationRegulation

Article 4634 – paragraph 1 – subparagraph 24

Or. en

Justification

Please see comments to the corresponding recital.

Amendment 86

Proposal for a regulationRegulation

Article 4634 – paragraph 2 – introductory part5

Or. en

Justification

No longer necessary under the revised structure.

Amendment 87

Proposal for a regulationRegulation

Article 4737 – paragraph 2

Or. en

Justification

The FRAND determination should run in parallel with any court proceedings.

Amendment 88

Proposal for a regulationRegulation

Article 5038 – paragraph 12

Or. en

Justification

The additional requirement for commitment is a quasi-judicial device to justify a one-sided continuation. However, the commitment made has no legal force or meaning since it can be later withdrawn (per Art.46(1)(b)) and the reasoned determination may in any case be rejected (per Art.56(1)(c). The "commitment" aspect is unnecessary where a FRAND determination proceeds because both parties agree to participate.

Amendment 89

Proposal for a regulationRegulation

Article 5038 – paragraph 3 – introductory part

Or. en

Justification

The amendment provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 90

Proposal for a regulationRegulation

Article 5538 – paragraph 13 – point a

Or. en

Amendment 91

Proposal for a regulationRegulation

Article 5538 – paragraph 23 – point b

Or. en

Amendment 92

Proposal for a regulationRegulation

Article 5638 – paragraph 13 – point bc

Or. en

Amendment 93

Proposal for a regulationRegulation

Article 5638 – paragraph 14pointintroductory cpart

Or. en

Justification

The amendment provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 94

Proposal for a regulationRegulation

Article 5638 – paragraph 14 – point da

Or. en

Amendment 95

Proposal for a regulationRegulation

Article 5638 – paragraph 14 – point d a (new)b

Or. en

Amendment 96

Proposal for a regulationRegulation

Article 61

Article 38 – paragraph 4 – point c

Or. en

Amendment 97

Proposal for a regulationRegulation

Article 6338 – paragraph 24 – point ad

Or. en

Amendment 98

Proposal for a regulationRegulation

Article 6338 – paragraph 2 – point b5

Or. en

Justification

No longer necessary under the revised structure.

Amendment 99

Proposal for a regulationRegulation

Article 6338 – paragraph 3 – point a6

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 100

Proposal for a regulationRegulation

Article 6339 – paragraph 3 – point b1

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 101

Proposal for a regulationRegulation

Article 6442 – paragraph 2

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 102

Proposal for a regulationRegulation

Article 66

Article 44 – paragraph 1

Or. en

Amendment 103

Proposal for a regulationRegulation

Article 6845 – paragraph 2

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 104

Proposal for a regulationRegulation

Article 7045 – paragraph 13

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 105

Proposal for a regulationRegulation

Article 7045 – paragraph 1 a (new)4

Or. en

Justification

No longer necessary under the revised structure.

Amendment 106

Proposal for a regulationRegulation

Article 7045 – paragraph 25

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 107

Proposal for a regulationRegulation

Article 7046 – paragraph 31 – point b

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 108

Proposal for a regulationRegulation

Article 7046 – paragraph 43

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 109

Proposal for a regulationRegulation

Article 7247 – paragraph 2

Or. en

Justification

It should be allowed to any party to make the request to terminate the procedure.

Amendment 110

Proposal for a regulationRegulation

Article 7250 – paragraph 2 a (new)3

PROCEDURE – COMMITTEE ASKED FOR OPINION

Or. en

ANNEX: ENTITIES OR PERSONS FROM WHOM THE RAPPORTEUR HAS RECEIVED INPUT

Justification

Pursuant to Article 8 of Annex I to the Rules of Procedure, the rapporteur declares that she has received input from the following entities or persons in the preparation of the opinion, until the adoption thereof in committee:

For consistency with the deletion of the aggregate royalty mechanism.

The list above is drawn up under the exclusive responsibility of the rapporteur.

Amendment 111

FINAL VOTE BY ROLL CALL IN COMMITTEE ASKED FOR OPINION

Proposal for a Regulation

Article 54 – paragraph 3

Or. en

Justification

In some circumstances this may not be possible, for instance where the confidential information comprises values in a confidential licensing agreement with a third party.

Amendment 112

Proposal for a Regulation

Article 54 – paragraph 3 a (new)

Or. en

Amendment 113

Proposal for a Regulation

Article 54 – paragraph 3 b (new)

Or. en

Amendment 114

Proposal for a Regulation

Article 55 – paragraph 1

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 115

Proposal for a Regulation

Article 55 – paragraph 2

Or. en

Justification

For consistency with the amendment that provides that the FRAND determination will only continue if both parties agree to participate.

Amendment 116

Proposal for a Regulation

Article 56 – paragraph 1 – introductory part

Or. en

Justification

This amendment is aimed at adapting the article to the revised structure.

Amendment 117

Proposal for a Regulation

Article 56 – paragraph 1 – point d a (new)

Or. en

Justification

This amendment is aimed at adapting this Article to the revised structure.

Amendment 118

Proposal for a Regulation

Article 56 – paragraph 4

Or. en

Justification

Validity is not determined or assessed in the FRAND determination. Determination of validity and infringement procedures are prerequisite to any EU court determination of FRAND terms. It should therefore not be delayed by the FRAND determination procedure in this Regulation.

Amendment 119

Proposal for a Regulation

Article 56 – paragraph 5

Or. en

Justification

No longer necessary under the revised structure.

Amendment 120

Proposal for a Regulation

Article 61 – paragraph 1

Or. en

Justification

The amendments to Article 61 seek to outline a range of possible measures to implement Option 1 of the Commission's Impact Assessment (i.e. the“SME SEP Licensing Assistance Hub”). In particular, these amendments seek to focus the competence centre on one of the main issues that this Regulation is intended to prevent, namely the reduced use of standards by EU SMEs seeking to enter new IoT markets because of SEP licensing issues.

Amendment 121

Proposal for a Regulation

Article 61 – paragraph 2

Or. en

Justification

The amendments to Article 61 seek to outline a range of possible measures to implement Option 1 of the Commission's Impact Assessment (i.e. the“SME SEP Licensing Assistance Hub”). In particular, these amendments seek to focus the competence centre on one of the main issues that this Regulation is intended to prevent, namely the reduced use of standards by EU SMEs seeking to enter new IoT markets because of SEP licensing issues.

Amendment 122

Proposal for a Regulation

Article 61 – paragraph 3

Or. en

Justification

The amendments to Article 61 seek to outline a range of possible measures to implement Option 1 of the Commission's Impact Assessment (i.e. the“SME SEP Licensing Assistance Hub”). In particular, these amendments seek to focus the competence centre on one of the main issues that this Regulation is intended to prevent, namely the reduced use of standards by EU SMEs seeking to enter new IoT markets because of SEP licensing issues.

Amendment 123

Proposal for a Regulation

Article 61 – paragraph 3 a (new)

Or. en

Justification

The amendments to Article 61 seek to outline a range of possible measures to implement Option 1 of the Commission's Impact Assessment (i.e. the“SME SEP Licensing Assistance Hub”). In particular, these amendments seek to focus the competence centre on one of the main issues that this Regulation is intended to prevent, namely the reduced use of standards by EU SMEs seeking to enter new IoT markets because of SEP licensing issues.

Amendment 124

Proposal for a Regulation

Article 61 – paragraph 3 b (new)

Or. en

Justification

These amendments flesh out the idea of an “SME SEP Licensing Assistance Hub” referenced in Option 1 of the Impact Assessment (page 30). In particular, the amendments seek to focus the competence centre on the potential future problem that the European Commission has stated that the Regulation is intended to prevent: reduced use of standards by EU SMEs seeking to enter new IoT markets because of SEP licensing issues. This focus includes conducting studies to enable the competence center to adequately advise SMEs about licensing costs in IoT markets and the annual collection of and reporting on information regarding SEP licensing activity involving SMEs.

Amendment 125

Proposal for a Regulation

Article 61 a (new)

Or. en

Justification

The agreement with WIPO in paragraph (1) is adopted from Option 1 in the Impact Assessment (at page 30). Paragraph (2) gives SMEs an option to require patent holders to mediate with them under the auspices of WIPO before initiating any infringement action. This would give SMEs the benefit of an opportunity to reach an out-of-court settlement before expending large litigation costs similar to the effect of the original FRAND Determination provisions that would be deleted elsewhere. Paragraph(3) gives SMEs the opportunity to make a commitment to accept a FRAND license on a SEP Holder-by-SEP Holder basis. If an SME makes such a commitment, the SEP Holder would be prohibited from seeking an injunction since it could enforce the commitment under contract law in a national court. Paragraph (4) expressly provides that no adverse inference should be drawn against SMEs that do not avail themselves of the safe harbors.

Amendment 126

Proposal for a Regulation

Article 63 – paragraph 2 – point a

Or. en

Justification

No longer necessary given the deletion of the aggregate royalty mechanism.

Amendment 127

Proposal for a Regulation

Article 63 – paragraph 2 – point b

Or. en

Justification

No longer necessary given the deletion of the aggregate royalty mechanism.

Amendment 128

Proposal for a Regulation

Article 63 – paragraph 3 – point a

Or. en

Justification

For consistency with previous amendments.

Amendment 129

Proposal for a Regulation

Article 63 – paragraph 3 – point b

Or. en

Justification

For consistency with previous amendments.

Amendment 130

Proposal for a Regulation

Article 64 – paragraph 2

Or. en

Justification

For consistency with the deletion of the aggregate royalty.

Amendment 131

Proposal for a Regulation

Article 66

Or. en

Justification

This article should be deleted in line with the proposal to change the scope of this Regulation (i.e. applying it only to new standards).

Amendment 132

Proposal for a Regulation

Article 68 – paragraph 2

Or. en

Justification

The integration is aimed at specifying that no implementing act should be adopted without an opinion of the committee.

Amendment 133

Proposal for a Regulation

Article 69 – paragraph 1

Or. en

Justification

It is necessary to ensure legal clarity. The scope needs to be defined clearly in advance.

Amendment 134

Proposal for a Regulation

Article 72 – paragraph 2

Regulation (EU) 1001/2017

Article 72 ¬ paragraph

Or. en

Justification

More time is needed for setting up the structure envisaged by the Regulation.