Sittings · Document
On the proposal for a regulation of the European Parliament and of the Council on Standard essential patents and amending Regulation (EU)2017/1001
Committee on the Internal Market and Consumer Protection · Rapporteur: Dita Charanzová
SHORT JUSTIFICATION
IMCO fully supports the objective of the draft proposal to improve the licensing of standard essential patents (SEPs). Such improvement aligns with our European goals of fostering innovation, enhancing the digital transition, and ensuring that Europe is a frontrunner in new technologies, thereby encouraging the voluntary participation of European businesses in the European standardization process and ensuring the broadest possible implementation of standardized technologies.
SEPs play a pivotal role in the broader objectives of achieving a seamless single market and ensuring Europe's global competitiveness. Their central role in promoting technological innovation aligns with the emphasis on socio-economic recovery and encourages businesses to invest in the research and development of new technologies, which benefits our entire economy. At the same time we should ensure that SMEs, crucial for the Single Market, aren't left behind in the technological race, that access to these technologies remains fair, and that patent holders do not abuse their power to hinder competition.
Given this broader context, which underscores the importance of integrating technology, innovation, and fair competition within the European -technological landscape, it is clear that standard essential patents (SEPs) are vital in achieving these goals. The proposal's overarching objective, which is to streamline and improve the licensing of SEPs, is certainly commendable in light of these ambitions. It aligns with the larger vision of fostering a more cohesive, innovative, and competitive European Union. However, while its intentions are in the right direction, specific areas within the proposal need closer examination.
First, the scope of the Regulation should include all SEPs, present and future. Without such inclusivity, the benefits of transparency and reduced litigation will not be fully realized. They will continue to be subject to the issues this regulation seeks to address, including protracted litigation over the appropriate FRAND values for these SEPs. It is, therefore, imperative to extend the scope of application to all SEPs.
Existing SEPs should be allowed to be registered to ensure that legacy technologies remain both accessible and competitive. The current agreement should still be enforceable even if an existing SEP isn't registered. It's only upon submission to the register that all related rules should apply. Consequently, Article 24 of the proposal should be revised to eliminate penalties associated with non-registration of these SEPs.
Second, the processes for checking whether a patent is “essential” and determining FRAND should be improved. With the diverse importance of each SEP category in mind, we need a more comprehensive and discerning approach to inspections. Specifically, the current restriction that limits random checks to just one patent in each category should be revised. Such a limitation might overlook incorrectly registered patents. It's crucial to recognize that not all categories or SEP types carry equal weight, and their total counts can vary significantly.
Furthermore, both SEP holders and implementers should be able to request checks and determinations, and they should be able to do so with a lower threshold, particularly for SME implementers.
In keeping our commitment to transparency and inclusivity, the SEP information database must be accessible to all without charge. While it's understandable to impose fees for specialized checks—like determining a patent's essentiality or FRAND value—the overarching costs for the database's upkeep should fall to the EUIPO. This ensures that a diverse group, from researchers to the general public, can access the information without bearing the financial burden.
Lastly, the draft opinion introduces technical corrections and clarifications to the proposal. In addition to correcting the terminology, this involves clarifying that mechanisms to determine a SEP's FRAND value and essentiality are separate from the standardization process itself.
AMENDMENTS
The Committee on the Internal Market and Consumer Protection calls on the Committee on Legal Affairs, as the committee responsible, to take the following into account:
Amendment 1
Proposal for a regulation
Recital 3
| Text proposed by the Commission | Amendment |
| (3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation. | (3) SEPs are patents that protect any technology that is involved in the use of a standard. SEPs are ‘essential’ in the sense that implementation of the standard is reported to require 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 should only proceed with the publication of a standard if the identified patent holders 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. The FRAND commitment should therefore not cease to apply in the event of a change in SEPs ownership so that even if the current SEP holder did not initially make the commitment, the SEP Regulation still applies to patents for which the FRAND terms was made previously. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on FRAND terms and conditions and that is not subject to a royalty-free intellectual property policy. |
Or. en
Justification
1.ESOs examine standards development participants, patented knowledge and modify projects if essential patents exist. They only cite relevant patents if licenses are granted and independently verify the patented technology - 2. FRAND is defined in recital (2) - 3. Pre-existing standards that have encountered licensing issues should fall within the scope of application of the SEP regulation - 4. Clarification - The FRAND commitment does not cease to apply in the event of a change of owner of the SEPs.
Amendment 2
Proposal for a regulation
Recital 4
| Text proposed by the Commission | Amendment |
| (4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies. | deleted |
Or. en
Justification
1. The reference to “standards for wireless communications” may imply that standards such as Wi-Fi, HEVC, and LTE (4G, 5G etc.) fall outside the scope of the SEP Regulation. Removing this reference in its entirety avoids any confusion - 2. Deletion of the recital is consistent to the deletion of Art. 1(3) and (4).
Amendment 3
Proposal for a regulation
Recital 5
| Text proposed by the Commission | Amendment |
| (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered. | (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology 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 if any implementer and any holder of a SEP declared to be essential to a standard that has been published before the entry into force of this Regulation, notifies it to the competence centre. The inclusion of these standards, such as those regarding Long Term Evolution (LTE), may be of particular importance to the roll-out of new technologies, including the Internet of Things (IoT), and will help to avoid distortions of the functioning of the internal market. This is particularly relevant for transparency purposes and the need to diminish the risk of market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent and emerging technologies. The exceptions to the exclusive rights of SEP holders are thus consistent with the objectives of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) to promote technological innovation and the dissemination of technology to the mutual advantage of the SEP holder and the user of the technology. It would also be consistent with its principles of preventing the abuse of intellectual property rights and adopting measures for public interest reasons. In particular, Article 30 of the TRIPS provides that an exception to the exclusive rights conferred by a patent is justified if it complies with three conditions: it has to be “limited”, it should not “unreasonably conflict with a normal exploitation of the patent”, and it should not “unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties”. However, the inclusion of pre-existing standards should not impact licences that are already in force. |
Or. en
Justification
1. The regulation, and the impact assessment, lack a definition of a "use case", we suggest to delete to avoid any confusion - 2. Deleting Article 66, and its references through the text, could promote innovation and economic resilience - 3. Older versions of standards may be included, supplementing the Huawei versus ZTE process and having no impact on licenses already in force - 4. Temporary exclusion of exclusive rights may be limited. Exceptions to the exclusive rights of SEP holders would therefore be consistent with Articles 7 and 8 of the TRIPS Agreement.
Amendment 4
Proposal for a regulation
Recital 13
| Text proposed by the Commission | Amendment |
| (13) The competence centre should set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs. The setting up and administering a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices. | (13) The competence centre should 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 them particular assistance. 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. |
Or. en
Justification
SMEs are the backbone of Europe's economy and are therefore central to the EU’s twin transitions. They are essential to Europe’s competitiveness and prosperity, industrial ecosystems, economic and technological sovereignty, and resilience to external shocks.
Amendment 5
Proposal for a regulation
Recital 16
| Text proposed by the Commission | Amendment |
| (16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard or the aggregate royalty which they have agreed upon among themselves. Except for those use cases of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and/or implementers should be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain. | (16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard, for which they claim essentiality, or the aggregate royalty which they have agreed upon among themselves outside the standard development process. 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 implementers should both 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. |
Or. en
Justification
1. Technical clarification - 2. No definition of a “use case” in the Regulation and in the impact assessment. It would be more appropriate to refer to “standards”.
Amendment 6
Proposal for a regulation
Recital 24
| Text proposed by the Commission | Amendment |
| (24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality. | (24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent evaluators selected according to objective criteria to be determined by the Commission. |
Or. en
Justification
It is not clear how the Competence Centre shall select the one patent among others in the same family. The limitation to one patent per family may limit transparency. In reality, not necessarily all patents are standard-essential merely because they belong to the same patent family of the sampled SEP and, conversely, not all of them are non-essential in case the selected SEP fails the essentiality check.
Amendment 7
Proposal for a regulation
Recital 26
| Text proposed by the Commission | Amendment |
| (26) SEP holders or implementers may also designate annually up to 100 registered SEPs for essentiality checks. If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family. | (26) SEP holders 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. |
Or. en
Justification
Same justification as recital 24.
Amendment 8
Proposal for a regulation
Recital 33
| Text proposed by the Commission | Amendment |
| (33) The FRAND determination would be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those use cases of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. | (33) The FRAND determination should be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. Therefore, before initiating any patent infringement proceedings or claims proceedings before an EU court, the parties should undertake a conciliation procedure to determine the FRAND terms and conditions. This conciliation procedure should not exceed 9 months and its outcome should not be binding. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. |
Or. en
Justification
1. Same justification regarding "use cases" - 2. This procedural step will significantly reduce lengthy and costly disputes and will have a significant positive impact for suppliers. Furthermore, the concept of a mandatory conciliation attempt before initiating litigation is well known and has never been considered unconstitutional or contrary to European law.
Amendment 9
Proposal for a regulation
Recital 34
| Text proposed by the Commission | Amendment |
| (34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion. | (34) 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 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 comply with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion. |
Or. en
Justification
The Draft Regulation provides little guidance on what “committing to comply” with the outcome of FRAND determinations means and what legal effects such commitment will have. The obligation to initiate FRAND determinations should not be detrimental to the effective protection of the parties’ rights.
Amendment 10
Proposal for a regulation
Recital 35
| Text proposed by the Commission | Amendment |
| (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunctionof a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties. | (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. 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. |
Or. en
Justification
1. Same comment as above - 2. This Regulation seeks to enable parties to resolve issues arising in SEP disputes without the threat and expense of litigation impacting the negotiation dynamic. This provision introduces terminology that is not used in many member states and creates legal uncertainty as a result.
Amendment 11
Proposal for a regulation
Recital 47
| Text proposed by the Commission | Amendment |
| (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify use cases of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. | (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. |
| __________________ | __________________ |
| 44 OJ L 123, 12.5.2016, p. 1. | 44 OJ L 123, 12.5.2016, p. 1. |
Or. en
Justification
Same justification about “use cases”.
Amendment 12
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, | 2. This Regulation shall apply to patents that are 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 FRAND terms and conditions and that are not subject to a royalty-free intellectual property policy. |
Or. en
Justification
Technical clarifications.
Amendment 13
Proposal for a regulation
Article 1 – paragraph 2 – point a
| Text proposed by the Commission | Amendment |
| (a) after the entry into force of this Regulation, with the exceptions provided in paragraph 3; | deleted |
Or. en
Justification
The current restriction may make it easier for SEP owners to obtain injunctions and distort the balanced negotiation process. By removing Article 66 and amending Articles 1, paragraphs 3 and 4, the Regulation would promote innovation and the economic resilience of the internal market.
Amendment 14
Proposal for a regulation
Article 1 – paragraph 2 – point b
| Text proposed by the Commission | Amendment |
| (b) before the entry into force of this Regulation, in accordance with Article 66. | deleted |
Or. en
Justification
Same justification as above.
Amendment 15
Proposal for a regulation
Article 1 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Articles 17 and 18 and Article 34(1) shall not apply to SEPs to the extent that they are implemented for use cases identified by the Commission in accordance with paragraph 4. | deleted |
Or. en
Justification
There is a significant risk that this provision will render the regulation ineffective. The limited scope of the regulation could favor certain SEP owners. By amending, it would promote innovation and the economic resilience of the internal market.
Amendment 16
Proposal for a regulation
Article 1 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. | deleted |
Or. en
Justification
Same justification as above.
Amendment 17
Proposal for a regulation
Article 2 – paragraph 1 – point 1
| Text proposed by the Commission | Amendment |
| (1) ‘standard essential patent’ or ‘SEP’ means any patent that is essential to a standard; | (1) ‘standard essential patent’ or ‘SEP’ means any patent that is declared to be essential to a standard; |
Or. en
Justification
The essential character of a patent is difficult to predict ex ante. Essentiality can be confirmed or contested, depending on how the standard is applied and the ingenuity of the users. With respect to SDOs, any patent mentioned in a standard may or may not be an SEP. It is therefore appropriate to shed light on the fact that another party - a third party - took responsibility for observing this relationship.
Amendment 18
Proposal for a regulation
Article 2 – paragraph 1 – point 2
| Text proposed by the Commission | Amendment |
| (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 with a standard, including options therein, without infringing the patent under the current state of the art and normal technical practice; | (2) ‘essential to a standard’ means that the patent declared to contain at least one claim for which it is not possible on technical grounds to make or use an implementation or method which complies with a published standard, including options therein, without infringing the patent under the current state of the art and normal technical practice; |
Or. en
Justification
Same as above.
Amendment 19
Proposal for a regulation
Article 2 – paragraph 1 – point 3
| Text proposed by the Commission | Amendment |
| (3) (‘standard’ means a technical specification, adopted by a standard development organisation, for repeated or continuous application, with which compliance is not compulsory; | (3) ‘standard’ means a technical specification, adopted by a standard development organisation, for repeated or continuous application; |
Or. en
Justification
Technical clarification as standardization organizations never have the power to make their deliverables compulsory, because this power belongs to the public authority. A public authority can make a standard compulsory.
Amendment 20
Proposal for a regulation
Article 3 – paragraph 2 – point h
| Text proposed by the Commission | Amendment |
| (h) provide training, support and general advice on SEPs to SMEs; | (h) provide training, support and general advice on SEPs, in particular to SMEs; |
Or. en
Justification
SMEs are the backbone of Europe's economy and are therefore central to the EU’s twin transitions to a sustainable and digital economy. They are essential to Europe’s competitiveness and prosperity, industrial ecosystems, economic and technological sovereignty, and resilience to external shocks.
Amendment 21
Proposal for a regulation
Article 5 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. The following information in the database shall be accessible to any third party subject to the registration with the competence centre: | 2. The following information in the database shall be accessible to any third party, including courts and other public authorities, subject to registration with the competence centre: |
Or. en
Justification
1. Consistent with the deletion of 5(4).
Amendment 22
Proposal for a regulation
Article 5 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) may be subject to the payment of a fee. | deleted |
Or. en
Amendment 23
Proposal for a regulation
Article 5 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. However, public authorities, including courts, shall have full access to the information in the database referred to in paragraph (2) free of charge subject to registration with the competence centre. | deleted |
Or. en
Amendment 24
Proposal for a regulation
Article 7 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| A SEP holder shall provide to the competence centre the following information: | Any holder of a patent in force in one or more Member States and which is essential to a standard for which FRAND commitments have been made shall provide to the competence centre the following information: |
Or. en
Justification
Proposal to make the wording consistent with art. 14 and to clarify that it is applicable not to all SEPs, but to those for which FRAND commitments have been made.
Amendment 25
Proposal for a regulation
Article 7 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard, to the extent such information is known to the SEP holder. | (a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard, and as soon as such information is known to the SEP holder. |
Or. en
Justification
This gives more clarity regarding the deadline.
Amendment 26
Proposal for a regulation
Article 7 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) where available, its standard terms and conditions for SEP licensing, including its royalty and discount policies, within 7 months from the opening of the registration for the relevant standard and implementation by the competence centre. | (b) where available, its standard terms and conditions for SEP licensing, including its royalty and discount policies, within 7 months from the opening of the registration for the SEP by the competence centre. |
Or. en
Justification
The regulation provides for a procedure for registering SEPs and not standards. The standards are notified in accordance with art. 14.
Amendment 27
Proposal for a regulation
Article 8 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| A SEP holder shall provide to the competence centre the following information to be included in the database and referenced in the register: | Any holder of a patent in force in one or more Member States and which is essential to a standard for which FRAND commitments have been made shall provide to the competence centre the following information to be included in the database and referenced in the register: |
Or. en
Justification
Proposal to make the wording consistent with art. 14 and to clarify that it is applicable not to all SEPs, but to those for which FRAND commitments have been made.
Amendment 28
Proposal for a regulation
Article 9 – paragraph 1 – point g
| Text proposed by the Commission | Amendment |
| (g) list of products, services and processes that may be licensed through the patent pool or the entity; | (g) list of products, services and processes that may be licensed through the patent pool; |
Or. en
Justification
According to article 2 (11), the patent pool is the entity. Therefore, it is redundant.
Amendment 29
Proposal for a regulation
Article 9 – paragraph 1 – point h
| Text proposed by the Commission | Amendment |
| (h) royalties and discount policy per product category; | (h) royalties, their method of calculation and the discount policy per product category; |
Or. en
Justification
Strengthen the disclosure requirement by including more useful details.
Amendment 30
Proposal for a regulation
Article 12 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall publish that information in the database. | 2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall verify that information before publishing it in the database. |
Or. en
Justification
Pre-verifying information could help to avoid overloading the database with unnecessary or obsolete information.
Amendment 31
Proposal for a regulation
Article 14 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. Holders of a patent in force in one or more Member States which is essential to a standard for which FRAND commitments have been made shall notify to the competence centre, where possible through the standard development organisation or through a joint notification, the following information: | 1. Holders of a patent in force in one or more Member States which is declared to be essential to a standard for which FRAND commitments have been made shall notify to the competence centre, through a joint notification, the following information: |
Or. en
Justification
1. Technical clarification - 2. SDOs should be strictly outside of any discussion of the validity of patent claims or the valuation of licenses.
Amendment 32
Proposal for a regulation
Article 14 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. Any implementer or any holder, of a SEP in force in one or more Member State that is declared to be essential to a standard that has been published before the entry into force of this Regulation, in the absence of notification under paragraph (1), (3) or under paragraph (4), may notify, to the competence centre the information referred to in paragraph (1). |
Or. en
Justification
This would allow pre-existing standards to be notified on a voluntary basis.
Amendment 33
Proposal for a regulation
Article 14 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. The competence centre shall also notify the relevant standard development organisation of the publication. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually or request confirmation from the standard development organisation that it has duly notified the SEP holders. | 5. The competence centre shall also notify the publication. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually. |
Or. en
Justification
SDOs should be strictly outside of any discussion of the validity of patent claims or the valuation of licenses.
Amendment 34
Proposal for a regulation
Article 14 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3) and (4) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list. | 6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3), (4) and (4a) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list. |
Or. en
Amendment 35
Proposal for a regulation
Article 17 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Holders of SEPs in force in one or 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. | 1. Holders of SEPs in force in one or more Member States 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. |
Or. en
Justification
By removing this reference, we gain flexibility.
Amendment 36
Proposal for a regulation
Article 17 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. In case of a standard published before the entry into force of this Regulation the request referred to in paragraph (1) of this Article may be made no later than 120 days following the publication by the competence centre of the information pursuant to Article 14(7). |
Or. en
Justification
Addition of a provision on existing patents – without it, due to the deadline in paragraph 2, the article in practice would not apply to existing standards.
Amendment 37
Proposal for a regulation
Article 17 – paragraph 7
| Text proposed by the Commission | Amendment |
| 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. | 7. Where the SEP holders fail to make an agreement regarding the joint notification submission of an aggregate royalty within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. |
Or. en
Justification
Clarification - The purpose of the process is to mediate the discussions for a joint submission of an aggregate royalty (paragraph 1).
Amendment 38
Proposal for a regulation
Article 17 – paragraph 8
| Text proposed by the Commission | Amendment |
| 8. If the contributors agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. | 8. If the SEP holders agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. |
Or. en
Justification
Clarification
Amendment 39
Proposal for a regulation
Article 18 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on a global aggregate royalty. | 1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on an aggregate royalty. An implementer shall be able to make this request, even if an agreement amongst SEP holders had already been reached, including through the procedure described in Article 15 to 17. |
Or. en
Justification
No definition of "global" aggregate royalty. The addition ensures that the process for aggregate royalty determinations remains balanced, practicable and efficient. There should be sufficient safeguards that the process will yield an outcome and cannot be obstructed by any party.
Amendment 40
Proposal for a regulation
Article 18 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. The request referred to in paragraph (1) shall be made no later than 150 days after: | 2. The request made by a SEP holder as referred to in paragraph (1) shall be made no later than 150 days after: |
Or. en
Justification
Technical clarification. There should be no time limit for seeking expert advice for SEP implementers, given that no material information is available to implementers within a timely manner of 150 days.
Amendment 41
Proposal for a regulation
Article 18 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. In the case of a standard published before the entry into force of this Regulation, the request referred to in paragraph (1) shall be made no later than 150 days following the publication by the competence centre of the information pursuant to Article 14(7). |
Or. en
Justification
Addition of a provision on existing patents – without it, due to the deadline in paragraph 2, the article in practice would not apply to existing standards.
Amendment 42
Proposal for a regulation
Article 18 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The competence centre shall notify the relevant standard development organisation and all known stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published. | 4. The competence centre shall notify all known stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published. |
Or. en
Justification
SDOs should be strictly outside of any discussion of the validity of patent claims or the valuation of licenses.
Amendment 43
Proposal for a regulation
Article 18 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers shall provide information on any relevant implementations of the standard, including any relevant market share in the Union. | 5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers shall provide information on any relevant current or future implementations of the standard, including any relevant market share in the Union. |
Or. en
Justification
This ensures that current and future users of the standard can participate in the process, as the interests of those seeking to integrate the standard into their products or services are just as important as those currently doing so.
Amendment 44
Proposal for a regulation
Article 18 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, and implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology. | 6. If the requests for participation include at least 5 SEP holders representing collectively all SEPs for the standard, or a minimum of 3 implementers or at least 5 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators having appropriate experience in the relevant field of technology. |
Or. en
Justification
A small number of SEP implementers is easier to calculate and provides legal certainty. A smaller number of companies is also preferable for the same reason. The sole request from the SEP implementers must be sufficient to appoint a conciliation commission.
Amendment 45
Proposal for a regulation
Article 18 – paragraph 8 – introductory part
| Text proposed by the Commission | Amendment |
| 8. Following the appointment, the panel shall request the participating SEP holders to, within one month: | 8. Within one month following the appointment, the panel shall request the participating SEP holders, as well as the participating implementers or the non-participants, to: |
Or. en
Justification
The process for determining aggregate royalties will be more informative if it leverages input from diverse stakeholders, including SEP holders, as well as implementers and participating entities outside the process who may have valuable information to offer.
Amendment 46
Proposal for a regulation
Article 19 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) publication by the competence centre of the standard and related information pursuant to Article 14(7); | (a) publication by the competence centre of the information pursuant to Article 14(7); |
Or. en
Justification
As standards are published by ESOs, it is better to refer just to the information in Art. 14(7)
Amendment 47
Proposal for a regulation
Article 19 – paragraph 2
| Text proposed by the Commission | Amendment |
| 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. | 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, of the notice in this paragraph. |
Or. en
Justification
SDOs should be strictly outside of any discussion of the validity of patent claims or the valuation of licenses.
Amendment 48
Proposal for a regulation
Article 20 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Upon request of a SEP holder the competence centre shall register any patent in force in one or more Member States and falling within the scope of this Regulation that is essential for a standard, for which the competence centre has published a notice pursuant to Article 19(2). | 1. Upon request of a SEP holder, the competence centre shall register any SEP in force in one or more Member States, for which the competence centre has published a notice pursuant to Article 19(2). |
Or. en
Justification
Changes in line with the definition in Art. 2(1) and with Art. 1(2)
Amendment 49
Proposal for a regulation
Article 22 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A sample of SEP registrations shall be checked annually for completeness and correctness. | 1. Annually, the EUIPO shall check a sample of SEP registrations in order to verify their completeness and correctness. |
Or. en
Justification
Clarification - According to Art. 22 (2), the EUIPO is the one which carries out the annual inspection.
Amendment 50
Proposal for a regulation
Article 24 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. Paragraphs (1) and (2) are without prejudice to provisions included in contracts setting a royalty for patents declared to be essential to a standard concluded and applied before the entry into force of this Regulation. |
Or. en
Justification
Addition to address the issue of retroactivity. Paragraphs (1) and (2) will be applicable to existing standards only if implementers notify them according to art. 14(4)
Amendment 51
Proposal for a regulation
Article 28 – paragraph 2
| Text proposed by the Commission | Amendment |
| 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. | 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. |
| The essentiality check shall not be conducted before the adoption of the standard to which the patents is declared to be essential. |
Or. en
Justification
Evaluating the essential nature of a patent for the implementation of a standard can only be possible ex post, with full knowledge of market dynamics. This cannot be done ex ante because the potential interrelation and reciprocal impact of documents are inherently difficult to assess.
Amendment 52
Proposal for a regulation
Article 28 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Essentiality checks shall not be done on more than one SEP from the respective patent family. | deleted |
Or. en
Justification
It is not clear how the Competence Centre shall select the one patent among others in the same family. The limitation to one patent per family may limit transparency. In reality, not necessarily all patents are standard-essential merely because they belong to the same patent family of the sampled SEP and, conversely, not all of them are non-essential in case the selected SEP fails the essentiality check.
Amendment 53
Proposal for a regulation
Article 29 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre shall notify the SEP holders about the SEPs selected for essentiality checks. Within the time limit established by the competence centre, the SEP holders may submit within the same time period a claim chart with a maximum amount of five correspondences between the SEP and the relevant standard, any additional technical information that may facilitate the essentiality check and translations of the patent requested by the competence centre. | 2. The competence centre shall notify the SEP holders about the SEPs selected for essentiality checks. Within the time limit established by the competence centre, the SEP holders may submit, within the same time period, any additional technical information that may facilitate the essentiality check and translations of the patent requested by the competence centre. |
Or. en
Justification
It seems doubtful that a violation analysis could be carried out on the basis of such a table. The proposed approach does not take due account of difficult issues regarding the correct interpretation of claims, in particular the lack of harmonized standards of claim interpretation between different European jurisdictions.
Amendment 54
Proposal for a regulation
Article 33 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall enter 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. | 1. The competence centre shall enter 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 relevant SEPs. |
Or. en
Justification
It is not clear how the Competence Centre shall select the one patent among others in the same family and this limitation may limit transparency. In reality, not necessarily all patents are standard-essential merely because they belong to the same patent family of the sampled SEP and, conversely, not all of them are non-essential in case the selected SEP fails the essentiality check.
Amendment 55
Proposal for a regulation
Article 34 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. The FRAND determination in respect of a standard and implementation for which an entry in the register has been created, shall be initiated by any of the following persons: | 1. The FRAND determination, in respect of any standards and implementations for which an entry in the register has been created, shall be initiated by any of the following persons: |
Or. en
Justification
Technical clarification.
Amendment 56
Proposal for a regulation
Article 37 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(5)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. | 1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(3)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. |
Or. en
Justification
Wrong reference. Changing it makes it consistent.
Amendment 57
Proposal for a regulation
Article 38 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and whether it commits to comply with its outcome. | 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination. |
Or. en
Justification
The Draft Regulation provides little guidance on what “committing to comply” with the outcome of FRAND determinations means and what legal effects such commitment will have. The obligation to initiate FRAND determinations should not be detrimental to the effective protection of the parties’ rights.
Amendment 58
Proposal for a regulation
Article 38 – paragraph 3 – introductory part
| Text proposed by the Commission | Amendment |
| 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome, the following shall apply: | 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, the following shall apply: |
Or. en
Justification
Same as above.
Amendment 59
Proposal for a regulation
Article 38 – paragraph 3 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination and whether it commits to comply with the outcome of the FRAND determination; | (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination; |
Or. en
Justification
Same as above.
Amendment 60
Proposal for a regulation
Article 38 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party requests the continuation of the FRAND determination and commits to its outcome, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter. | (b) where the requesting party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter; |
Or. en
Justification
Same as above.
Amendment 61
Proposal for a regulation
Article 38 – paragraph 4 – introductory part
| Text proposed by the Commission | Amendment |
| 4. Where the responding party agrees to the FRAND determination and commits to comply with its outcome pursuant to paragraph (2), including where such commitment is contingent upon the commitment of the requesting party to comply with the outcome of the FRAND determination, the following shall apply: | 4. Where the responding party agrees to the FRAND determination pursuant to paragraph (2), the following shall apply: |
Or. en
Justification
Same as above.
Amendment 62
Proposal for a regulation
Article 38 – paragraph 4 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days whether it also commits to comply with the outcome of the FRAND determination. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties; | (a) the competence centre shall notify the requesting party thereof. 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; |
Or. en
Justification
Same as above.
Amendment 63
Proposal for a regulation
Article 38 – paragraph 4 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party does not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination. | (b) where the requesting party does not reply within the time limit referred to in subparagraph (a), 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. |
Or. en
Justification
Same as above.
Amendment 64
Proposal for a regulation
Article 38 – paragraph 4 – point c
| Text proposed by the Commission | Amendment |
| (c) where the responding party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for by the responding party in relation to the same subject matter; | (c) where the responding party, within the time-limit referred to in subparagraph (b), 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; |
Or. en
Justification
Technical clarification.
Amendment 65
Proposal for a regulation
Article 38 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. Each party may, at any time during the FRAND determination process, declare to commit to comply with its outcome. The declaring party may make its commitment to comply subject to the other party's commitment to the outcome. This shall not terminate the FRAND determination process. |
Or. en
Justification
The Draft Regulation provides little guidance on what “committing to comply” with the outcome of FRAND determinations means and what legal effects such commitment will have. The obligation to initiate FRAND determinations should not be detrimental to the effective protection of the parties’ rights.
Amendment 66
Proposal for a regulation
Article 38 – paragraph 5
| Text proposed by the Commission | Amendment |
| 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. | 5. Where either party commits to comply with the outcome of the FRAND determination, while the other party rejects to do so, 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. |
Or. en
Justification
Clarification to be consistent with all of Article 38.
Amendment 67
Proposal for a regulation
Article 39 – paragraph 1
| Text proposed by the Commission | Amendment |
| 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. | 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(4) point (c), 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. |
Or. en
Justification
Wrong reference.
Amendment 68
Proposal for a regulation
Article 47 – paragraph 2
| Text proposed by the Commission | Amendment |
| 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. | 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, only if the party who requested the establishment of the FRAND conditions gives its consent . |
Or. en
Justification
The FRAND determination process must remain practicable, effective and cannot be hindered. The article as it stands could allow proceedings conducted in third countries to torpedo FRAND determinations in the EU.
Amendment 69
Proposal for a regulation
Article 56 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. In addition to the termination of the FRAND determination for reasons provided for Article 38(4), 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: | 1. In addition to the termination of the FRAND determination for reasons provided for Article 38(3) point (c), Article 38(4) point (d), 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: |
Or. en
Justification
Addition for clarification.
Amendment 70
Proposal for a regulation
Article 62 – paragraph 3 a (new)
| Text proposed by the Commission | Amendment |
| 3 a. Any benefits granted to micro, small and medium-sized enterprises under this Regulation may be withheld or withdrawn in cases of circumvention or misuse. |
Or. en
Justification
Benefits granted to SMEs will not be opened in case of circumvention or misuse. For example, most Non-Practicing Entities are considered SMEs, but should clearly not benefit from any exemption under the draft regulation.
Amendment 71
Proposal for a regulation
Article 63 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (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; | (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 level of the parties’ participation in the aggregate royalty determination and their economic interest in the outcome of the procedure; |
Or. en
Justification
These factors are more relevant for determining the apportionment of the fees than the sole size of these companies.
Amendment 72
Proposal for a regulation
Article 66
| Text proposed by the Commission | Amendment |
| Article 66 | deleted |
| Opening registration for an existing standard | |
| 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. | |
| 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. 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. | |
| 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]. | |
| 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]. |
Or. en
Justification
By deleting article 66, it would promote innovation and the economic resilience of the internal market.
Amendment 73
Proposal for a regulation
Article 67 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The power to adopt a delegated act referred to in Articles 1(4), 4(5) 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. | 2. The power to adopt a delegated act referred to in Article 4(5) shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation. |
Or. en
Justification
Deletion in accordance with the deletion of Articles 1(4) and 66.
Amendment 74
Proposal for a regulation
Article 67 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The delegation of power referred to in Articles 1(4), 4(5) 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. | 3. The delegation of power referred to in Article 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. |
Or. en
Justification
Same as above.
Amendment 75
Proposal for a regulation
Article 67 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. A delegated act adopted pursuant to Articles 1(4), 4(5) 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. | 6. A delegated act adopted pursuant to Article 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. |
Or. en
Justification
Same as above.