193 Amendments of Tiemo WÖLKEN related to 2023/0133(COD)
Amendment 78 #
Proposal for a regulation
Recital 3
Recital 3
(3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder or a previous holder of the SEPs in question has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation.
Amendment 81 #
Proposal for a regulation
Recital 4
Recital 4
(4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies.
Amendment 87 #
Proposal for a regulation
Recital 5
Recital 5
(5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failurinefficiencies hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered.
Amendment 99 #
Proposal for a regulation
Recital 15
Recital 15
(15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holders to plan expected return on investment and SEP implementers to estimate the cost of standard integration in their products. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, it is necessary to make public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing.
Amendment 110 #
Proposal for a regulation
Recital 20 a (new)
Recital 20 a (new)
(20 a) SEP holders are obliged to licence under FRAND terms and conditions and shall therefore not discriminate by refusing a licence to a licensee willing to accept the conditions of a FRAND licence, independent from the position of the potential licensee in the respective value chain.
Amendment 111 #
Proposal for a regulation
Recital 23
Recital 23
(23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non- essential under this Regulation. A record of any modifications to the SEP register should be made publicly available to maintain transparency.
Amendment 115 #
Proposal for a regulation
Recital 24
Recital 24
(24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent and impartial evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality.
Amendment 121 #
Proposal for a regulation
Recital 31
Recital 31
(31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair and, reasonable and non-discriminatory terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith.
Amendment 122 #
Proposal for a regulation
Recital 32
Recital 32
(32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and reduce costs. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non- confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral and impartial persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions.
Amendment 124 #
Proposal for a regulation
Recital 3
Recital 3
(3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder or a previous holder of the SEPs in question has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation.
Amendment 126 #
Proposal for a regulation
Recital 33
Recital 33
(33) TheIn case one or more parties initiate a FRAND determination, that would be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those use cases of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms.
Amendment 129 #
Proposal for a regulation
Recital 4
Recital 4
(4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies.
Amendment 130 #
Proposal for a regulation
Recital 34
Recital 34
(34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion.
Amendment 134 #
Proposal for a regulation
Recital 35
Recital 35
(35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunctionof a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties.
Amendment 135 #
Proposal for a regulation
Recital 5
Recital 5
(5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failurinefficiencies hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered.
Amendment 136 #
Proposal for a regulation
Recital 36
Recital 36
(36) When the parties enter into the FRAND determination, they should select a panel of three conciliators for the FRAND determination from the roster, with each party selecting one conciliator, and both parties selecting a third conciliator in agreement. In case of disagreement, the competence centre would select the third conciliator. The FRAND determination should be concluded within 9 months, unless both parties agree to an extension. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination.
Amendment 152 #
Proposal for a regulation
Recital 15
Recital 15
(15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holders to plan expected return on investment and SEP implementers to estimate the cost of standard integration in their products. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, it is necessary to make public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing.
Amendment 154 #
Proposal for a regulation
Recital 16
Recital 16
(16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard or the aggregate royalty which they have agreed upon among themselves. Except for those use cases of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and/or, implementers and other stakeholders in the value chain should be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non- confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain.
Amendment 161 #
Proposal for a regulation
Recital 20
Recital 20
(20) SEP holders may register their patents which are essential to a standard after the indicated time limit. However, in that case, SEP holders should not be able to collect royalties and claim damages for the period of delay.
Amendment 162 #
Proposal for a regulation
Recital 20 a (new)
Recital 20 a (new)
(20a) SEP holders are obliged to licence under FRAND terms and conditions and shall therefore not discriminate by refusing a licence to a licensee willing to accept the conditions of a FRAND licence, independent from the position of the potential licensee in the respective value chain.
Amendment 164 #
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
Article 1 – paragraph 2 – introductory part
2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the current SEP holder or a former SEP holder has made a commitment to license its SEPs on fair, reasonable and non- discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy,
Amendment 165 #
Proposal for a regulation
Recital 23
Recital 23
(23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non- essential under this Regulation. A record of any modifications to the SEP register should be made available publicly to maintain transparency.
Amendment 168 #
Proposal for a regulation
Article 1 – paragraph 2 – point a
Article 1 – paragraph 2 – point a
Amendment 170 #
Proposal for a regulation
Recital 24
Recital 24
(24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent and impartial evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality.
Amendment 172 #
Proposal for a regulation
Article 1 – paragraph 2 – point b
Article 1 – paragraph 2 – point b
Amendment 179 #
Proposal for a regulation
Recital 27
Recital 27
(27) Any assessment of essentiality of SEPs conducted by an independent entity prior to the entry into force of the Regulation, for example through patent pools, as well as essentiality determinations by judicial authorities should be indicated in the register. Those SEPs should not be re-checked for essentiality after the relevant evidence supporting the information in the register is provided to the competence centre, unless relevant stakeholders provide sufficient evidence to the evaluator about potential inaccuracies of this essentiality check.
Amendment 180 #
Proposal for a regulation
Article 1 – paragraph 4
Article 1 – paragraph 4
4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give and have never given rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. The Commission shall review and, where necessary, update the list at least once a year.
Amendment 193 #
Proposal for a regulation
Recital 31
Recital 31
(31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair and, reasonable and non-discriminatory terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith.
Amendment 194 #
Proposal for a regulation
Article 2 – paragraph 1 – point 11
Article 2 – paragraph 1 – point 11
(11) ‘patent pool’ means an entity created by an agreement or consortium between two or more SEP holders to license one or more of their patents to one another or to third parties;
Amendment 194 #
Proposal for a regulation
Recital 32
Recital 32
(32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and reduce costs. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non- confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral and impartial persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions.
Amendment 197 #
Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)
Article 2 – paragraph 1 – point 18 a (new)
(18 a) ‘patent assertion entity’ means an entity that derives its revenue from the enforcement or licensing of patents, including any damages or monetary awards from the assertion of such patents, and that does not engage in the production, manufacture, sale, or distribution of goods or services utilising the patented inventions or in the research and development of such inventions, that is not an educational or research institution, or a technology transfer organisation facilitating the commercialisation of technological innovations generated by them, and that is not an individual inventor asserting patents originally granted to that inventor or patents that cover technologies originally developed by that inventor;
Amendment 197 #
Proposal for a regulation
Recital 33
Recital 33
(33) TheIn case one or more parties initiate a FRAND determination process, it would be a mandatory step before a SEP holder would be able to initiatpursue patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings can proceed should not be required for SEPs covering those use cases of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms.
Amendment 199 #
Proposal for a regulation
Article 2 a (new)
Article 2 a (new)
Article2a Obligation to license on FRAND terms and conditions Holders of patents essential to a standard within the scope of this Regulation pursuant to Article 1(2) shall not refuse a licence to any party willing to accept a licence based FRAND terms and conditions.
Amendment 200 #
Proposal for a regulation
Recital 34
Recital 34
(34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion.
Amendment 204 #
Proposal for a regulation
Recital 35
Recital 35
(35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunction of a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties.
Amendment 205 #
Proposal for a regulation
Article 3 – paragraph 2 – point f
Article 3 – paragraph 2 – point f
(f) administer a process for facilitating agreements on aggregate royalty determination;
Amendment 205 #
Proposal for a regulation
Recital 36
Recital 36
(36) When the parties enter into the FRAND determination, they should select a panel of three conciliators for the FRAND determination from the roster, with each party selecting one conciliator, which select a third conciliator in agreement. In case of disagreement, the competence centre would select the third conciliator. The FRAND determination should be concluded within 9 months, unless both parties agree to an extension. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination.
Amendment 208 #
Proposal for a regulation
Recital 37
Recital 37
(37) Upon appointment, the conciliation centre should refer the FRAND determination to the panel of conciliators, who should examine whether the request contains the necessary information, and communicate the schedule of procedure to the parties or the party requesting the continuations of the FRAND determination.
Amendment 209 #
Proposal for a regulation
Recital 38
Recital 38
(38) The panel of conciliators should examine the parties’ submissions and suggestions for the determination of FRAND terms and conditions, and consider the relevant negotiation steps, among other relevant circumstances. The panel of conciliators, upon its own initiative or the request of a party, should be able to require the parties to submit evidence it deems necessary for the fulfilment of its task. It should also be able to examine publicly available information and the competence centre’s register and reports of other FRAND determinations, as well as non-confidential documents and information produced by or submitted to the competence centre.
Amendment 212 #
Proposal for a regulation
Recital 39
Recital 39
(39) If a party fails to engage in the FRAND determination after the panel of conciliators has been appointed, the other party may request the termination or may request that the panel of conciliators issues a recommendation for a FRAND determination on the basis of the information it was able to assess.
Amendment 215 #
Proposal for a regulation
Recital 40
Recital 40
(40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the panel of conciliators, or where he/sheit has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party.
Amendment 217 #
Proposal for a regulation
Recital 41
Recital 41
(41) At the conclusion of the procedure, the panel of conciliators should make a proposal recommending FRAND terms and conditions. Either party should have the option to accept or reject the proposal. If the parties do not settle and/or do not accept its proposal, the panel of conciliators should draft a report of the FRAND determination. The report would have a confidential and a non-confidential version. The non- confidential version of the report should contain the proposal for FRAND terms and conditions and the methodology used and should be provided to the competence centre for publication in order to inform any subsequent FRAND determination between the parties and other stakeholders involved in similar negotiations. The report would thus have a dual purpose to encourage the parties to settle and to provide transparency as to the process and the recommended FRAND terms in cases of disagreement.
Amendment 220 #
Proposal for a regulation
Article 5 – paragraph 2 – point k
Article 5 – paragraph 2 – point k
(k) the date and the grounds for removal of the SEP from the database pursuant to Article 25, and a record of all relevant information on the removed SEP;
Amendment 222 #
Proposal for a regulation
Article 6 – paragraph 1
Article 6 – paragraph 1
1. When a party requests that data and documents of the database be kept confidential, that party shall provide a reasoned statement justifying this confidentiality and a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version.
Amendment 230 #
Proposal for a regulation
Article 9 – paragraph 1 – point h
Article 9 – paragraph 1 – point h
(h) royalties, including, if applicable, aggregate royalty retained and detailed calculation per SEP owner in the pool, and discount policy per product category;
Amendment 231 #
Proposal for a regulation
Article 9 – paragraph 1 a (new)
Article 9 – paragraph 1 a (new)
The competence centre shall verify and report on the accuracy of the information published by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a publicly available methodology ensuring thorough, transparent and consistent verification.
Amendment 238 #
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
Article 1 – paragraph 2 – introductory part
2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the current SEP holder or former SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy,.
Amendment 242 #
Proposal for a regulation
Article 1 – paragraph 2 – point a
Article 1 – paragraph 2 – point a
Amendment 247 #
Proposal for a regulation
Article 1 – paragraph 2 – point b
Article 1 – paragraph 2 – point b
Amendment 254 #
Proposal for a regulation
Article 1 – paragraph 4
Article 1 – paragraph 4
4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give and have never given rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. The Commission shall review and where necessary update the list at least once a year.
Amendment 258 #
Proposal for a regulation
Article 17 – paragraph 4 a (new)
Article 17 – paragraph 4 a (new)
4 a. The competence centre shall publish a call for expression of interest to invite other holders of SEPs for the standard, current implementers and implementers intending to place products with the standard on the market to participate in the process.
Amendment 259 #
Proposal for a regulation
Article 17 – paragraph 5
Article 17 – paragraph 5
5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders and implementers that expressed interest to participate in the process.
Amendment 260 #
Proposal for a regulation
Article 17 – paragraph 6
Article 17 – paragraph 6
6. SEP holders and implementers that submit to the conciliator confidential information shall provide a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence.
Amendment 267 #
Proposal for a regulation
Article 2 – paragraph 1 – point 11
Article 2 – paragraph 1 – point 11
(11) ‘patent pool’ means an entity created by an agreement or consortium between two or more SEP holders to license one or more of their patentSEPs to one another or to third parties;
Amendment 269 #
Proposal for a regulation
Article 18 – paragraph 6
Article 18 – paragraph 6
6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, andor implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology.
Amendment 269 #
Proposal for a regulation
Article 2 – paragraph 1 – point 16
Article 2 – paragraph 1 – point 16
(16) ‘patent family’ means a collection of patent documents that cover the same invention and whose members have the same prioritiall have at least one priority in common, including the priority document(s) themselves;
Amendment 270 #
Proposal for a regulation
Article 18 – paragraph 8 – introductory part
Article 18 – paragraph 8 – introductory part
8. Following the appointment, the panel shall request the participating SEP holderparties to, within one month:
Amendment 270 #
Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)
Article 2 – paragraph 1 – point 18 a (new)
(18a) ‘patent assertion entity’ means an entity that derives its revenue from the enforcement or licensing of patents, including any damages or monetary awards from the assertion of such patents, and that does not engage in the production, manufacture, sale, or distribution of goods or services utilising the patented inventions or in the research and development of such inventions, that is not an educational or research institution, or a technology transfer organisation facilitating the commercialisation of technological innovations generated by them, and that is not an individual inventor asserting patents originally granted to that inventor or patents that cover technologies originally developed by that inventor.
Amendment 271 #
Proposal for a regulation
Article 18 – paragraph 8 – point b a (new)
Article 18 – paragraph 8 – point b a (new)
(b a) provide any evidence or observations to assist the panel in determining an opinion on aggregate royalty.
Amendment 272 #
Proposal for a regulation
Article 18 – paragraph 11
Article 18 – paragraph 11
11. 1The expert opinion shall include the recommended aggregate royalty rate, a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion.
Amendment 276 #
Proposal for a regulation
Article 2 a (new)
Article 2 a (new)
Article2a Non-discriminatory licensing Holders of patents essential to a standard within the scope of this Regulation pursuant to Article 1(2) shall not refuse a licence to any party willing to accept a licence based FRAND terms and conditions.
Amendment 279 #
Proposal for a regulation
Article 22 – paragraph 4 a (new)
Article 22 – paragraph 4 a (new)
4 a. If the SEP has been suspended from the register pursuant to paragraph 4, the date of registration shall be the date when the incompleteness or inaccuracy has been remedied.
Amendment 285 #
Proposal for a regulation
Article 3 – paragraph 2 – point f
Article 3 – paragraph 2 – point f
(f) administer a process for facilitating agreements on aggregate royalty determination;
Amendment 289 #
Proposal for a regulation
Article 24 – paragraph 2
Article 24 – paragraph 2
2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to receive royalties or seek damageshave no claim for infringements of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register.
Amendment 292 #
Proposal for a regulation
Article 25 – paragraph 3
Article 25 – paragraph 3
3. The competence centre shall remove the SEP from the register and the database. The competence centre shall maintain and make publicly available information on any SEP that had been removed from the register.
Amendment 307 #
Proposal for a regulation
Article 5 – paragraph 2 – point b a (new)
Article 5 – paragraph 2 – point b a (new)
(ba) any commitment by an SEP holder to offer SMEs favourable conditions or royalty-free access to its SEPs in line with Article 62;
Amendment 313 #
Proposal for a regulation
Article 26 – paragraph 5 – point a
Article 26 – paragraph 5 – point a
(a) the requirements for evaluators or conciliators, including a Code of Conduct and necessary qualifications, experience, and criteria for impartiality;
Amendment 316 #
Proposal for a regulation
Article 5 – paragraph 2 – point k
Article 5 – paragraph 2 – point k
(k) the date and the grounds for removal of the SEP from the database pursuant to Article 25, and a record of all relevant information on the removed SEP;
Amendment 319 #
Proposal for a regulation
Article 27 – paragraph 2
Article 27 – paragraph 2
2. The competence centre shall establish a roster of suitablequalified, experienced and impartial candidates for evaluators or conciliators. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise.
Amendment 322 #
Proposal for a regulation
Article 29 – paragraph 1
Article 29 – paragraph 1
1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process, unless they are a patent assertion entity or directly or indirectly controlled by a legal person that does not satisfy the definition of a micro or small enterprise. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).
Amendment 322 #
Proposal for a regulation
Article 6 – paragraph 1
Article 6 – paragraph 1
1. When a party requests that data and documents of the database be kept confidential, that party shall provide a reasoned statement justifying this confidentiality and a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version.
Amendment 324 #
Proposal for a regulation
Article 7 – paragraph 1 – introductory part
Article 7 – paragraph 1 – introductory part
A SEP holderny holder of a patent which is essential to a standard for which FRAND commitments have been made in one or more Member States shall provide to the competence centre the following information:
Amendment 328 #
Proposal for a regulation
Article 31 – paragraph 2
Article 31 – paragraph 2
2. The evaluator may invite the SEP holder or implementer concerned to file observations, within a period to be fixed by the evaluator.
Amendment 329 #
Proposal for a regulation
Article 32 – paragraph 6
Article 32 – paragraph 6
6. The competence centre shall notify the final reasoned opinion to the SEP holder and all other parties which have provided observations or evidence.
Amendment 331 #
Proposal for a regulation
Article 8 – paragraph 1 – introductory part
Article 8 – paragraph 1 – introductory part
A SEP holderny holder of a patent which is essential to a standard for which FRAND commitments have been made in one or more Member States shall provide to the competence centre the following information to be included in the database and referenced in the register:
Amendment 333 #
Proposal for a regulation
Article 8 – paragraph 1 – point a
Article 8 – paragraph 1 – point a
(a) a final decision on essentiality for a registered SEP made by a competent court of a Member State within 6 months from the publication of such decisiontwo weeks after the final judgement..
Amendment 336 #
Proposal for a regulation
Article 8 – paragraph 1 – point b
Article 8 – paragraph 1 – point b
(b) any other essentiality check prior to [OJ: please insert the date = 24 months from entry into force of this regulation] by an independent evaluator, including in the context of a patent pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator.
Amendment 344 #
Proposal for a regulation
Article 38 – paragraph 2
Article 38 – paragraph 2
2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and whether it commits to comply with its outcom, in case of disagreement, include the reasons for declining to participate.
Amendment 346 #
Proposal for a regulation
Article 9 – paragraph 1 – point g
Article 9 – paragraph 1 – point g
(g) list of products, services and processes that may be licensed through the patent pool or the entity;
Amendment 347 #
Proposal for a regulation
Article 38 – paragraph 3 – introductory part
Article 38 – paragraph 3 – introductory part
3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome, the following shall apply:
Amendment 347 #
Proposal for a regulation
Article 9 – paragraph 1 – point h
Article 9 – paragraph 1 – point h
(h) royalties and discount policy per product category, including information on royalty calculation per SEP owner in the pool and aggregate royalty rate, if applicable;
Amendment 349 #
Proposal for a regulation
Article 9 – paragraph 1 a (new)
Article 9 – paragraph 1 a (new)
(1a) The competence centre shall verify and report on the accuracy of the information published by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a publicly available methodology ensuring thorough, transparent and consistent verification.
Amendment 350 #
Proposal for a regulation
Article 10 – paragraph 1 – introductory part
Article 10 – paragraph 1 – introductory part
1. Competent courts of Member States shall notify the competence centre within 6 months from the adoption of atwo weeks after the final judgement concerning SEPs on:
Amendment 351 #
Proposal for a regulation
Article 38 – paragraph 3 – point a
Article 38 – paragraph 3 – point a
(a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination and whether it commits to comply with the outcome of the FRAND determination;
Amendment 354 #
Proposal for a regulation
Article 38 – paragraph 3 – point b
Article 38 – paragraph 3 – point b
(b) where the requesting party requests the continuation of the FRAND determination and commits to its outcome, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter.
Amendment 365 #
Proposal for a regulation
Article 38 – paragraph 4 – point a
Article 38 – paragraph 4 – point a
(a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days whether it also commits to comply with the outcome of the FRAND determination. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties;
Amendment 369 #
Proposal for a regulation
Article 38 – paragraph 4 – point b
Article 38 – paragraph 4 – point b
(b) where the requesting party does not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination.
Amendment 375 #
Proposal for a regulation
Article 38 – paragraph 4 a (new)
Article 38 – paragraph 4 a (new)
4 a. Both parties may declare a commitment to comply with the outcome of the FRAND determination at any time during the process. The commitment may be unilateral or contingent upon the other party’s agreement. The commitment shall have no impact on the outcome or continuation of the FRAND determination process.
Amendment 381 #
Proposal for a regulation
Article 17 – paragraph 4 a (new)
Article 17 – paragraph 4 a (new)
4a. The competence centre shall publish a call for expression of interest to invite other holders of SEPs for the standard, current implementers and implementers intending to place products with the standard on the market to participate in the process.
Amendment 383 #
Proposal for a regulation
Article 39 – title
Article 39 – title
Selection of the panel of conciliators
Amendment 383 #
Proposal for a regulation
Article 17 – paragraph 5
Article 17 – paragraph 5
5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders and implementers that expressed interest to participate in the process.
Amendment 385 #
Proposal for a regulation
Article 39 – paragraph 1
Article 39 – paragraph 1
1. Following the reply tocontinuation of the FRAND determination by the responding party in accordance with Article 38(2), or, the request to continue in accordance with Article 38(5), the competence centre shall propose at least 3 candidates for the FRAND determinationing and responding parties shall each nominate one conciliator from the roster of conciliators referred to in Article 27(2). The parties or party shall select to the panel of conciliators. Both conciliators shall jointly agree one of the proposed candidates as ane additional conciliator for the FRAND determination.
Amendment 385 #
Proposal for a regulation
Article 17 – paragraph 6
Article 17 – paragraph 6
6. SEP holders and implementers that submit to the conciliator confidential information shall provide a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence.
Amendment 386 #
Proposal for a regulation
Article 17 – paragraph 7
Article 17 – paragraph 7
7. Where the SEP holders referred to in paragraph (3) fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process.
Amendment 393 #
Proposal for a regulation
Article 18 – paragraph 2 – point b a (new)
Article 18 – paragraph 2 – point b a (new)
(ba) the standard has been included in the Delegated Act pursuant to Article 1(4).
Amendment 394 #
Proposal for a regulation
Article 18 – paragraph 4
Article 18 – paragraph 4
4. The competence centre shall notify the relevant standard development organisation and all knownrelevant stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published.
Amendment 396 #
Proposal for a regulation
Article 18 – paragraph 5
Article 18 – paragraph 5
5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers and other stakeholders shall provide information on any relevant implementations of the standard, including any relevant market share in the Union.
Amendment 398 #
Proposal for a regulation
Article 18 – paragraph 6
Article 18 – paragraph 6
6. If the requests for participation include 5 SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, and implementers holding collectively at least 10% relevant market share in the Unionor implementers, or at least 103 SMEs, , the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology.
Amendment 402 #
Proposal for a regulation
Article 18 – paragraph 8 – introductory part
Article 18 – paragraph 8 – introductory part
8. Following the appointment, the panel shall request the participating SEP interested parties, including SEP holders, implementers and other stakeholders to, within one month:
Amendment 404 #
Proposal for a regulation
Article 18 – paragraph 8 – introductory part
Article 18 – paragraph 8 – introductory part
8. Following the appointment, the panel shall request the participating SEP holderparties to, within one month:
Amendment 405 #
Proposal for a regulation
Article 18 – paragraph 8 – point b a (new)
Article 18 – paragraph 8 – point b a (new)
(ba) provide any evidence or observations to assist the panel in determining an opinion on aggregate royalty.
Amendment 407 #
Proposal for a regulation
Article 18 – paragraph 8 a (new)
Article 18 – paragraph 8 a (new)
8a. The panel shall permit participants to submit responses to the submissions provided for in paragraph 8.
Amendment 408 #
Proposal for a regulation
Article 18 – paragraph 9 – point a
Article 18 – paragraph 9 – point a
(a) to suspend the procedure for the expert opinion on aggregate royalty for an initial period of no longer than 6 months, which can be further extended on the basis of a duly justified request by one of the participating SEP holders, or
Amendment 413 #
Proposal for a regulation
Article 18 – paragraph 10
Article 18 – paragraph 10
10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 89(a) or of the decision referred to in paragraph 89(b). The opinion shall be supported by at least two of the three conciliators.
Amendment 414 #
Proposal for a regulation
Article 46 – paragraph 1 – point b
Article 46 – paragraph 1 – point b
Amendment 414 #
Proposal for a regulation
Article 18 – paragraph 11
Article 18 – paragraph 11
11. 1The expert opinion shall include a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the recommended aggregate royalty rate, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion.
Amendment 422 #
Proposal for a regulation
Article 48 – paragraph 2
Article 48 – paragraph 2
2. The panel of conciliators may examine publicly available information and the competence centre’s register and confidential and non-confidential reports of other FRAND determinations, aggregate royalty rates submitted pursuant to Article 15, non-binding expert opinions on aggregate royalty rates established pursuant to Article 18 as well as non- confidential documents and information produced by or submitted to the competence centre.
Amendment 432 #
Proposal for a regulation
Article 22 – paragraph 4 a (new)
Article 22 – paragraph 4 a (new)
4a. If an SEP has been suspended from the register pursuant to paragraph (4), the date of registration shall be the date when the incompleteness or inaccuracy has been remedied.
Amendment 441 #
Proposal for a regulation
Article 56 – paragraph 4
Article 56 – paragraph 4
4. A competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination, or, in the cases foreseen in Article 38(3)(b) and Article 38(4)(c), with a notice of commitment pursuant to Article 38(5).
Amendment 446 #
Proposal for a regulation
Article 24 – paragraph 1
Article 24 – paragraph 1
Amendment 450 #
Proposal for a regulation
Article 24 – paragraph 3
Article 24 – paragraph 3
3. Paragraphs (1) and (2) areis without prejudice to provisions included in contracts setting a royalty for a broad portfolio of patentSEPs, present or future, stipulating that the invalidity, non- essentiality or unenforceability of a limited number thereof shall not affect the overall amount and enforceability of the royalty or other terms and conditions of the contract.
Amendment 452 #
Proposal for a regulation
Article 61 – paragraph 3 a (new)
Article 61 – paragraph 3 a (new)
3 a. This Article shall not apply to patent assertion entities irrespective of their status as a micro, small or medium- sized enterprise.
Amendment 452 #
Proposal for a regulation
Article 24 – paragraph 4
Article 24 – paragraph 4
4. Paragraphs (1) and (2) applypplies also in case the registration of a SEP is suspended, during the suspension period pursuant to Article 22(4) or 23(5), except where the Boards of Appeal request the competence centre to correct its findings in accordance with Article 22(5) and 23(6).
Amendment 454 #
Proposal for a regulation
Article 24 – paragraph 5
Article 24 – paragraph 5
5. A competent court of a Member State requested to decide on any issue in related toion to the implementation of a SEP in force in one or more Member States, shall verify whether the SEP is registered as part of the decision on admissibility of the action pursuant to paragraph 1.
Amendment 459 #
Proposal for a regulation
Article 25 – paragraph 3 a (new)
Article 25 – paragraph 3 a (new)
3a. The competence centre shall maintain and make publicly available a record of all SEPs removed from the register and the database.
Amendment 476 #
Proposal for a regulation
Article 66
Article 66
Amendment 485 #
Proposal for a regulation
Article 26 – paragraph 5 – point a
Article 26 – paragraph 5 – point a
(a) the requirements for evaluators or conciliators, including a Code of Conduct, necessary qualifications, experience, and criteria for impartiality;
Amendment 493 #
Proposal for a regulation
Article 27 – paragraph 2
Article 27 – paragraph 2
2. The competence centre shall establish a roster of suitablequalified, impartial candidates for evaluators or conciliators. There may be with sufficient experience. The competence centre may decide to establish different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise.
Amendment 497 #
Proposal for a regulation
Article 27 – paragraph 3
Article 27 – paragraph 3
3. Where the competence centre has not yet established roster of candidates evaluators or conciliators at the moment of the first registrations or FRAND determination, the competence centre shall invite ad hoc renowned experts who satisfy the requirements set out in the implementing act referred to in Article 26(5).
Amendment 499 #
Proposal for a regulation
Article 27 – paragraph 4 a (new)
Article 27 – paragraph 4 a (new)
4a. The competence centre shall publish the list of rosters of evaluators and conciliators.
Amendment 504 #
Proposal for a regulation
Article 28 – paragraph 1
Article 28 – paragraph 1
1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in an transparent, objective and impartial manner and that confidentiality of the information obtained is safeguarded.
Amendment 510 #
Proposal for a regulation
Article 29 – paragraph 1
Article 29 – paragraph 1
1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process, unless they are a patent assertion entity or directly or indirectly controlled by a legal person that does not satisfy the definition of a micro or small enterprise. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).
Amendment 518 #
Proposal for a regulation
Article 30 – paragraph 1
Article 30 – paragraph 1
1. Within 90 days following the publication of the list of registered SEPs selected for sampling, any stakeholder may submit to the competence centre written observations and evidence concerning the essentiality of the selected SEPs.
Amendment 519 #
Proposal for a regulation
Article 30 – paragraph 3
Article 30 – paragraph 3
3. The competence centre shall provide the observations, evidence and the responses by the SEP holder to the evaluator following the expiry of the set time limits.
Amendment 521 #
Proposal for a regulation
Article 31 – paragraph 2
Article 31 – paragraph 2
2. The evaluator may invite the SEP holder, implementers and other stakeholders concerned to file observations and evidence, within a period to be fixed by the evaluator.
Amendment 522 #
Proposal for a regulation
Article 31 – paragraph 3
Article 31 – paragraph 3
3. Where an evaluator has reasons to believe that the SEP may not be essential to the standard, the competence centre shall inform the SEP holder, implementers and other stakeholders which have provided observations or evidence of any such reasons and specify a period within which the SEP holder may submit its observations, or submit an amended claim chart.
Amendment 523 #
Proposal for a regulation
Article 31 – paragraph 4
Article 31 – paragraph 4
4. The evaluator shall duly consider any information provided by the SEP holder, implementers and other stakeholders.
Amendment 524 #
Proposal for a regulation
Article 31 – paragraph 6
Article 31 – paragraph 6
6. The competence centre shall notify the reasoned opinion to the SEP holder, and implementers and other stakeholders which have provided observations or evidence.
Amendment 526 #
Proposal for a regulation
Article 32 – paragraph 1
Article 32 – paragraph 1
1. Where the competence centre has informed the SEP holder, implementers and other stakeholders which have provided observations or evidence pursuant to Article 31(3), the SEP holder may request peer evaluation before the expiry of the period to submit its observations pursuant to Article 31(3).
Amendment 527 #
Proposal for a regulation
Article 32 – paragraph 3
Article 32 – paragraph 3
3. The peer evaluator shall duly consider all the information submitted by the SEP holder, implementers and other stakeholders which have provided observations or evidence, the reasons of the initial evaluator why the SEP may not be essential to the standard and any amended claim chart or additional observations provided by the SEP holder, implementers and other stakeholders.
Amendment 528 #
Proposal for a regulation
Article 32 – paragraph 4
Article 32 – paragraph 4
4. In case the peer evaluation confirmed the preliminary conclusions of the evaluator that the evaluated SEP may not be essential to the standard for which it was registered, the peer evaluator shall inform the competence centre and provide the reasons for this opinion. The competence centre shall inform the SEP holder and invite the SEP holder, implementers and other stakeholders which have provided observations or evidence and invite them to submit itstheir observations.
Amendment 529 #
Proposal for a regulation
Article 32 – paragraph 5
Article 32 – paragraph 5
5. The peer evaluator shall duly consider the observations of the SEP holder, implementers and other stakeholders which have provided observations or evidence and issue a final reasoned opinion to the competence centre within 3 months from its appointment. The final reasoned opinion shall include the name of the SEP holder, of involved implementers and other stakeholders, of the evaluator and of the peer evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination and peer evaluation procedure, the preliminary conclusion of the evaluator, the result of the peer evaluation and the reasons on which that result is based.
Amendment 530 #
Proposal for a regulation
Article 32 – paragraph 6
Article 32 – paragraph 6
6. The competence centre shall notify the final reasoned opinion to the SEP holder, implementers and other stakeholders which have provided observations or evidence.
Amendment 533 #
Proposal for a regulation
Article 34 – paragraph 1 – point a
Article 34 – paragraph 1 – point a
(a) SEP holder, prior to any initiation ofpursuing a SEP infringement claim before a competent court of a Member State;
Amendment 534 #
Proposal for a regulation
Article 34 – paragraph 1 – point b
Article 34 – paragraph 1 – point b
(b) an implementer of a SEP prior to pursuing any request for the determination or assessment of FRAND terms and conditions of a SEP licence before a competent court of a Member State.
Amendment 541 #
Proposal for a regulation
Article 34 – paragraph 4
Article 34 – paragraph 4
4. The obligation to initiate FRAND determination pursuant to paragraph 1 prior to thepursuing court proceedings is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction of a financial nature against the alleged infringer. The provisional injunction shall exclude the seizure of property of the alleged infringer and the seizure or delivery up of the products suspected of infringing a SEP. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member States shall consider that a procedure for FRAND determination is ongoing.
Amendment 542 #
Proposal for a regulation
Article 34 – paragraph 4 a (new)
Article 34 – paragraph 4 a (new)
4a. A competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claims concerning a SEP in force in one or more Member States subject to FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination.
Amendment 545 #
Proposal for a regulation
Article 34 – paragraph 5
Article 34 – paragraph 5
5. Once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, shall be available to all parties.
Amendment 547 #
Proposal for a regulation
Article 37 – paragraph 1
Article 37 – paragraph 1
1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(5)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months, unless both parties agree to an extension of the FRAND determination procedure.
Amendment 550 #
Proposal for a regulation
Article 38 – paragraph 1
Article 38 – paragraph 1
1. The competence centre shall notify the request to the responding party within 7 days, including the information submitted pursuant to Article 36, and shall inform the requesting party thereof.
Amendment 551 #
Proposal for a regulation
Article 38 – paragraph 2
Article 38 – paragraph 2
2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination, and whether, itn commits to comply with its outcomease of disagreement, include the reasons for declining participation.
Amendment 557 #
Proposal for a regulation
Article 38 – paragraph 3 – introductory part
Article 38 – paragraph 3 – introductory part
3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome, the following shall apply:
Amendment 561 #
Proposal for a regulation
Article 38 – paragraph 3 – point a
Article 38 – paragraph 3 – point a
(a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination and whether it commits to comply with the outcome of the FRAND determination;
Amendment 567 #
Proposal for a regulation
Article 38 – paragraph 3 – point b
Article 38 – paragraph 3 – point b
(b) where the requesting party requests the continuation of the FRAND determination and commits to its outcome, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter.
Amendment 572 #
Proposal for a regulation
Article 38 – paragraph 4 – introductory part
Article 38 – paragraph 4 – introductory part
4. Where the responding party agrees to the FRAND determination and commits to comply with its outcome pursuant to paragraph (2), including where such commitment is contingent upon the commitment of the requesting party to comply with the outcome of the FRAND determinationpursuant to paragraph (2), the following shall apply:
Amendment 578 #
Proposal for a regulation
Article 38 – paragraph 4 – point a
Article 38 – paragraph 4 – point a
(a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days whether it also commits to comply with the outcome of the FRAND determination. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties;
Amendment 582 #
Proposal for a regulation
Article 38 – paragraph 4 – point b
Article 38 – paragraph 4 – point b
(b) where the requesting party does not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination.
Amendment 587 #
Proposal for a regulation
Article 38 – paragraph 4 a (new)
Article 38 – paragraph 4 a (new)
4a. Both parties may declare a commitment to comply with the outcome of the FRAND determination at any time during the process. The commitment may be unilateral or contingent upon the other party’s agreement. The commitment shall have no impact on the outcome or continuation of the FRAND determination process.
Amendment 591 #
Proposal for a regulation
Article 38 – paragraph 5
Article 38 – paragraph 5
5. Where either party commits to comply with the outcome of the FRAND determination, while the other party fails to do so within the applicable time limits, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time-limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party.
Amendment 595 #
Proposal for a regulation
Article 39 – title
Article 39 – title
Selection of the panel of conciliators
Amendment 599 #
Proposal for a regulation
Article 39 – paragraph 1
Article 39 – paragraph 1
1. Following the reply tocontinuation of the FRAND determination by the responding party in accordance with Article 38(2), or, the request to continue in accordance with Article 38(5), the competence centre shall propose at least 3 candidates for the FRAND determinationing and responding parties shall each nominate one conciliator from the roster of conciliators referred to in Article 27(2). The parties or party shall select to the panel of conciliators. Both conciliators shall jointly agree one of the proposed candidates as ane further conciliator for the FRAND determination from the roster of conciliators referred to in Article 27(2).
Amendment 602 #
Proposal for a regulation
Article 39 – paragraph 2
Article 39 – paragraph 2
2. If the parties do not agree on a third conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2).
Amendment 606 #
Proposal for a regulation
Article 40 – paragraph 2
Article 40 – paragraph 2
2. The day following the notification of the acceptance to the parties, the panel of conciliators is appointed, and the competence centre shall refer the case to him/herit.
Amendment 608 #
Proposal for a regulation
Article 42 – paragraph 1
Article 42 – paragraph 1
1. After the case is referred to the panel of conciliators in accordance with Article 40(2), he/sheit shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure.
Amendment 610 #
Proposal for a regulation
Article 42 – paragraph 2
Article 42 – paragraph 2
2. He/sheThe panel shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure.
Amendment 615 #
Proposal for a regulation
Article 44 – paragraph 1
Article 44 – paragraph 1
1. A party may submit an objection stating that thepanel of conciliators is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, no later than in the first written submission. The other party shall be given opportunity to submit its observations.
Amendment 617 #
Proposal for a regulation
Article 44 – paragraph 2
Article 44 – paragraph 2
2. The panel of conciliators shall decide on the objection and either reject it as unfounded before considering the merits of the case or join it to the examination of the merits of the FRAND determination. If the panel of conciliators overrules the objection or joins it to the examination of the merits of the determination of FRAND terms and conditions, it shall resume consideration of the determination of FRAND terms and conditions.
Amendment 620 #
Proposal for a regulation
Article 44 – paragraph 3
Article 44 – paragraph 3
3. If the panel of conciliators decides that the objection is founded, it shall terminate the FRAND determination and shall draw up a report stating the reasons of the decision.
Amendment 622 #
Proposal for a regulation
Article 45 – paragraph 1
Article 45 – paragraph 1
1. The panel of conciliators shall assist the parties in an independent and impartial manner in their endeavour to reach a determination of FRAND terms and conditions.
Amendment 626 #
Proposal for a regulation
Article 45 – paragraph 2
Article 45 – paragraph 2
2. The panel of conciliators may invite the parties or the party requesting the continuation of the FRAND determination to meet with him/herit or may communicate with him/herit orally or in writing.
Amendment 629 #
Proposal for a regulation
Article 45 – paragraph 3
Article 45 – paragraph 3
3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the panel of conciliators and, in particular, shall attend the meetings, comply with his/herits requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the panel of conciliators to hear witnesses and experts whom the conciliator might call.
Amendment 635 #
Proposal for a regulation
Article 45 – paragraph 5
Article 45 – paragraph 5
5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the panel of conciliators shall terminate the FRAND determination.
Amendment 636 #
Proposal for a regulation
Article 46 – paragraph 1 – point a
Article 46 – paragraph 1 – point a
(a) fails to comply with any request of the panel of conciliators, Rrules of procedure or schedule of procedure referred to in Article 42(2), or
Amendment 640 #
Proposal for a regulation
Article 46 – paragraph 1 – point b
Article 46 – paragraph 1 – point b
Amendment 641 #
Proposal for a regulation
Article 46 – paragraph 1 – concluding part
Article 46 – paragraph 1 – concluding part
the panel of conciliators shall inform both parties thereof.
Amendment 644 #
Proposal for a regulation
Article 46 – paragraph 2 – introductory part
Article 46 – paragraph 2 – introductory part
2. Having received the notification of the panel of conciliators, the complying party may ask the panel of conciliators to take one of the following actions:
Amendment 648 #
Proposal for a regulation
Article 46 – paragraph 3
Article 46 – paragraph 3
3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the panel of conciliators or in any other way fails to comply with a requirement relating to the FRAND determination, the panel of conciliators shall terminate the procedure.
Amendment 652 #
Proposal for a regulation
Article 47 – paragraph 2
Article 47 – paragraph 2
2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the panel of conciliators, or where he/sheit has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any other party with the consent of the other party.
Amendment 654 #
Proposal for a regulation
Article 48 – paragraph 1
Article 48 – paragraph 1
1. Without prejudice to the protection of confidentiality in accordance with Article 54(3) at any time during the FRAND determination, at the request of a party or on its own motion, the panel of conciliators may request the production of documents or other evidence.
Amendment 656 #
Proposal for a regulation
Article 48 – paragraph 2
Article 48 – paragraph 2
2. The panel of conciliators may examine publicly available information and the competence centre’s register and confidential and non-confidential reports of other FRAND determinations, aggregate royalty rates submitted pursuant to Article 15, non-binding expert opinions on aggregate royalty rates established pursuant to Article 18 as well as other non-confidential documents and information produced by or submitted to the competence centre.
Amendment 659 #
Proposal for a regulation
Article 49
Article 49
The panel of conciliators may hear witnesses and experts requested by either party provided that the evidence is necessary for the FRAND determination and that there is time to consider such evidence.
Amendment 660 #
Proposal for a regulation
Article 50 – paragraph 1
Article 50 – paragraph 1
1. At any time during the FRAND determination, the panel of conciliators or a party on its own motion or by invitation of the panel of conciliators may submit proposals for a determination of FRAND terms and conditions.
Amendment 667 #
Proposal for a regulation
Article 51 – title
Article 51 – title
Recommendation of a determination of FRAND terms and conditions by the panel of conciliators
Amendment 670 #
Proposal for a regulation
Article 51 – paragraph 1
Article 51 – paragraph 1
The panel of conciliators shall notify the parties a written recommendation of a determination of FRAND terms and conditions at the latest 5 months before the time limit referred to in Article 37.
Amendment 671 #
Proposal for a regulation
Article 52 – paragraph 1
Article 52 – paragraph 1
Following the notification of the written recommendation of FRAND terms and conditions by the panel of conciliators, either party shall submit a detailed and reasoned proposal for a determination of FRAND terms and conditions. If a party has already submitted a proposal for the determination of FRAND terms and conditions, revised versions shall be submitted, if necessary, taking into account the recommendation of the panel of conciliators.
Amendment 674 #
Proposal for a regulation
Article 53 – paragraph 1
Article 53 – paragraph 1
If the panel of conciliators considers it necessary or if a party so requests, an oral hearing shall be held within 20 days after the submission of reasoned proposals for determination of FRAND terms and conditions.
Amendment 675 #
Proposal for a regulation
Article 54 – paragraph 1
Article 54 – paragraph 1
1. When the panel of conciliators receives information for the purposes of FRAND determination from a party, it shall disclose it to the other party so that the other party has the opportunity to present any explanation.
Amendment 679 #
Proposal for a regulation
Article 54 – paragraph 2
Article 54 – paragraph 2
2. A party may request the panel of conciliators that specific information in a submitted document is kept confidential.
Amendment 681 #
Proposal for a regulation
Article 54 – paragraph 3
Article 54 – paragraph 3
3. When a party requests the information in a document it had submitted to be kept confidential, the panel of conciliators shall not disclose that information to the other party. The party invoking confidentiality shall also provide a non- confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. This non-confidential version shall be disclosed to the other party.
Amendment 683 #
Proposal for a regulation
Article 55 – title
Article 55 – title
Reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators
Amendment 686 #
Proposal for a regulation
Article 55 – paragraph 1
Article 55 – paragraph 1
1. At the latest 45 days before the end of the time limit referred to in Article 37, the panel of conciliators shall submit a reasoned proposal for a determination of FRAND terms and conditions to the parties or, as applicable, the party requesting the continuation of the FRAND determination.
Amendment 691 #
Proposal for a regulation
Article 55 – paragraph 2
Article 55 – paragraph 2
2. Either party may submit observations to the proposal and suggest amendments to the proposal by the panel of conciliators, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation.
Amendment 697 #
Proposal for a regulation
Article 56 – paragraph 1 – point b
Article 56 – paragraph 1 – point b
(b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55;
Amendment 701 #
Proposal for a regulation
Article 56 – paragraph 1 – point c
Article 56 – paragraph 1 – point c
(c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55;
Amendment 703 #
Proposal for a regulation
Article 56 – paragraph 1 – point d
Article 56 – paragraph 1 – point d
(d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55.
Amendment 709 #
Proposal for a regulation
Article 56 – paragraph 4
Article 56 – paragraph 4
4. A competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination, or, in the cases foreseen in Article 38(3)(b) and Article 38(4)(c), with a notice of commitment pursuant to Article 38(5).
Amendment 714 #
Proposal for a regulation
Article 57 – paragraph 1
Article 57 – paragraph 1
1. The panel of conciliators shall provide the parties with a written report following the termination of the FRAND determination in cases listed in Article 56(1), point (c) and Article 56(1), point (d).
Amendment 724 #
Proposal for a regulation
Article 58 – paragraph 1
Article 58 – paragraph 1
1. Except the methodology and the assessment of the FRAND determination by the panel of conciliators referred to in Article 57(2), point (d), the competence centre shall keep confidential the determination of FRAND terms and conditions, any proposals for determination of FRAND terms and conditions submitted during the procedure and any documentary or other evidence disclosed during the FRAND determination which is not publicly available, unless otherwise provided by the parties.
Amendment 731 #
Proposal for a regulation
Article 61 – paragraph 3 a (new)
Article 61 – paragraph 3 a (new)
3a. This Article shall not apply to patent assertion entities irrespective of their status as a micro, small or medium- sized enterprise.
Amendment 735 #
Proposal for a regulation
Article 62 – paragraph 1
Article 62 – paragraph 1
1. When negotiating a SEP licence with micro, small and medium-sized enterprises, SEP holders shall consider offering tooffer them FRAND terms and conditions that are more favourable than the FRAND terms and conditions they offer to enterprises that are not micro, small and medium-sized for the same standard and implementationstake account of the economic capacity of the micro, small and medium-sized enterprises in line with their obligation to ensure that the terms and conditions are fair, reasonable and non-discriminatory.
Amendment 737 #
Proposal for a regulation
Article 62 – paragraph 2
Article 62 – paragraph 2
2. IfWhen a SEP holder offerconcludes a SEP licence that includes more favourable FRAND terms and conditions to micro, small and medium-sized enterprises, or concludes a SEP licence that includes more favourable terms and conditions,han those offered to companies that are not a micro, small or medium-sized enterprise pursuant to paragraph (1), such FRAND terms and conditions shall not be considered in a FRAND determination, unless the FRAND determination is conducted solely with regard to FRAND terms and conditions for another micro, small or medium-sized enterprise.
Amendment 739 #
Proposal for a regulation
Article 62 – paragraph 3 a (new)
Article 62 – paragraph 3 a (new)
3a. Where a SEP holder can demonstrate that the FRAND terms and conditions offered to one or more micro, small or medium-sized enterprises are more favourable than FRAND terms and conditions offered to companies that are not a micro, small or medium-sized enterprise, they shall not be subject to the obligations of Title IV of this Regulation in relation to the SEP license offered to these micro, small or medium-sized enterprises.
Amendment 755 #
Proposal for a regulation
Article 66
Article 66