[ParlTrack]

Proposal for a regulation
Recital 11 a (new)

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

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Recital 12

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

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Recital 20

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

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Recital 22

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

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Recital 35

(35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunction of a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings~~, but the parties should request that the case be suspended during the FRAND determination~~. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. ~~It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties.~~

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Recital 43

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

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Article 20 – paragraph 5

5. A SEP holder shall update the information in the register and database yearly to reflect relevant changes in relation to its registered SEP by notifying the competence centre ~~within 6 months from the change occurring~~.

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Article 24

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

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Article 34 – paragraph 4

4. The obligation to initiate FRAND determination pursuant to paragraph 1 ~~prior to the court proceedings~~ is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction of a financial nature against the alleged infringer. The provisional injunction shall exclude the seizure of property of the alleged infringer and the seizure or delivery up of the products suspected of infringing a SEP. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member States shall consider that a procedure for FRAND determination is ongoing.

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Article 34 – paragraph 5

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

2023/10/31
Committee: JURI

Angelika NIEBLER

Proposal for a regulation
Article 37 – paragraph 2

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

2023/10/31
Committee: JURI

Angelika NIEBLER

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

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

2023/10/31
Committee: JURI

12 Amendments of Angelika NIEBLER related to 2023/0133(COD)

ParlTrack - 2011-2024