This document is an excerpt from the EUR-Lex website
Document 52024AP0100
P9_TA(2024)0100 – Standard essential patents – European Parliament legislative resolution of 28 February 2024 on the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001 (COM(2023)0232 – C9-0147/2023 – 2023/0133(COD)) (Ordinary legislative procedure: first reading)
P9_TA(2024)0100 – Standard essential patents – European Parliament legislative resolution of 28 February 2024 on the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001 (COM(2023)0232 – C9-0147/2023 – 2023/0133(COD)) (Ordinary legislative procedure: first reading)
P9_TA(2024)0100 – Standard essential patents – European Parliament legislative resolution of 28 February 2024 on the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001 (COM(2023)0232 – C9-0147/2023 – 2023/0133(COD)) (Ordinary legislative procedure: first reading)
OJ C, C/2025/1360, 17.3.2025, ELI: http://data.europa.eu/eli/C/2025/1360/oj (BG, ES, CS, DA, DE, ET, EL, EN, FR, GA, HR, IT, LV, LT, HU, MT, NL, PL, PT, RO, SK, SL, FI, SV)
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Official Journal |
EN C series |
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C/2025/1360 |
17.3.2025 |
P9_TA(2024)0100
Standard essential patents
European Parliament legislative resolution of 28 February 2024 on the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001 (COM(2023)0232 – C9-0147/2023 – 2023/0133(COD))
(Ordinary legislative procedure: first reading)
(C/2025/1360)
The European Parliament,
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having regard to the Commission proposal to Parliament and the Council (COM(2023)0232), |
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having regard to Article 294(2) and Article 114 of the Treaty on the Functioning of the European Union, pursuant to which the Commission submitted the proposal to Parliament (C9-0147/2023), |
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having regard to Article 294(3) of the Treaty on the Functioning of the European Union, |
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having regard to the opinion of the European Economic and Social Committee of 20 September 2023 (1), |
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having regard to Rule 59 of its Rules of Procedure, |
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having regard to the opinions of the Committee on International Trade and the Committee on the Internal Market and Consumer Protection, |
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having regard to the report of the Committee on Legal Affairs (A9-0016/2024), |
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Adopts its position at first reading hereinafter set out; |
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Calls on the Commission to refer the matter to Parliament again if it replaces, substantially amends or intends to substantially amend its proposal; |
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Instructs its President to forward its position to the Council, the Commission and the national parliaments. |
(1) OJ C, C/2023/865, 8.12.2023, ELI: http://data.europa.eu/eli/C/2023/865/oj.
P9_TC1-COD(2023)0133
Position of the European Parliament adopted at first reading on 28 February 2024 with a view to the adoption of Regulation (EU) 2024/… of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001
(Text with EEA relevance)
THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty on the Functioning of the European Union, and in particular Article 114 thereof,
Having regard to the proposal from the European Commission,
After transmission of the draft legislative act to the national parliaments,
Having regard to the opinion of the European Economic and Social Committee (1),
Having regard to the opinion of the Committee of the Regions (2),
Acting in accordance with the ordinary legislative procedure,
Whereas:
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(1) |
On 25 November 2020, the Commission published its intellectual property action plan (3), where it announced its goals of promoting transparency and predictability in licensing of standard essential patents (SEPs), including by improving the SEP licensing system, for the benefit of Union industry and consumers, and in particular micro, small and medium-sized enterprises (SMEs) (4). The action plan was supported by Council Conclusions of 18 June 2021 (5) and by the European Parliament in its Resolution of 11 November 2021 (6) . [Am. 1] |
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(2) |
This Regulation aims at improving the licensing of SEPs, by addressing the causes of inefficient licensing such as insufficient transparency with regard to SEPs, fair, reasonable and non-discriminatory (FRAND) terms and conditions and licensing in the value chain, and limited use of dispute resolution procedures for resolving FRAND disputes. All these together reduce the overall fairness and efficiency of the system and result in excess administrative and transactional costs , which reduces the resources available for investment in innovation . By improving the licensing of SEPs, the Regulation aims to incentivise participation by European firms in the standard development process and the broad implementation of such standardised technologies, particularly in Internet of Things (IoT) industries. Therefore, this Regulation pursues objectives that are complementary to, but different from that of protecting undistorted competition, guaranteed by Articles 101 and 102 TFEU. This Regulation should also be without prejudice to national competition rules. [Ams. 2 and 280] |
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(2a) |
Good faith SEP licensing negotiations between parties occur in many cases, yet in some, SEPs become the subject of legal proceedings. This Regulation aims to provide advantages to both Union SEP holders and SEP implementers by introducing mechanisms designed to address two key issues. First, situations where SEP implementers unreasonably delay or decline FRAND licenses. Second, scenarios where SEP holders impose non-FRAND royalties due to the risk of injunction and a lack of transparency. It is essential to ensure that SEP holders and implementers act in good faith before, during and after licensing negotiations. SEP implementers using standardised technology should proactively seek to take a license from the SEP holder who owns the technology they use and SEP holders should grant a license under FRAND terms and conditions to any party seeking one, irrespective of the position of the potential licensee in the respective value chain. [Am. 3] |
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(2b) |
The measures introduced by this Regulation are consistent with the objectives of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (the ‘TRIPs Agreement’) to promote technological innovation and the dissemination of technology to the mutual advantage of the SEP holder and the user, as well as with the principles of preventing the abuse of intellectual property rights and adopting measures for public interest reasons. In particular, according to the TRIPs Agreement, an exception to the exclusive rights conferred by a patent is justified if it does not unreasonably conflict with a normal exploitation of the patent and it does not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. [Am. 4] |
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(3) |
SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents in force in one or more Member States that a SEP holder claims to be 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 or has not 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. [Am. 5] |
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(4) |
There are well established commercial relationships and licensing practices for certain use cases implementations 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 implementations – 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 implementations in which there is sufficient evidence that SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies. [Am. 6] |
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(4a) |
Significant difficulties or inefficiencies in the licensing of SEPs that affect the functioning of the internal market might result from, among other things, material impediments to the timely and effective deployment, development, distribution or commercialisation of a product, service, or technology, but also unreasonable delays, involving an undue postponement of the conclusion of a licence agreement. They may also result from excessive costs, multiple legal disputes, challenges or litigations involving more than one SEP holder or SEP implementer, as well as from barriers to innovation where the implementation of a standard, including any lack thereof, hinders, limits or curtails technological innovation or advancement, as compared to industry norms. [Am. 7] |
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(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 implementations underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent innovative technologies and emerging use cases implementations . 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 implementations , for which SEPs can be registered. [Am. 8] |
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(6) |
Because a FRAND commitment should be made for any SEP declared claimed to be essential to any standard intended for repeated and continuous application, the meaning of standards should be broader than in Regulation (EU) No 1025/2012 of the European Parliament and of the Council (7). [Am. 9] |
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(7) |
Licensing on FRAND terms and conditions , which are key in the development of the digital society, includes licensing royalty-free. Given that most issues arise with royalty-bearing licensing policies, this Regulation does not apply to royalty-free licensing of SEPs, except where such SEPs are part of a portfolio of patents licenses for royalties . [Am. 10] |
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(7a) |
Open standards are key in the development of our digital society, including the development of open source software. Open standards remove barriers to interoperability, promote choice between vendors and technology solutions and ensure market competition and innovation. This Regulation applies to open standards, whilst not discouraging SEP holders to innovate and participate in the open collaborative standards development. [Am. 11] |
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(8) |
In view of the global character of SEP licensing, references to aggregate royalty and FRAND determination may refer to global aggregate royalties and global FRAND determinations, or as otherwise agreed by the notifying stakeholders or the parties to the proceedings. |
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(9) |
In the Union, standard setting and the application of competition law rules related to FRAND obligation to standard essential patents are guided by the Horizontal Guidelines (8) and the Court of Justice judgment of 16 July 2015 in case C-170/13, Huawei Technologies Co. Ltd v ZTE Corp. and ZTE Deutschland GmbH (9). The Court of Justice recognised the right of a SEP holder to seek to enforce its patents in national courts subject to certain conditions that must be fulfilled to prevent an abuse of dominant position by the SEP holder when seeking an injunction. Since a patent confers on its holder the exclusive right to prevent any third party from using the invention without the holder’s consent only in the jurisdiction for which it is issued, the patent disputes are governed by national patent laws and civil proceedings and/or enforcement laws harmonised by Directive 2004/48/EC of the European Parliament and of the Council (10). |
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(10) |
As there are specific procedures for assessing the validity and the infringement of patents, this Regulation should not affect such procedures. |
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(10a) |
Patent pools, as industry-led joint patent licensing solutions, are beneficial to the market and companies involved with SEP licensing, including both SEP holders and SEP implementers. They are a predictable and fair option for licensing patented technologies essential for a standard, since they allow an agreement to be reached on a widely acceptable set of licensing terms and conditions between companies from across the world. Since patent pools deal with SEPs, they should also commit to FRAND terms and conditions and they should provide full transparency with regard to the patents that are covered by their portfolio, ideally license them to all interested licensees regardless of their position in the value chain and preferably include all the SEPs relevant to the standard. [Am. 12] |
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(10b) |
While competition scrutiny of patent pools has already taken place, the uncertainty over the compatibility of licensee negotiation groups (LNGs) formed by SEP implementers still remains. LNGs can streamline the negotiation process, thereby reducing the administrative burden and ensuring that the licensing terms and conditions are more uniform and equitable for all participating SEP implementers. LNGs benefit SMEs in particular. The Commission should therefore examine the competitive impact of LNGs and analyse which conditions they should fulfil in order to comply with competition law while avoiding the risk of offering ‘hold-out’ options to participating SEP implementers. [Am. 13] |
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(11) |
Any reference to a competent court of a Member State in this Regulation includes the Unified Patent Court where the conditions are met. |
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(12) |
As the agency of the European Union in charge of intellectual property rights and in order to facilitate the implementation of this Regulation, the European Union Intellectual Property Office (EUIPO) should perform the relevant tasks by means of a competence centre. The EUIPO has extensive experience with managing databases, electronic registers and alternative dispute settlement mechanisms, which are key aspects of the functions assigned under this Regulation. It is necessary to equip crucial to ensure that the competence centre with has the necessary means, including human and financial resources to fulfil effectively perform its tasks. [Am. 14] |
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SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. Therefore, it is important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal, including through a meaningful engagement of stakeholders. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence and any potential impact of existing indemnification clauses downstream within a value chain. The framework provided for in this Regulation should promote the European Union’s technological leadership in innovation. [Am. 15] |
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(13) |
The competence centre should on the one hand set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs . The electronic register should serve as a foundational repository designed to be the primary reference point for users, providing basic information about SEPs free of charge. On the other hand , the competence centre should offer assistance to SMEs. The setting also set up and administering a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis administer an electronic database providing easily accessible information in a more extensive and comprehensive dataset to which access could be subject to the payment of a reasonable and proportionate fee. Public authorities , including through the use of new technologies. In line with this objective, the competence centre courts, should have access to the information in the database free of charge. Academic institutions should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and also be able to request access to the information free of charge under certain conditions. The electronic register and the electronic database should encourage consistency in their practices offer a high level of legal certainty . [Am. 16] |
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(13a) |
In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs and start-ups. The setting up and administering of a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices. [Am. 17] |
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(14) |
The competence centre should be the subject of to Union rules on access to documents and data protection. Its tasks should be designed to increase transparency by making existing information relevant to SEPs available to all stakeholders in a centralised and systematic way. Therefore, a balance would have to should be made between the free public access to basic information and the need to finance the functioning of the competence centre. In order to cover the maintenance costs a registration fee should be requested to access detailed information contained in the database, such as results of any essentiality checks and non-confidential FRAND determination reports. [Am. 18] |
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(15) |
Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holder 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 SEP implementers and SEP holders would benefit from making public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing. [Am. 19] |
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(16) |
SEP holders should have the opportunity to first inform the competence centre of the publication of the standard in respect of which they claim essentiality or the aggregate royalty which they have agreed upon among themselves. Except for those use cases implementations of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and/or implementers should be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain. [Am. 20] |
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(16a) |
SEP holders and SEP implementers should be able to request that the competence centre provides a non-binding expert opinion by an independent third party 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 an expert opinion on the 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. In this respect, it would be important 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. [Am. 21] |
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(17) |
In line with the general principles and objectives of transparency, participation and access to European standardisation, the centralised electronic register should make information regarding the number of SEPs applicable to a standard, the ownership of relevant SEPs, and the parts of the standard covered by the SEPs publicly available. The register and the database will contain information on relevant standards, products, processes, services and systems, which implement the standard, SEPs in force in the EU, standard SEP licensing FRAND terms and conditions or any licensing programmes, collective licensing programmes and essentiality. For SEP holders the register will create transparency with regard to the relevant SEPs, their share of all SEPs declared to the standard and the features of the standard covered by the patents. SEP holders will be in a better position to understand how their portfolios compare with other SEP holders’ portfolios. This is important not only for negotiations with implementers but also for the purpose of cross-licensing with other SEP holders. For implementers, the register will provide a trusted source of information on the SEPs, including with regard to the SEP holders from whom the implementer may need to obtain a licence. Making such information available in the register will also help shorten the length of technical discussions during the first stage of the SEP licensing negotiations. [Am. 22] |
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(18) |
Once a standard has been notified or an aggregate royalty is specified, whichever is made first, the competence centre will open the registration of SEPs by holders of SEPs in force in one or more Member States. |
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(19) |
In order to ensure transparency of about SEPs, it is appropriate to require from SEP holders to register their patents which are essential to the standard for which the registration is open. SEP holders should register their SEPs within 6 months following the opening of the registration by the competence centre or the grant of the relevant SEPs, whichever is first. In case of timely registration, SEPs SEP holders should be able to may collect royalties and even if their SEP is not registered, but they should only be able to claim damages for uses and infringements that happened before the registration in case of timely registration, provided that the amount thereof has been established in accordance with the FRAND determination rules set out in this Regulation . [Am. 23] |
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(20) |
In case of failure by SEP holders may to register after within the indicated time limit. However, in that case, SEP holders , the competence centre should notify the SEP holder that, in case of further delays in registering its patents, following a grace period of 1 month, the SEP holder should not be able to collect royalties and bring a claim damages for the period of delay in relation to its patent until the registration is completed . [Am. 24] |
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(21) |
Clauses in licensing agreement that set a royalty for a large number of patents – present or future – should not be affected by the invalidity, non-essentiality, or unenforceability of a small number of those patents when they do not affect the overall amount and enforceability of the royalty or other clauses in such agreements. |
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(22) |
SEP holders should ensure that their SEP registration(s) are updated. Updates should be registered within 6 months for relevant status changes, including ownership, invalidation findings or other applicable changes resulting from contractual commitments or public authorities’ decisions. In case of failure to update the registration may lead to the suspension of the , the competence centre should notify the SEP holder that in case of further delays in updating its registration , following a grace period of 1 month, its SEP may be suspended of the SEP from the register. [Am. 25] |
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(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. To ensure transparency, a record of any modifications to the SEP registration should be made publicly available. [Am. 26] |
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(23a) |
It is necessary to ensure that the registration and the obligations provided for in this Regulation are not circumvented by removing a SEP from the register. When an evaluator finds a claimed SEP non-essential, only the SEP holder can request its removal from the register and only after the annual sampling process has been completed and the proportion of true SEPs from the sample has been established and published. [Am. 27] |
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(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. [Am. 28] |
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(25) |
These essentiality checks should be conducted on a sampling from SEP portfolios to ensure that the sample is capable of producing statistically valid results. The results of the sampled essentiality checks should determine the ratio of positively checked SEPs from all the SEPs registered by each SEP holder. The essentiality rate should be updated annually. |
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(26) |
SEP holders may voluntarily submit their SEPs for essentiality checks to the competence centre prior to registering their patents. After the registration, SEP holders or implementers may also designate annually up to 100 registered SEPs for essentiality checks. If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family. [Am. 29] |
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(27) |
Any assessment Assessments 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 the evaluator has objective reasons to believe, based on sufficient evidence, that the prior essentiality check was inaccurate . SEP holders or patent pools should also be able to conduct the assessment of essentiality of SEPs after the entry into force of this Regulation. [Am. 30] |
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(28) |
The evaluators should work independently in accordance with the rules of procedure and Code of Conduct to be determined by the Commission. The SEP holder would be able request a peer evaluation before the issuance of a reasoned opinion. Unless a SEP is the subject of a peer review, there would be no further review of the essentiality check results. The results of the peer evaluation should serve to improve the essentiality check process, to identify and remedy shortcomings and improve consistency. |
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(29) |
The competence centre would publish the results of the essentiality checks, whether positive or negative, in the register and the database. The results of the essentiality checks would not be legally binding. Thus, it should be possible to address any subsequent disputes with regard to essentiality would have to be addressed in the relevant to the competent court. The results from the essentiality checks, whether requested by a SEP holder or based on a sample, may, however, be used for the purpose of demonstrating essentiality of those SEPs or other relevant criteria in negotiations, in patent pools and in court. [Am. 31] |
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(30) |
It is necessary to ensure that the registration and ensuing obligations provided for in this Regulation are not circumvented by removing a SEP from the register. When an evaluator finds a claimed SEP non-essential, only the SEP holder can request its removal from the register and only after the annual sampling process has been completed and the proportion of true SEPs from the sample has been established and published. [Ams. 32 and 289] |
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(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. [Am. 33] |
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(32) |
The FRAND determination should simplify and speed up negotiations concerning FRAND terms and conditions and reduce transaction costs for all stakeholders . 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. There should be rules and procedures defining conflicts of interests and mechanisms for addressing any such conflicts that might arise. [Am. 34] |
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(33) |
The In case one or more parties initiate a FRAND determination , it should 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 implementations of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. [Am. 35] |
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(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 meet on neutral ground, such as before a panel of conciliators, and 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. [Am. 36] |
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(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 The parties should be able to request a provisional injunctionof 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. [Am. 37] |
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(36) |
When the parties enter into the FRAND determination, they should select a conciliator panel of conciliators for the FRAND determination from the roster. In case of disagreement, the competence centre would select the conciliator members of the panel of conciliators . The FRAND determination should be concluded within 9 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination. [Am. 38] |
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(37) |
Upon appointment, the conciliation centre should refer the FRAND determination to the conciliator 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. [Am. 39] |
|
(38) |
The conciliator 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 conciliator 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. [Am. 40] |
|
(39) |
If a party fails to engage in the FRAND determination after the conciliator panel of conciliators has been appointed, the other party may request the termination or may request that the conciliator issues a recommendation for a FRAND determination on the basis of the information it was able to assess. [Am. 41] |
|
(40) |
If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the conciliator panel of conciliators , or where he/she it has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party. [Am. 42] |
|
(41) |
At the conclusion of the procedure, the conciliator 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 conciliator 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. [Am. 43] |
|
(42) |
The Regulation respects the intellectual property rights of patent owners , in line with (Article 17(2) of EU Charter of Fundamental Rights), although it includes a restriction on the ability to enforce a SEP that has not been registered within a certain time-limit and introduces a requirement to conduct a FRAND determination before enforcing individual SEPs. The limitation on the exercise of intellectual property rights is allowed under the EU Charter, provided that the proportionality principle is respected. According to settled case-law, fundamental rights can be restricted provided that those restrictions correspond to objectives of general interest pursued by the Union and do not constitute, with regard to the aim pursued, a disproportionate and intolerable interference which infringes the very essence of the rights guaranteed (11). In that respect, this Regulation is in the public interest in that it provides a uniform, open and predictable information and outcome on SEPs for the benefit of SEP holder, implementers and end users, at Union level. It aims at dissemination of technology for the mutual advantage of the SEP holders and implementers. Furthermore, the rules concerning the FRAND determination are temporary thus limited and aimed at improving and streamlining the process but are not ultimately binding. (12) [Am. 44] |
|
(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 CJEU (13), 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. The FRAND determination procedure also allows a deposit of a bond by the alleged infringer as a provisional injunction of a financial nature, which can be requested in order to avoid seriously restricting the alleged infringer’s activity and ensuring that the other party receives the corresponding sum in the event of a claim for damages. Moreover, the FRAND determination in no way impairs the SEP holder’s ability to receive compensation for an infringement that occurred during the FRAND determination in subsequent court proceedings. [Am. 45] |
|
(44) |
When determining the aggregate royalties and making FRAND determinations the conciliators should take into account in particular any Union acquis and judgments of the Court of Justice pertaining to SEPs as well as guidance issued under this Regulation, the Horizontal Guidelines (14) and the Commission’s 2017 Communication ‘Setting out the EU approach to Standard Essential Patents’. (15) Furthermore, the panel of conciliators should consider any expert opinion on the aggregate royalty or in the absence thereof, should request information from the parties before it makes its final proposals well as guidance issued under this Regulation, as well as guidance issued under this Regulation. [Am. 46] |
|
(45) |
SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. It is, therefore, important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence downstream and any potential impact of existing indemnification clauses within a value chain. [Am. 47] |
|
(45a) |
In order to avoid a possible negative impact on companies which are established in the Union as well as engage and compete successfully as regards the development of global technologies through standardisation, the Commission should evaluate the impact that the essentiality check system, the aggregate royalties determination system and the FRAND determination system have on the competitiveness of Union SEP holders on a global level. Based on the outcome of that evaluation, the Commission should, where necessary, present a legislative proposal in order to adapt the systems. The role of patent pools, including those created by SEP implementers, should be evaluated by the Commission in order to assess their impact once this Regulation has entered into force, notably in terms of their impact on the competitiveness on the market. [Am. 48] |
|
(46) |
SMEs may be involved in SEP licensing both as SEP holders and SEP implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation are likely to should also facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration burdens and administrative fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings , so that they are better placed to engage in SEP related matters and also standard development . The SEPs of micro and small enterprises and start-ups should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME and start-up implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. In this context, it is important to ensure that SMEs and start-ups benefit from a one-stop shop set up by the competence centre which identifies relevant licensees and licensors for the SMEs and advises them, free of charge, on SEPs. To that end, the competence centre should set up a SEP Licensing Assistance Hub for SMEs and start-ups which could also provide, under certain conditions, assistance with regard to judicial support, such as a pro bono legal representative during court proceedings. [Am. 49] |
|
(46a) |
While advantages should be granted to SMEs, they should not be susceptible to misuses. In this regard, patent assertion entities, which may be characterised by an ‘obtain and assert’ business model and which have the purpose of generating revenues through licensing fees, royalties and damage compensation, should not benefit from exemptions and the help from the competence centre provided for in this Regulation. [Am. 50] |
|
(46b) |
The support mechanisms, such as IP vouchers for SMEs, have been effective in assisting SMEs to protect their IP rights. The period of application of those mechanisms should be prolonged beyond 2024. [Am. 51] |
|
(47) |
In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify use cases implementations of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making (16). In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. [Am. 52] |
|
(48) |
In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators . Evaluators and conciliators should be of good repute and possess sufficient knowledge, skills and experience to perform their duties . The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services of evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. The Commission should also determine the standards or parts thereof that have been published before the entry into force of this Regulation, for which SEPs can be registered. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council. (17) [Am. 53] |
|
(49) |
Regulation (EU) 2017/1001 of the European Parliament and of the Council (18) should be amended to empower EUIPO to take on the tasks under this Regulation. The functions of the Executive Director should also be expanded to include the powers conferred on him under this Regulation. Furthermore, the EUIPO’s arbitration and mediation centre should be empowered to set up processes such as the aggregate royalty determination and the FRAND determination. |
|
(50) |
The European Data Protection Supervisor was consulted in accordance with Article 42(1) of Regulation (EU) 2018/1725 of the European Parliament and of the Council. (19) |
|
(51) |
As EUIPO, the Commission and stakeholders should be given time to prepare for the implementation and application of this Regulation, its application should be deferred. |
|
(52) |
Since the objectives of this Regulation to increase transparency with regard to SEP licensing and to provide an efficient mechanism to resolve disagreements on FRAND terms and conditions cannot be sufficiently achieved by the Member States because of multiplication of costs but can rather, by reason of efficiencies and scale, be better achieved at Union level, the Union may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty on European Union. In accordance with the principle of proportionality as set out in that Article, this Regulation does not go beyond what is necessary in order to achieve those objectives. |
HAVE ADOPTED THIS REGULATION:
Title I
General Provisions
Article 1
Subject matter and scope
1. This Regulation establishes the following rules on patents essential to a standard (‘SEPs’):
|
(a) |
rules providing for enhanced transparency with regard to information necessary for SEP licensing; |
|
(b) |
rules on the registration of SEPs; |
|
(c) |
a procedure to evaluate the essentiality of registered SEPs; |
|
(d) |
a procedure for the amicable settlement of disputes related to fair, reasonable and non-discriminatory nature of terms and conditions (‘FRAND determination’); |
|
(e) |
competences for the EUIPO for the fulfilment of the tasks set out in this Regulation. |
2. This Regulation shall apply to patents that are in force in one or more Member States and that a SEP holder claims to be essential to a standard that has been published by a standard development organisation, to which after entry into force of this Regulation regardless of whether the SEP holder has or has not 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, .
|
(a) |
after the entry into force of this Regulation, with the exceptions provided in paragraph 3; |
|
(b) |
before the entry into force of this Regulation, in accordance with Article 66. [Am. 54] |
3. Articles 17 and 18 and Article 34(1) shall not apply to SEPs to the extent that they are implemented for use cases where there is sufficient evidence that SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market as regards identified by the Commission in accordance with paragraph 4 implementations of certain standards or parts thereof. Such implementations, standards and parts thereof shall be identified pursuant to the procedure set out in Article 65b . [Am. 55]
4. Without prejudice to paragraph 2 of this Article, this Regulation shall also apply to patents in force in one or more Member States and that a SEP holder claims to be essential to a standard published by a standard development organisation before the entry into force of this Regulation, where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give rise the functioning of the internal market is severely distorted due 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 in the licensing of SEPs for certain implementations, standards and parts thereof. Such implementations , standards or and parts thereof, for the purposes of paragraph 3 shall be identified pursuant to the procedure set out in Article 65c . [Am. 56]
5. This Regulation shall not apply to holders of SEP in force in one or more Member States SEPs that are subject to a royalty-free intellectual property policy, except when such SEPs are part of a portfolio of patents licensed for royalties . [Am. 57]
6. This Regulation shall not apply to claims of invalidity or claims of infringement unrelated to the implementation of a standard notified under this Regulation.
7. This Regulation is without prejudice to the application of Articles 101 and 102 TFEU or to the application of corresponding national competition law rules.
Article 2
Definitions
For the purposes of this Regulation, the following definitions shall apply:
|
(1) |
‘standard essential patent’ or ‘SEP’ means any patent that a SEP holder claims to be is essential to a standard; [Am. 58] |
|
(2) |
‘essential to a standard’ means that the patent contains at least one claim for which it is not possible on technical grounds to make or use an implementation or method which complies with a standard, including options therein, without infringing the patent under the current state of the art and normal technical practice; |
|
(3) |
(‘standard’ means a technical specification, adopted by a standard development organisation, for repeated or continuous application, with which compliance is not compulsory; [Am. 59] |
|
(4) |
‘technical specification’ means a document that prescribes technical requirements to be fulfilled by a product, process, service or system as defined in Article 2 of Regulation (EU) No 1025/2012 of the European Parliament and of the Council (20); |
|
(5) |
‘standard development organisation’ means any standardising body that is not a private industrial association developing proprietary technical specifications, that develops technical or quality requirements or recommendations for products, production processes, services or methods; |
|
(5a) |
‘implementation’ means a specific scenario where a particular standardised technology or method is applied to fulfil a given purpose or function of a product, process, service or system, irrespective of the level in the value chain; [Am. 60] |
|
(6) |
‘SEP holder’ means an owner of a SEP or a person holding an exclusive licence for a SEP in one of or more Member States; [Am. 61] |
|
(7) |
‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system on the Union market ; [Am. 62] |
|
(8) |
‘FRAND terms and conditions’ means fair, reasonable and non-discriminatory terms and conditions of licensing SEPs; |
|
(9) |
‘FRAND determination’ means a structured procedure for the determination of the FRAND terms and conditions of a SEP licence; |
|
(10) |
‘aggregate royalty’ means the maximum total amount of royalty for money paid or required to be paid to license all patents essential to a standard; [Am. 63] |
|
(10a) |
‘royalty-free’ means available without payment of a royalty or without an agreement for any other consideration, whether monetary or non-monetary; [Am. 64] |
|
(11) |
‘patent pool’ means an entity , created by an agreement between two or more SEP holders or a consortium in which multiple SEP holders agree to license one or more of their patents to one another SEPs to each other or to third parties; [Am. 65] |
|
(12) |
‘peer evaluation’ means a process for the re-examination of the preliminary results of essentiality checks by evaluators other that those that carried out the original essentiality check; |
|
(13) |
‘claim chart’ means a presentation of document identifying correspondence between the elements (features) of one patent claim and at least one requirement of a standard or recommendation of a standard; [Am. 66] |
|
(14) |
‘requirement of a standard’ means expression, in the content of a document, that conveys objectively verifiable criteria to be fulfilled and from which no deviation is permitted if conformance with the document is to be claimed; |
|
(15) |
‘recommendation of a standard’ means expression, in the content of a document, that conveys a suggested possible choice or course of action deemed to be particularly suitable without necessarily mentioning or excluding others; |
|
(16) |
‘patent family’ means a collection of patent applications having at least one priority in common, including the priority documents that cover the same invention and whose members have the same priorities themselves ; [Am. 67] |
|
(17) |
‘stakeholder’ means any person that can demonstrate a legitimate interest in SEPs, including a SEP holder, an implementer, an agent for a SEP holder or an implementer, or an association representing the interests of SEP holders and implementers; |
|
(17a) |
‘conciliator’ means any person that has been appointed to mediate among parties in establishing an aggregate royalty in accordance with Article 17, to serve on a panel that provides an opinion on an aggregate royalty in accordance with Article 18 and to serve in the FRAND determination in accordance with Title VI, who is independent and impartial and does not have any direct or indirect conflict of interest; [Am. 68] |
|
(17b) |
‘evaluator’ means any person that has been appointed to conduct essentiality checks in accordance with Title V, who is independent and impartial, and does not have any direct or indirect conflict of interest; [Am. 69] |
|
(17c) |
‘peer evaluator’ means any person that has been appointed to conduct a peer evaluation, who is independent and impartial, and does not have any direct or indirect conflict of interest; [Am. 70] |
|
(18) |
‘competence centre’ means the EUIPO administrative units that fulfil the tasks entrusted to EUIPO under this Regulation. |
|
(18a) |
‘patent assertion entity’ means an entity that primarily 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 products or services utilising the patented inventions or in the research and development of such inventions, that is not an educational or research institution or 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. [Am. 71] |
Title II
Competence centre
Article 3
Tasks of the competence centre
1. The tasks under this Regulation shall be performed by a competence centre established within the EUIPO with the necessary human and financial resources.
2. The competence centre shall support transparency and FRAND determination in relation to SEPs and shall perform the following tasks:
|
(a) |
set up and maintain an electronic register and an electronic database for SEPs in accordance with Articles 4 and 5 ; [Am. 72] |
|
(b) |
set up and manage rosters of evaluators and conciliators in accordance with Article 27 ; [Am. 73] |
|
(c) |
set up and administer a system for assessment of the essentiality of SEPs in accordance with Articles 28 to 33 ; [Am. 74] |
|
(d) |
set up and administer the process for the FRAND determination in accordance with Articles 34 to 58 ; [Am. 75] |
|
(e) |
provide training to evaluators and conciliators; |
|
(f) |
administer a process for facilitating agreements on and the determination of an aggregate royalty determination in accordance with Articles 17 and 18 ; [Am. 76] |
|
(g) |
enhance transparency and information sharing through:
|
|
(h) |
set up and maintain a SEP Licensing Assistance Hub for SMEs and start-ups and provide training, support and general advice on SEPs to SMEs and start-ups in accordance with Article 61 ; [Am. 81] |
|
(i) |
conduct studies and any other necessary activities to support the objectives of this Regulation; |
|
(j) |
establish a dedicated working group on conditions for licensing SEPs in the value chain and raise awareness about SEP licensing, including SEP licensing in the value chain. [Am. 82] |
3. Using the powers conferred by Article 157 of Regulation (EU) 2017/1001, the Executive Director of the EUIPO shall adopt the internal administrative instructions and shall publish the notices that are necessary for the fulfilment of all the tasks entrusted to the competence centre by this Regulation.
Title III
Information on SEP made available through the competence centre
Chapter 1
General Provisions
Article 4
Register of standard essential patents
1. A Union register for SEPs ('the register') is established shall be set up and maintained in an electronic format by the competence centre . [Am. 83]
2. The register shall be maintained in electronic format by the competence centre. [Am. 84]
3. The register shall contain the following entries:
|
(a) |
information on relevant standards; |
|
(b) |
identification of registered SEPs identification, including the country of registration and patent number; [Am. 85] |
|
(c) |
the standard version, the technical specification and the specific sections of the technical specification for which the patent is considered essential; [Am. 86] |
|
(d) |
reference to the terms of the SEP holder’s FRAND licensing commitment to the standard development organisation; |
|
(e) |
name, address and contact details of the SEP holder; |
|
(f) |
if the SEP holder is an affiliate, subsidiary or part of a group of one or more companies, the name, address and contact details of the parent company; [Am. 87] |
|
(g) |
name, address and contact details of the SEP holder’s legal representatives in the Union, where relevant; |
|
(h) |
the existence of any public publicly available standard terms and conditions, including SEP holder’s royalty , royalty-free and discount policies; [Am. 88] |
|
(i) |
the existence of any public publicly available standard terms and conditions for SEP licensing to SMEs and start-ups ; [Am. 89] |
|
(j) |
availability for licensing through patent pools and the name of the respective patent pool , where applicable; [Am. 90] |
|
(k) |
contact details for licensing, including licensing entity; |
|
(l) |
the date of registration of the SEP in the register and the registration number. |
4. The register shall also contain the following entries, each accompanied by the date of recording of such entry:
|
(a) |
changes in the contact details of entries referred to in paragraph (3), points (e), (f), (g) and (k); |
|
(b) |
the grant or transfer of a licence through patent pools, where applicable pursuant to Article 9; |
|
(c) |
any information on whether an essentiality check or peer evaluation have been performed and , unless not possible due to contractual limits agreed upon by the parties, also a reference to the result outcome of the essentiality check ; [Am. 91] |
|
(d) |
information on whether the SEP is expired or , invalidated or deemed unenforceable by a final judgment of a competent court of a Member State; [Am. 92] |
|
(e) |
particulars regarding proceedings and decisions on SEPs pursuant to Article 10; |
|
(f) |
date of publication of information pursuant to Article 19(1) in conjunction with Article 14(7), Article 15(4) and Article 18(11); [Am. 93] |
|
(g) |
the date of suspension of the SEP from the Register pursuant to Article 22; |
|
(h) |
corrections of the SEP, pursuant to Article 23; |
|
(i) |
the date of removal of the SEP from the register pursuant to Article 25 and the grounds for removal; |
|
(j) |
the correction to or removal from the register of the item referred to in points (b), (e) and (f). |
4a. Prior to registering their patents, SEP holders may voluntarily submit their SEPs for essentiality checks to the competence centre. [Am. 94]
5. The Commission is empowered to adopt delegated acts in accordance with Article 67, amending paragraphs (3) and (4) to determine items other than those referred to in paragraphs (3) and (4) that are to be entered in the Register for the purposes of this Regulation.
6. The competence centre shall collect, organise, make public and store the items referred to in paragraphs (3) and (4), including any personal data for the purposes of this Regulation.
7. The competence centre shall keep the register easily accessible for public inspection. The data shall be considered to be of public interest and may be accessed by any third party free of charge.
Article 5
Electronic database
1. The competence centre shall establish set up and maintain an electronic database for SEPs. [Am. 95]
2. The following information in the database shall be accessible to any third party subject to the registration with the competence centre:
|
(a) |
patent bibliographic data on the claimed SEP or SEP, including priority date, family members, grant date and expiration date; |
|
(b) |
public publicly available standard terms and conditions, including SEP holder’s royalty , royalty-free and discount policies pursuant to Article 7, first paragraph, point (b), if available; [Am. 96] |
|
(c) |
public publicly available standard terms and conditions for SEP licensing to SMEs , and start-ups pursuant to Article 62(1), including royalty-free access, if available; [Am. 97] |
|
(d) |
information regarding known products, processes, services or systems and implementations and, where available, any known market data pursuant to Article 7, first paragraph, point (b) (a) ; [Am. 98] |
|
(e) |
information pertaining to essentiality pursuant to Article 8; |
|
(f) |
non-confidential information on FRAND determinations pursuant to Article 11; |
|
(g) |
information on aggregate royalties pursuant to Articles 15, 16 and 17; |
|
(h) |
expert opinions referred to in Article 18; |
|
(i) |
non-confidential reports of the conciliators pursuant to Article 57; |
|
(j) |
SEPs selected for essentiality checks pursuant to Article 29, the reasoned opinions or the final reasoned opinions pursuant to Article 33; |
|
(k) |
the date and the grounds for removal of the SEP from the database pursuant to Article 25; |
|
(l) |
information on SEP related rules in third countries pursuant to Article 12; |
|
(m) |
case-law and reports pursuant to Article 13(3) and (5); |
|
(n) |
awareness raising and training materials. |
3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) of this Article shall be available to any third party subject to registration with the competence centre and may be subject to the payment of a reasonable fee, as set out in Article 63 fee. [Am. 99]
4. However, public authorities, including courts, shall have full access to the information in the database referred to in paragraph (2) free of charge subject to registration with the competence centre. Academic institutions may also request access to the information free of charge solely for the purpose of conducting academic tasks. [Am. 100]
Article 6
Common provisions on the register and the database
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, where reasonably possible, 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. [Am. 101]
2. The competence centre shall keep the files of any procedure relating to the registration of the SEP. The Executive Director of the EUIPO shall determine the form in which those files shall be kept and made available. The competence centre shall keep the files for 10 years after the removal of the registration of the SEP. Upon request, personal data may be removed from the register or the database after 18 months from the expiry of the SEP or removal of the SEP from the register.
3. The competence centre may correct any information contained in the register or the database pursuant to Article 23.
4. The SEP holder and its legal representative in the Union shall be notified of any change in the register or the database when that change concern a particular SEP.
5. Upon request, the competence centre shall issue registration certificates or certified copies of the data and documents in the register or the database. The registration certificates and certified copies may be subject to the payment of a reasonable fee. [Am. 102]
6. The Commission shall determine the conditions of access to the database, including the fees for such access, or for registration certificates and certified copies from the database or the register, by means of an implementing act. The implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).
Article 7
Identification of implementations of a standard and related SEP licensing terms and conditions
A SEP holder shall provide to the competence centre the following information:
|
(a) |
information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard and, where available, any market data , to the extent such information is known to the SEP holder. [Am. 103] |
|
(b) |
where available, its standard terms and conditions for SEP licensing, including its royalty , royalty-free and discount policies, within 7 months from the opening of the registration for the relevant standard and implementation by the competence centre. [Am. 104] |
Article 8
Information pertaining toon essentiality [Am. 105]
A SEP holder shall provide to the competence centre the following information to be included in the database and referenced in the register:
|
(a) |
a final decision on essentiality for a registered SEP made by a competent court of a Member State within 6 2 months from the publication of such after the decision. has become final; [Am. 106] |
|
(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 in the context of , for example, a patent a pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator. [Am. 107] |
Article 9
Information to be provided by patent pools
1. Patent pools shall publish on their websites at least the following accurate and updated information and inform the competence centre thereof: [Am. 108]
|
(a) |
standards subject to collective licensing; |
|
(b) |
the administrative entity’s shareholders or ownership structure; |
|
(c) |
process for evaluating SEPs; |
|
(d) |
roster of evaluators having residence in the Union; |
|
(e) |
list of evaluated SEPs and list of SEPs being licensed; |
|
(f) |
illustrative cross-references to the standard; |
|
(g) |
list of products, services and processes that may be licensed through the patent pool or the entity; [Am. 109] |
|
(h) |
royalties , royalty-free and discount policy per product category policies per implementation including information on royalty calculation per SEP owner in the pool and aggregate royalty rate, if applicable ; [Am. 110] |
|
(i) |
standard licence agreement per product category implementation ; [Am. 111] |
|
(j) |
list of licensors in each product category implementation ; [Am. 112] |
|
(k) |
list of licensees for each product category implementation . [Am. 113] |
1a. The competence centre shall verify the information submitted by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a methodology it develops for this purpose, ensuring that the verification process is thorough, transparent and consistent. That methodology shall be made available to patent pools and to other stakeholders for the sake of transparency. [Am. 114]
1b. The competence centre shall prepare a report detailing the outcomes of its verification, including with regard to patent pools’ compliance with paragraph 1, any discrepancies or missing information identified, and the corrective actions taken or recommended. That report shall be submitted to the Commission within one month following the completion of each verification cycle. [Am. 115]
Article 10
Information on decisions on SEPs
1. Competent courts of Member States shall notify the competence centre within 6 2 months from the adoption of a judgment after the decision concerning SEPs has become final on: [Am. 116]
|
(a) |
injunctions; |
|
(b) |
infringement proceedings infringements ; [Am. 117] |
|
(c) |
essentiality and validity; |
|
(d) |
abuse of dominance; |
|
(e) |
determination of FRAND terms and conditions. |
2. Any person may inform the competence centre about any judicial proceeding or alternative dispute resolution proceeding concerning a SEP.
Article 11
Information on FRAND determinations
1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 6 4 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined. [Am. 118]
2. No confidential information shall be disclosed by the competence centre without the prior consent of the affected party.
Article 12
Information on SEP related rules in third countries
1. The competence centre shall collect , duly verify and promptly and publish in the database information on any SEP related rules in any third country in the database . The competence centre may also collect information on compliance with this Regulation in third countries as well as monitor its impact on implementers. [Am. 119]
2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall publish that information in the database after verifying its accuracy . [Am. 120]
2a. In order to facilitate effective implementation of this Regulation, the competence centre may cooperate, engage and exchange information with, amongst others, authorities of third countries and international organisations dealing with SEPs, in particular as regards the information on SEP related rules in third countries or the prevention of parallel proceedings. [Am. 121]
Article 13
Enhancing transparency and information sharing
1. The competence centre shall store in the database all the data provided by stakeholders, as well as reasoned opinions and reports of evaluators and conciliators. [Am. 122]
2. The collection, storage and processing of such data shall serve the purposes of:
|
(a) |
administering the registrations of SEPs, essentiality checks and conciliation proceedings pursuant to this Regulation; |
|
(b) |
accessing the information necessary for conducting those proceedings more easily and efficiently; |
|
(c) |
communicating with the parties to the proceedings; |
|
(ca) |
making available to interested persons SEPs, standards and implementations, with the use of easily accessible research tools and reasonably understandable search results; [Am. 123] |
|
(d) |
producing reports and statistics enabling the competence centre to improve its operations and the functioning of the registration of SEPs and the proceedings under this Regulation. |
|
(da) |
facilitating assessments of SEP licensing practices and their impact on the internal market, innovation and access to standardised technology. [Am. 124] |
3. The competence centre shall include in the database case-law from competent courts of Member States, from third country jurisdictions and alternative dispute resolution bodies.
4. The competence centre shall collect all information on FRAND terms and conditions, including any discounts, which have been made public by SEP holders, disclosed to it pursuant to Article 11 and included in the FRAND determination reports and shall make such disclosures accessible to public authorities in the Union, including competent courts of Member States, subject to a written request. Confidential documents shall be accompanied by a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence.
5. The competence centre shall publish in the database an annual report on methodologies for FRAND determinations based on information from court and arbitration decisions and statistical information on licences and licensed products from the FRAND determinations.
6. Upon a reasoned request by a stakeholder, any confidential information shall be redacted in a non-confidential format before the competence centre publishes or transmits such information.
Chapter 2
Notification of a standard and an aggregate royalty
Article 14
Notification of a standard to the competence centre
1. Holders of a patent patents in force in one or more Member States which is are claimed to be essential to a standard for which FRAND commitments have or have not been made shall notify to the competence centre, where possible through the standard development organisation or through a joint notification, the following information: [Am. 125]
|
(a) |
the commercial name of a standard; |
|
(b) |
the list of relevant technical specifications that define the standard; |
|
(c) |
the date of the publication of the latest technical specification; |
|
(d) |
implementations of the standard known to the SEP holders making the notification. |
2. Such notification shall be made within 30 days of the publication of the latest technical specification.
3. In the absence of the notification under paragraph (1), any holder of a SEP in force in one or more Member State States shall notify individually, no later than 90 days from the publication of the latest technical specification, to the competence centre the information referred to in paragraph (1). [Am. 126]
4. In the absence of notification under paragraph (1) or under paragraph (3) any implementer may notify, to the competence centre the information referred to in paragraph (1).
5. The competence centre shall also notify the relevant standard development organisation of the publication notification . In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually or request confirmation from the standard development organisation that it has duly notified the SEP holders. [Am. 127]
6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3) , (4) and (4a) and (4) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list. [Am. 128]
7. After expiry of the time limit referred to in paragraph (6) the competence centre shall consider all comments received including all relevant technical specifications and implementations and publish the information pursuant to paragraph (1).
Article 15
Notification of an aggregate royalty to the competence centre
1. Holders of SEPs in force in one or more Member States for which FRAND commitments have or have not been made may jointly notify the competence centre the aggregate royalty for the all SEPs covering a standard. [Am. 129]
2. The notification made in accordance with paragraph (1) shall contain the information on the following:
|
(a) |
the commercial name of the standard; |
|
(b) |
the list of technical specifications that define the standard; |
|
(c) |
the names of the SEP holders making the notification referred to in paragraph (1); |
|
(d) |
the estimated percentage the SEP holders referred to in paragraph (1) represent from all SEP holders; |
|
(e) |
the estimated percentage of SEPs they own collectively from all SEPs for the standard; |
|
(f) |
the implementations known to the SEP holders referred to in point (c); |
|
(g) |
the global aggregate royalty, unless the notifying parties specify that the aggregate royalty is not global; |
|
(h) |
any period for which the aggregate royalty referred to in paragraph (1) is valid. |
3. The notification referred to in paragraph (1) shall be made at the latest 120 days after:
|
(a) |
the publication of a standard by the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or |
|
(b) |
a new implementation of the standard becomes known to them. |
4. The competence centre shall publish in the database the information provided under paragraph (2).
Article 16
Revision of aggregate royalty
1. In case of revision of the aggregate royalty, the SEP holders shall notify the competence centre about the revised aggregate royalty and the reasons for the revision.
2. The competence centre shall publish in the database the initial aggregate royalty, the revised aggregate royalty and the reasons for the revision in the register.
Article 17
Process for facilitating agreements between SEP holders on aggregate royalty determinations [Am. 130]
1. Holders of SEPs in force in one or more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty.
2. Such a request shall be made no later than 90 days following the publication of the standard or no later than 120 days following the first sale of new implementation on the Union market for implementations not known at the time of publication of the standard.
3. The request shall contain the following information:
|
(a) |
the commercial name of the standard; |
|
(b) |
the date of publication of the latest technical specification or the date of the first sale of new implementation on the Union market; |
|
(c) |
the implementations known to the SEP holders referred to in paragraph (1); |
|
(d) |
the names and contact details of the SEP holders supporting the request; |
|
(e) |
the estimated percentage of SEPs they own individually and collectively from all potential SEPs claimed for the standard. [Am. 131] |
4. The competence centre shall notify the publish the request and invite other SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard. [Am. 132]
5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process.
6. SEP holders 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.
7. Where the SEP holders fail to make a an agreement regarding the joint notification submission of an aggregate royalty within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. [Am. 133]
8. If the contributors SEP holders agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. [Am. 134]
Article 18
Non-binding expert opinion on aggregate royalty
1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on a global an aggregate royalty. An implementer may make this request, even if an agreement amongst SEP holders has already been reached, including through the procedure laid down in Articles 15 to 17. [Am. 135]
2. The request referred to in paragraph (1) shall be made no later than 150 days after:
|
(a) |
the publication of the relevant standard for known implementations; or |
|
(b) |
new implementations are first sold on the Union market. |
3. That request shall include:
|
(a) |
commercial name of the standard; |
|
(b) |
list of relevant technical specifications that define the standard; |
|
(c) |
list of relevant products, processes, services or systems or implementations; |
|
(d) |
list of known stakeholders and contact details. |
4. The competence centre shall notify the relevant standard development organisation and all known relevant stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published. [Am. 136]
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 existing or potential implementations of the standard, including any relevant market share in the Union. [Am. 137]
6. If the requests for participation include SEP holders representing collectively at least an estimated 20 % of all SEPs for the standard, and or implementers holding collectively at least 10 % relevant market share in the Union or at least 10 SMEs or start-ups , the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with having the appropriate background from experience in the relevant field of technology. [Am. 138]
7. Stakeholders that submit to the panel 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.
8. Within one month following the appointment, the panel shall request the participating SEP holders to, within one month: [Am. 139]
|
(a) |
propose an aggregate royalty, including the information referred to in Article 15(2), or |
|
(b) |
submit justification on the impossibility to propose an aggregate royalty due to technological, economic, or other considerations. ; and [Am. 140] |
|
(ba) |
provide evidence or observations to assist the panel in deciding on aggregate royalty. [Am. 141] |
8a. The panel shall permit participants to submit responses to the submissions provided for in paragraph 8 and reactions to those responses. [Am. 142]
9. The panel shall duly consider the submissions and responses provided for in paragraph 8 paragraphs 8 and 8a and decide: [Am. 143]
|
(a) |
to suspend grant a suspension of the procedure for the expert opinion on aggregate royalty for an initial period of no longer than 6 months, which can be further extended for another period of 3 months on the basis of a duly justified request by one of the participating SEP holders, or [Am. 144] |
|
(b) |
to provide the expert opinion. |
10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 8(a) 9(a) or of the decision referred to in paragraph 8(b) 9(b) . The opinion shall be supported by at least two of the three conciliators. [Am. 145]
11. The 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 and the reasons underlying them shall be specified in an annex to the expert opinion. [Am. 146]
12. The expert opinion shall include an analysis of the value chain concerned and the potential impact of the aggregate royalty on the innovation incentives of both SEP holders and stakeholders in the value chain where licensing is to take place.
13. The competence centre shall publish the expert opinion and notify the participants of that publication.
Chapter 3
Registration of SEPs
Article 19
Administration of the register of standard essential patents
1. The competence centre shall create an entry in the register for a standard or part thereof for which FRAND commitments have been made within 60 days from the earliest of the following events: [Am. 147]
|
(a) |
publication by the competence centre of the standard and related information pursuant to Article 14(7); |
|
(b) |
publication by the competence centre of an aggregate royalty and related information pursuant to Article 15(4) and Article 18(11). |
2. The competence centre shall publish a notice on the EUIPO website informing stakeholders that an entry in the register has been made and refer to the publications referred to in paragraph (1). The competence centre shall notify known SEP holders individually by electronic means and the relevant standard development organisation of the notice in this paragraph.
Article 20
Registration of standard essential patents
1. Upon request of a SEP holder the competence centre shall register any patent in force in one or more Member States and falling within the scope of this Regulation that is essential for a standard, for which the competence centre has published a notice pursuant to Article 19(2).
2. For a SEP to be included in the register, at least one patent claim shall correspond with at least one requirement or recommendation to the standard, identified by standard name, version (and/or release) and sub-clause.
3. The request for registration shall be made within 6 months from the publication of the notice pursuant to Article 19(2). In case the SEP is only granted by a national or European patent office after the publication of the notice pursuant to Article 19(2), the request for registration shall be made within 6 months from the grant of the SEP by the relevant patent office.
4. The request shall include the information set out in Article 4(3) and Article 5(2), points (a), (b), (d) and (e).
5. A SEP holder shall update the information in the register , except for the information provided in accordance with Article 4(3), point (c), and database to reflect relevant changes in relation to its registered SEP by notifying the competence centre within 6 months from the change occurring. [Am. 148]
6. The request for registration will only be accepted following the payment of the registration fee by the SEP holder. The Commission shall determine the registration fee in the implementing act issued based on Art. 63(5). The registration fee shall include, in case of medium and large enterprises, the expected costs and fees of the essentiality check for SEPs selected pursuant to Article 29(1). [Am. 149]
Article 21
Date of registration
1. The date of registration shall be the date on which the competence centre has received a registration request pursuant to Article 20(2), (4) and (5).
2. The competence centre shall publish the registered SEPs in the register within 7 working days from the date of registration.
Article 22
Examination of the conditions of registration
1. The EUIPO shall annually check a sample of SEP registrations shall be checked annually for in order to verify their completeness and correctness. [Am. 150]
2. The EUIPO shall adopt a methodology for selecting a sample of SEP registrations for checks.
3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 2 3 months. [Am. 151]
4. If the SEP holder fails to provide the correct and complete information, the competence centre shall notify the SEP holder about its failure to provide the correct and complete information and that, following a grace period of 1 month during which the SEP holder could still provide the required information, its registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. [Am. 152]
5. A SEP holder whose SEP has been suspended from the register pursuant to paragraph (4) and considers that the finding of the competence centre is incorrect may apply before the Boards of Appeal of the EUIPO for a decision on the matter. The application shall be made within 2 months from the suspension. Within 2 months from the application, the Boards of Appeal of the EUIPO shall either reject the application or request the competence centre to correct its finding and inform the requesting person.
6. Any completing or correcting information on a SEP pursuant to this article shall be made free of charge.
Article 23
Correction of an entry in the register or information in the database
1. A SEP holder may request a correction of its SEP registration or of the information contained in the database by filing an appropriate request to the competence centre, except as provided for in paragraph (2).
2. Any third party may request the competence centre to correct a SEP registration or information contained in the database. The request shall contain the following information:
|
(a) |
the name and contact details of the requesting person; |
|
(b) |
the registration number of the registered SEP; |
|
(c) |
the reasons for the request; |
|
(d) |
evidence from an independent source supporting the request. |
3. The competence centre shall notify the request made in accordance with paragraph 2 to the SEP holder and invite the SEP holder to correct request a correction of the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 3 months. [Am. 153]
4. The competence centre shall notify the SEP holder and invite the SEP holder to correct request a correction of the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 3 months, when the competence centre is informed by a competent court of a Member State pursuant to Article 10(1) or a patent office or any third party of: [Am. 154]
|
(a) |
the expiry of a registered SEP |
|
(b) |
the invalidation of a registered SEP by a competent authority; or |
|
(c) |
a final judgment that the registered SEP is not essential to the relevant standard. |
5. If the SEP holder fails to correct the entry in the register or the information submitted for the database within the given time limit, the competence centre shall notify the SEP holder about its failure to provide the correct and complete information and that, following a grace period of 1 month during which the SEP holder could still provide the required information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. [Am. 155]
6. A SEP holder whose SEP has been suspended from the register pursuant to paragraph (5) and considers that the finding of the competence centre is incorrect may apply before the Boards of Appeal of the EUIPO for a decision on the matter. The application shall be made within 2 months from the suspension. Within two months from the application, the Boards of Appeal of the EUIPO shall either reject the application or request the competence centre to correct its finding and inform the requesting person.
7. The treatment of requests for correction pursuant to This article by the competence centre shall be suspended from the selection of the SEP for essentiality check pursuant to Article 29 until the publication of the result of the essentiality check in the register and the database pursuant to Article 33(1).
8. The competence centre may shall correct any linguistic errors or errors of transcription and manifest oversights or technical errors attributable to it in the register and in the database of its own motion. [Am. 156]
9. Any corrections pursuant to this article shall be made free of charge.
Article 24
Effects of absence of registration or suspension of registration of SEPs
1. A SEP that is not registered within the time-limit set out in Article 20(3) may not be enforced in relation to the implementation of the standard for which a registration is required in a competent court of a Member State, from the time-limit set out in Article 20(3) until its registration in the register. [Am. 157]
2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to receive royalties or seek damages bring a claim 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. [Am. 158]
3. Paragraphs (1) and (2) are Paragraph 1 is without prejudice to provisions included in contracts setting concluded and applied before the entry into force of this Regulation which set a royalty for a broad portfolio of patents, present or future, stipulating that the invalidity, non-essentiality or unenforceability of a limited number thereof shall not affect the overall amount and enforceability of the royalty or other terms and conditions of the contract that are or have been claimed to be essential to a standard . [Am. 159]
4. Paragraphs (1) and (2) apply Paragraph 1 of this Article applies 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). [Am. 160]
5. A competent court of a Member State requested to decide on any issue related to a SEP in force in one or more Member States, shall verify whether the SEP is registered as part of the decision on admissibility of the action.
Article 25
Removing a SEP from the register and the database
1. A SEP holder may request the removal of its registered SEP from the register and the database, on the following grounds:
|
(a) |
expiry of the patent; |
|
(b) |
invalidation of the patent by a competent authority; |
|
(c) |
final judgment of a competent court of a Member State that the registered patent is not essential to the relevant standard; |
|
(d) |
as a consequence of a negative result from the essentiality check pursuant to Article 31(5) and Article 33(1). |
2. Such a request may be made at any time, except from the selection of the SEP for essentiality check pursuant to Article 29 until the publication of the result of the essentiality check in the register and database pursuant to Article 33(1).
3. The competence centre shall remove the SEP from the register and the database.
Title IV
Evaluators and Conciliators
Article 26
Evaluators and conciliators
1. An evaluator shall conduct essentiality checks.
2. A conciliator shall conduct the following tasks:
|
(a) |
mediate among parties in establishing an aggregate royalty; |
|
(b) |
provide a non-binding opinion on an aggregate royalty; |
|
(c) |
serve in a FRAND determination. |
3. The evaluators and conciliators shall adhere to a code of conduct.
4. The competence centre shall appoint [10] evaluators from the roster of evaluators as peer evaluators for a period of [three] years.
5. By … [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in Article 68(2) , lay down the practical and operational arrangements concerning: [Am. 161]
|
(a) |
the requirements for evaluators or conciliators, including a Code of Conduct , including at least the criteria of Article 27(2a) of this Regulation ; [Am. 162] |
|
(b) |
the procedures pursuant to Articles 17, 18, 31 and 32 and Title VI. |
Article 27
The selection procedure
1. The competence centre shall conduct a procedure of selecting candidates based on the requirements established in the implementing act referred to in Article 26(5).
2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise. and make sure that: [Am. 163]
|
(a) |
there is no potential conflicts of interest, so that the chosen evaluators and conciliators are impartial and unbiased; [Am. 164] |
|
(b) |
every evaluator and conciliator appointed to the roster has the necessary qualification, experience and skills to perform the required tasks effectively. In particular, they shall have the necessary qualifications, substantial experience in the patent industry and dispute resolution, a demonstrated understanding of FRAND terms and conditions or a solid technical background in relevant technology field. [Am. 165] |
3. Where the competence centre has not yet established roster of candidates There shall be different rosters of evaluators or and 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) depending on the technical area of their specialisation or expertise . [Am. 166]
4. The competence centre shall regularly review the rosters that a sufficient number of qualified candidates is maintained.
Title V
Essentiality checks of standard essential patents
Article 28
General requirement for essentiality checks
1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in an a transparent, objective and impartial manner and that confidentiality of the information obtained is safeguarded . [Am. 167]
2. The essentiality check shall be conducted by an evaluator selected pursuant to Article 27. Evaluators shall conduct essentiality checks of registered SEPs for the standard for which they are registered.
3. Essentiality checks shall not be done on more than one SEP from the respective patent family.
4. The lack of an essentiality check or an ongoing essentiality check shall not preclude licensing negotiations or any court or administrative procedure in relation to a registered SEP.
5. The evaluator shall summarise the result of the essentiality check and the reasons for it in a reasoned opinion, or, in case of peer evaluation, in a final reasoned opinion, which shall not be legally binding.
6. The result of the essentiality check conducted and the reasoned opinion of the evaluator or the final reasoned opinion of the peer evaluator may be used as evidence before stakeholders, patent pools, public authorities, courts or arbitrators.
Article 29
Administration of essentiality checks
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 a subsidiary, affiliate, or owned or directly or indirectly controlled by another natural or legal person that does not qualify as an SME itself . 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). [Am. 168]
2. The competence centre shall notify the SEP holders about the SEPs selected for essentiality checks. Within the time limit established by the competence centre, the SEP holders may submit within the same time period a claim chart with a maximum amount of five correspondences between the SEP and the relevant standard, any additional technical information that may facilitate the essentiality check and translations of the patent requested by the competence centre.
3. The competence centre shall publish the list of SEPs selected for essentiality check.
4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to This title or of an essentiality decision or check referred to in Article 8, no additional essentiality check shall be done unless paragraph 4a of this Article applies . The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check. [Am. 169]
4a. If an evaluator has sufficient reason to believe that a prior essentiality check conducted under Article 8, point (b), might be inaccurate, the evaluator shall have the authority to review the result of that check. If, after the review, the evaluator concludes that the prior essentiality check result was inaccurate, this evaluator shall conduct a new essentiality check for the specific SEP in question. [Am. 170]
5. Each SEP holder may voluntarily propose annually up to 100 registered SEPs from different patent families to be checked for essentiality with regard to each specific standard for which SEP registration was made.
6. Any implementer may voluntarily propose annually up to 100 registered SEPs from different patent families to be checked for essentiality with regard to each specific standard for which SEP registrations have been made.
7. The competence centre shall allocate the SEPs for essentiality check to evaluators based on the roster of evaluators established pursuant to Article 27 and shall provide access to the evaluator access to the complete documentation provided by the SEP holder.
8. The competence centre shall ensure that the identity of the evaluator remain undisclosed to the SEP holders during the examination of the essentiality pursuant to Article 31 or during the peer evaluation pursuant to Article 32. All the communication between the SEP holder and the evaluator shall pass through the competence centre.
9. In case of failure to respect formal requirements pursuant to Article 28, other procedural requirements or the code of conduct, the competence centre may, at the request of any stakeholder submitted within one month from the publication of the reasoned opinion or final reasoned opinion or on its own initiative, review the examination and decide to:
|
(a) |
maintain, or |
|
(b) |
revoke |
the results of examination of the essentiality of a registered SEP or of the peer evaluation.
10. Where the competence centre revokes the results pursuant to paragraph 9(b), the competence centre shall appoint a new evaluator or peer evaluator to conduct a new examination of the essentiality check pursuant to Article 31 or new peer evaluation pursuant to Article 32.
11. The party that requests the review of the examination of the essentiality check or peer evaluation and re-appointment of the evaluator and considers that the finding of the competence centre is incorrect may apply before the Boards of Appeal of the EUIPO for a decision on the matter. The application shall be made within 2 months from the finding of the competence centre. The Boards of Appeal of the EUIPO shall either reject the application or request the competence centre to appoint a new evaluator and inform the requesting person and, where relevant, the SEP holder
Article 30
Observations by stakeholders
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. [Am. 171]
2. The observations referred to in paragraph (1) shall be communicated to the SEP holder who may comment on them within the time limit established by the competence centre.
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. [Am. 172]
Article 31
Examination of the essentiality of a registered SEP
1. The examination of essentiality shall be conducted following procedure that ensures sufficient time, rigorousness and high-quality.
2. The evaluator may invite the SEP holder concerned to file observations, within a period to be fixed by the evaluator.
3. 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 of any such reasons and specify a period within which the SEP holder may submit its observations, or submit an amended claim chart.
4. The evaluator shall duly consider any information provided by the SEP holder or by stakeholders in accordance with the procedure laid down in Article 30 . [Am. 173]
5. The evaluator shall issue his reasoned opinion to the competence centre within 6 months from its appointment. The reasoned opinion shall include the name of the SEP holder and of the evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination procedure, the result of the essentiality check and the reasons on which that result is based.
6. The competence centre shall notify the reasoned opinion to the SEP holder.
Article 32
Peer evaluation
1. Where the competence centre has informed the SEP holder pursuant to Article 31(3), the SEP holder may request peer evaluation before the expiry of the period to submit its observations pursuant to Article 31(3).
2. If the SEP holder requests a peer evaluation, the competence centre shall appoint a peer evaluator.
3. The peer evaluator shall duly consider all the information submitted by the SEP holder or stakeholders which have provided observations or evidence in accordance with the procedure laid down in Article 30 , 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. [Am. 174]
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 to submit its observations.
5. The peer evaluator shall duly consider the observations of the SEP holder or the observations or evidence provided by other stakeholders in accordance with Article 30 and issue a final reasoned opinion to the competence centre within 3 months from its appointment. The final reasoned opinion shall include the name of the SEP holder, of the evaluator and of the peer evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination and peer evaluation procedure, the preliminary conclusion of the evaluator, the result of the peer evaluation and the reasons on which that result is based. [Am. 175]
6. The competence centre shall notify the final reasoned opinion to the SEP holder.
7. The results of the peer evaluation shall serve to improve the essentiality check process and ensure consistency.
Article 33
Publication of the results of the essentiality checks
1. The competence centre shall enter the result of the essentiality check or of the peer evaluation in the register and the reasoned opinion and final reasoned opinion in the database. The result of the essentiality check under this Regulation shall be valid for all SEPs from the same patent family.
2. The competence centre shall publish in the register the percentage of sampled SEPs per SEP holder and per specific registered standard that passed successfully the essentiality test.
3. Where the publication of the results contains an error attributable to the competence centre, the competence centre shall of its own motion or at the request of the SEP holder registrant correct the error and publish the correction.
Title VI
FRAND determination
Article 34
Initiation of the FRAND determination
1. The FRAND determination in respect of a standard and implementation for which an entry in the register has been created, shall be initiated by any of the following persons:
|
(a) |
SEP holder, prior to any initiation of a SEP infringement claim before a competent court of a Member State; |
|
(b) |
an implementer of a SEP prior to any request for the determination or assessment of FRAND terms and conditions of a SEP licence before a competent court of a Member State. |
The FRAND determination shall not apply to existing licensing agreements during their application term. [Am. 176]
2. The party requesting the FRAND determination shall be referred to as the ‘requesting party’, any party responding to the request as the ‘responding party’, and both shall be referred to as the ‘parties’ for the purposes of FRAND determination.
3. The FRAND determination may be initiated by a party or entered into by the parties to resolve disputes related to FRAND terms and conditions voluntarily.
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 State shall consider that a procedure for FRAND determination is ongoing. [Am. 177]
5. Once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, shall be available to the parties. [Am. 178]
Article 35
Rules of procedure
The FRAND determination shall be governed by Article 34 to Article 58, as further implemented pursuant to Article 26(5).
Article 36
Content of the request to initiate a FRAND determination
1. The FRAND determination shall be initiated by a written request to the competence centre that shall contain the following information:
|
(a) |
the name and contact information of the requesting party; |
|
(b) |
the name and address of the responding party; |
|
(c) |
the registration numbers of the relevant SEPs in the register; |
|
(d) |
the commercial name of the standard and the name of the relevant standard developing organisation. [Am. 179] |
|
(e) |
a summary of the licensing negotiations to date, if applicable; |
|
(f) |
references to any other related FRAND determination, if applicable. [Am. 180] |
2. Where the request to initiate a FRAND determination is made by a SEP holder, it shall contain, in addition to the information listed in paragraph (1), it shall contain the following information: [Am. 181]
|
(a) |
claim charts mapping patent claims to the standard of selected registered SEPs; |
|
(b) |
proof of essentiality checks, if available. |
3. The request to initiate a FRAND determination may include a proposal for a FRAND determination.
Article 37
Duration of the FRAND determination
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) 38(3)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. [Am. 182]
2. The period for the time barring of claims before a competent court of a Member State shall be suspended for the duration of the FRAND determination.
Article 38
Notification of the FRAND determination request and response
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. [Am. 183]
2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and whether it commits to comply with its outcome , in case of disagreement, include the reasons for declining to participate . [Am. 184]
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: [Am. 185]
|
(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; [Am. 186] |
|
(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. [Am. 187] |
|
(c) |
where the requesting party fails to request, within the time limit referred to in subparagraph (a), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination. |
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 competence centre shall notify the requesting party to comply with the outcome of the FRAND determination, the following shall apply: thereof. [Am. 188]
|
(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; [Am. 189] |
|
(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. [Am. 190] |
|
(c) |
where the responding party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for by the responding party in relation to the same subject matter; [Am. 191] |
|
(d) |
where the responding party fails to request, within the time-limit referred to in subparagraph (b), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination. [Am. 192] |
4a. Each party may, at any time during the FRAND determination process, declare to commit to comply with its outcome. The declaring party may make its commitment to comply subject to the other party's commitment to the outcome. This shall not terminate the FRAND determination process. [Am. 193]
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. [Am. 194]
6. The FRAND determination shall concern a global SEP licence, unless otherwise specified by the parties in case both parties agree to the FRAND determination or by the party that requested the continuation of the FRAND determination. SMEs and start-ups that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination. [Am. 195]
Article 39
Selection of a panel of conciliators [Am. 196]
1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(5), the competence centre the requesting and responding parties shall propose at least 3 candidates for the FRAND determination each appoint one conciliator from the roster of conciliators referred to Article 27(2) to the panel of conciliators. The third . The parties or party shall select one of the proposed candidates as a conciliator for the FRAND determination shall be appointed by the competence centre from the roster of conciliators referred to in Article 27(2) . [Am. 197]
2. If the parties do not agree on a conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2). [Am. 198]
Article 40
Appointment of conciliators [Am. 199]
1. The selected candidate candidates shall communicate to the competence centre the acceptance to take up the task of a conciliator for the FRAND determination, which shall notify the communication of acceptance to the parties. [Am. 200]
2. The day following the notification of the acceptance to the parties, the conciliator panel of conciliators is appointed, and the competence centre shall refer the case to him/her the panel of conciliators . [Am. 201]
Article 41
Preparation of the proceedings
If during the FRAND determination a conciliator is unable to participate, withdraws or needs to be replaced because he or she does not comply with the requirements as provided for in Article 26, the procedure provided for in Article 39 shall apply. The time period referred to in Article 37 shall be extended for the time necessary for the appointment of the new conciliator for the FRAND determination.
Article 42
Preparation of the proceedings
1. After the case is referred to the conciliator panel of conciliators in accordance with Article 40(2), he/she it shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure. [Am. 202]
2. He/she The panel of conciliators shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure. [Am. 203]
Article 43
Written procedure
The conciliator panel of conciliators shall invite each party to file written submissions setting out its arguments concerning the determination of the applicable FRAND terms and conditions, including supporting documentation and evidence, and set appropriate time limits. [Am. 204]
Article 44
Objection to the FRAND determination
1. A party may submit an objection stating that the conciliator panel of conciliators is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, no later than in the first written submission at any time . The other party shall be given opportunity to submit its observations. [Am. 205]
2. The conciliator 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 conciliator 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. [Am. 206]
3. If the conciliator 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. [Am. 207]
Article 45
Conduct of the FRAND determination
1. The conciliator 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. [Am. 208]
2. The conciliator panel of conciliators may invite the parties or the party requesting the continuation of the FRAND determination to meet with him/her it or may communicate with him/her it orally or in writing. [Am. 209]
3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the conciliator panel of conciliators and, in particular, shall attend the meetings, comply with his/her its requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator panel of conciliators to hear witnesses and experts whom the conciliator might call. [Am. 210]
4. The responding party may join the FRAND determination at any moment before its termination.
5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the conciliator panel of conciliators shall terminate the FRAND determination. [Am. 211]
Article 46
Failure of a party to engage
1. If a party:
|
(a) |
fails to comply with Article 45(3) or any request of the conciliator panel of conciliators , Rules of procedure or schedule of procedure referred to in Article 42(2), or [Am. 212] |
|
(b) |
withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or [Am. 213] |
|
(c) |
in any other way fails to comply with a requirement relating to the FRAND determination, |
the conciliator panel of conciliators shall inform both parties thereof. [Am. 214]
2. Having received the notification of the conciliator panel of conciliators , the complying party may ask the conciliator panel of conciliators to take one of the following actions: [Am. 215]
|
(a) |
make a proposal for a FRAND determination in accordance with Article 55 based on the information available to it, attaching such weight as it considers fit to any evidence submitted to it, |
|
(b) |
terminate the procedure. |
3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the conciliator panel of conciliators or in any other way fails to comply with a requirement relating to the FRAND determination, the conciliator panel of conciliators shall terminate the procedure. [Am. 216]
Article 47
Parallel proceedings in a third country
1. For the purposes of this article a parallel proceeding means a proceeding that satisfies the following conditions:
|
(a) |
any procedure before a court, tribunal, an administrative or state authority of a third country taking legally binding and enforceable decisions on patent assertion, injunction, infringement, abuse of a dominant market position or a determination of FRAND terms and conditions; |
|
(b) |
concerning a licensing dispute regarding the same standard and implementation and a patent which in substance has the same claims as the SEPs that is subject to the FRAND determination; |
|
(c) |
involving one or more of the parties to the FRAND determination as a party. |
2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the conciliator panel of conciliators , or where he/she it has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any the other party. [Am. 217]
Article 48
Evidence
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 conciliator panel of conciliators may request the production of documents or other evidence. [Am. 218]
2. The conciliator panel of conciliators may examine publicly available information and the competence centre’s register , database and confidential and non-confidential reports of other FRAND determinations, aggregate royalty determinations and results of essentiality checks, as well as other non-confidential documents and information produced by or submitted to the competence centre. [Am. 219]
Article 49
Witnesses and experts
The conciliator 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. [Am. 220]
Article 50
Proposal for a determination of FRAND terms and conditions
1. At any time during the FRAND determination, the conciliator panel of conciliators or a party on its own motion or by invitation of the conciliator panel of conciliators may submit proposals for a determination of FRAND terms and conditions . [Am. 221]
2. If the requesting party has submitted a written proposal for FRAND terms and conditions in its written submission, the responding party shall be given opportunity to comment on it and/or submit a written counter-proposal in its reply.
3. When submitting suggestions for FRAND terms and conditions, the conciliator panel of conciliators shall take into account the impact of the determination FRAND terms and conditions on the value chain and on the incentives to innovation of both the SEP holder and the stakeholders in the relevant value chain. To that end, the conciliator panel of conciliators may rely on the expert opinion referred to in Article 18 or, in case of absence of such an opinion request additional information and hear experts or stakeholders. [Am. 222]
Article 51
Recommendation of a determination of FRAND terms and conditions by the conciliator panel of conciliators [Am. 223]
The conciliator 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. [Am. 224]
Article 52
Submission of reasoned proposals for determination of FRAND terms and conditions by the parties
Following the notification of the written recommendation of FRAND terms and conditions by the conciliator 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 conciliator panel of conciliators . [Am. 225]
Article 53
Oral procedure
If the conciliator 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. [Am. 226]
Article 54
Disclosure of information
1. When the conciliator 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. [Am. 227]
2. A party may request the conciliator panel of conciliators that specific information in a submitted document is kept confidential. [Am. 228]
3. When a party requests the information in a document it had submitted to be kept confidential, the conciliator 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. [Am. 229]
Article 55
Reasoned proposal for a determination of FRAND terms and conditions by the conciliator
1. At the latest 45 days before the end of the time limit referred to in Article 37, the conciliator 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. [Am. 230]
2. Either party may submit observations to the proposal and suggest amendments to the proposal within a deadline set by the conciliator panel of conciliators , who may reformulate its proposal to take into account the observations submitted by the parties and shall promptly inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation. [Am. 231]
Article 56
Termination of the FRAND determination and notice of termination
1. In addition to the termination of the FRAND determination for reasons provided for Article 38(4), Article 44(3), Article 45(5), Article 46(2), point (b), Article 46(3) and Article 47(2), the FRAND determination shall be terminated in any of the following ways:
|
(a) |
a settlement agreement is signed by the parties; |
|
(b) |
a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the conciliator panel of conciliators referred to in Article 55; [Am. 232] |
|
(c) |
a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the conciliator panel of conciliators referred to in Article 55; [Am. 233] |
|
(d) |
a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the conciliator panel of conciliators referred to in Article 55. [Am. 234] |
2. In case of termination of the FRAND determination, the competence centre shall adopt a notice of termination of the FRAND determination and notify the parties within 5 days from termination. The notice of termination shall include the names of the parties and the conciliator, the subject-matter of the FRAND determination, a summary of the procedure and the reasons for its termination.
3. The notice of termination notified to the SEP owner shall be considered to constitute a document within the meaning of Article 6(3) point (c) of Regulation (EU) No 608/2013 with regard to any request for a customs action against goods suspected to infringing its SEP.
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). [Am. 235]
5. In the cases foreseen in Article 38(3)(b) and in Article 38(4)(c), Article 34(5) shall apply mutatis mutandis in the proceedings before a competent court of a Member State.
Article 57
Report
1. The conciliator 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). [Am. 236]
2. The report shall include the following:
|
(a) |
the names of the parties; |
|
(b) |
a confidential assessment of the FRAND determination; |
|
(c) |
confidential summary of the main issues of disagreement; |
|
(d) |
a non-confidential methodology and the assessment of the determination of FRAND terms and conditions by the conciliator panel of conciliators . [Am. 237] |
3. The confidential report shall be available only to the parties and to the competence centre. The competence centre shall publish the non-confidential report in the database.
4. Either party to the FRAND determination may file the report in any proceedings before a competent court of a Member State against the other party to the FRAND determination, notwithstanding any procedural bar.
Article 58
Confidentiality
1. Except the methodology and the assessment of the FRAND determination by the conciliator 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. [Am. 238]
2. Notwithstanding paragraph (1), the competence centre may include information concerning the FRAND determination in any aggregate statistical data that it publishes concerning its activities, provided that such information does not allow identification the parties or the particular circumstances of the dispute to be identified.
Title VII
Procedural rules
Article 59
Communications to and notifications from the competence centre
1. The communication to and notifications from the competence centre shall be conducted in principle by electronic means.
2. The Executive Director of the EUIPO shall determine to what extent and under which technical conditions communications and notifications referred to in paragraph (1) are to be submitted electronically.
Article 60
Time limits
1. Time limits shall be laid down in terms of full years, months, weeks or days. Calculation shall start on the day following the day on which the relevant event occurred.
1a. The period specified in days ends on the last day, a period marked in weeks ends at the end of the day in the last week, a period specified in months ends on the expiry of the day corresponding to the initial day of the period, and if there was no such day in the last month - then on the last day of that month, a period marked in years ends on the expiry of the day corresponding to the initial day of a given period, and if there was no such day, the end date will be the last day of that month. [Am. 239]
2. The Executive Director of the EUIPO shall determine, before the commencement of each calendar year, the days on which the EUIPO is not open for receipt of documents or on which ordinary post is not delivered in the locality in which the EUIPO is located.
3. The Executive Director of the EUIPO shall determine the duration of the period of interruption in the case of a general interruption in the delivery of post in the Member State where the EUIPO is located or, in the case of an actual interruption of the EUIPO's connection to admitted electronic means of communication.
4. In cases of exceptional occurrences making the communication between the parties to the proceedings and the competence centre very cumbersome, the Executive Director of the EUIPO may extend all time limits that would otherwise expire on or after the date of commencement of such an occurrence, as determined by the Executive Director in relation to the following subjects:
|
(a) |
parties to the proceedings having their residence or registered office in the region concerned; |
|
(b) |
representatives or assistants with a place of business in the region concerned, appointed by the parties. |
5. When determining the length of extension referred to in the second subparagraph, the Executive Director of the EUIPO shall take into account the end date of the exceptional occurrence. If the occurrence referred to in the second subparagraph affects the seat of the EUIPO, the determination of the Executive Director of the EUIPO shall specify that it applies in respect of all parties to the proceedings.
Title VIII
Micro, Small and Medium-size Enterprises
Article 61
Training, advice and support SEP Licensing Assistance Hub for SMEs and start ups [Am. 240]
1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises set up and manage a SEP Licensing Assistance Hub for SMEs and start-ups which shall help the SMEs and start-ups with following tasks free of charge. : [Am. 241]
|
(a) |
identification of which SEPs might be relevant to their product or service, possible licensors and patent pools, in the event that the SME or the start-up is a SEP implementer; [Am. 242] |
|
(b) |
identification of possible licensees and, with the help of the European Observatory on infringements of intellectual property rights, advise them on how to best enforce their SEP rights on European and global level, in the event that the SME or the start-up is a SEP holder; [Am. 243] |
|
(c) |
offer training and support on SEP related matters. [Am. 244] |
The competence centre shall not be held liable for any help provided to SMEs and start-ups under this paragraph. When performing the tasks referred to in this paragraph, the competence centre may work in close cooperation with national patent offices and governmental schemes that support SMEs. [Am. 245]
1a. The competence centre shall, on a regular basis, proactively seek input from SMEs and start-ups on what training and support would be most helpful. [Am. 246]
2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises SMEs on SEP related matters. Such studies may include analysis, based on information provided by SEP holders and implementers regarding licenses entered into, royalties paid or collected, and products sold for IoT applications, and the competence centre may provide estimates of licensing costs for such applications to SMEs. [Am. 247]
3. The costs of the services referred to in paragraph (1) and paragraph (2) shall be borne by the EUIPO and the EUIPO shall ensure that the services are sufficiently funded and resourced . [Am. 248]
3a. Paragraphs 1 and 2 shall not apply to patent assertion entities or to SMEs, which are a subsidiary, affiliate, or owned or directly or indirectly controlled by another natural or legal person that is not a SME itself. [Am. 249]
Article 62
FRAND terms for micro, small and medium-sized enterprises
1. When negotiating a SEP licence with micro, small and medium-sized enterprises, SEP holders shall consider offering to them FRAND terms and conditions that are more favourable than the FRAND terms and conditions they offer to enterprises that are not micro, small and medium-sized for the same standard and implementations.
2. If When a SEP holder offers 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, than those offered to companies that are not an SME 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. [Am. 250]
3. SEP holders shall also consider discounts , spreading payments into interest-free instalments or royalty-free licensing for low sales volumes irrespective of the size of the implementer taking the licence. Such discounts or royalty-free licensing shall be fair, reasonable and non-discriminatory and shall be available in the electronic database as set out in Article 5(2), point (b). [Am. 251]
3a. Any benefits granted to SMEs under this Regulation may be withheld or withdrawn in cases of circumvention or misuse. [Am. 252]
Title IX
Fees and Charges
Article 63
Fees and charges
1. The competence centre may charge administrative fees for the services it renders under this Regulation.
2. Fees may be charged at least in respect of the following matters:
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(a) |
for the conciliators facilitating agreements on aggregate royalty determinations in accordance with Article 17; |
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(b) |
for the expert opinion on aggregate royalty in accordance with Article 18; |
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(c) |
for the essentiality check carried out by the evaluator in accordance with Article 31 and by the peer evaluator in accordance with Article 32; |
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(d) |
for the conciliators for the FRAND determination in accordance with Title VI. |
3. Where the competence centre charges fees in accordance with paragraph 2, the fees shall be borne as follows:
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(a) |
the fees referred to in paragraph (2), point (a) by the SEP holders that participated in the process based on their estimated percentage of SEPs from all SEPs for the standard; |
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(b) |
the fees referred to in paragraph (2), point (b) equally by the parties that participated in the procedure of the expert opinion on aggregate royalty, unless they agree otherwise, or the panel suggests a different apportionment based on the size of the parties determined on the basis of their turnover; |
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(c) |
the fees referred to in paragraph (2), point (c) by the SEP holder that requested an essentiality check pursuant to Article 29(5) or peer evaluation pursuant to Article 32(1) and the implementer that requested an essentiality check pursuant to Article 29(6); |
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(d) |
the fees referred to in paragraph (2), point (d) equally by the parties, unless they agree otherwise, or the conciliator suggests a different apportionment based on the level of participation of the parties in the FRAND determination. |
4. The level of the fees shall be reasonable and shall correspond limited to the costs of the services. It shall take into account the situation of micro, small and medium-sized enterprises. [Am. 253]
5. By [OJ: please insert the date = 18 months from entry into force of this Regulation], the Commission shall adopt an implementing act determining the amounts of the fees referred to in Article 63, the arrangement concerning the payment methods related to the rules set out in paragraph (3) and paragraph (4) of this Article. The implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2).
Article 64
Payment of fees
1. Fees shall be paid to the EUIPO. All payments shall be made in euro. The Executive Director of the EUIPO may establish which specific payment methods may be used.
2. If the amounts requested are not paid in full within 10 days after the date of the request, the competence centre may notify the defaulting party and give it the opportunity to make the required payment within [5] days. It shall submit a copy of the request to the other party, in case of an aggregate royalty or FRAND determination.
3. The date on which the payment shall be considered to have been made to the EUIPO shall be the date on which the amount of the payment or of the transfer is actually entered in a bank account held by EUIPO.
4. If any part of the required payment remains outstanding after the deadline in paragraph (2), the competence centre may suspend access to the database of the defaulting party, until payment is made.
Article 65
Financial provisions
1. The expenses incurred by the EUIPO or the evaluators or conciliators selected by the EUIPO pursuant to Articles 26 and 27 in carrying out the tasks conferred to it in accordance with this Regulation shall be covered by the administrative fees to be paid to the EUIPO by the users of the services of the competence centre.
2. Regarding costs incurred by the EUIPO for activities entrusted to it by this Regulation which are not covered by the fees under this Regulation, the EUIPO shall finance those activities from its own budgetary means.
Article 65a
Reasoned request to the Commission
A SEP holder or a SEP implementer may submit a reasoned request to the Commission to determine whether:
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(a) |
the SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market as regards identified implementations of certain standards or parts thereof within 1 month of the publication of the standard by the Standard Development Organisation; |
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(b) |
the functioning of the internal market is severely distorted due to significant difficulties or inefficiencies in the licensing of SEPs for particular existing implementations of standards or parts thereof within 12 months of the entry into force of this Regulation. [Am. 254] |
Article 65b
Delegated acts with respect to new standards
1. Within 4 months of the receipt of the request referred to in Article 65a, the Commission is empowered to adopt delegated acts in accordance with Article 67 and after an appropriate consultation process including all relevant stakeholders and to establish a list of implementations, standards or parts thereof, where SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market.
2. The Commission shall review the list referred to in paragraph 1 once a year in order to determine if it needs to be updated.
3. The procedure under this Article shall not affect the time limits set out in Articles 17 and 18. [Am. 255]
Article 65c
Delegated acts with respect to existing standards
1. The Commission shall conduct appropriate consultations including relevant stakeholders.
2. After considering all evidence and expert opinions, the Commission is empowered to adopt a delegated act in accordance with Article 67 to establish a list determining which of the existing implementations of standards or parts thereof can be notified in accordance with Article 66(1) or (2). By means of that delegated act, the Commission shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards, parts thereof or relevant implementations. The delegated act shall be adopted by... [OJ: please insert the date 18 months from entry into force of this Regulation]. The Commission shall check once a year if the list needs to be updated. [Am. 256]
Title X
Final Provisions
Article 66
Opening registration for an existing standard
1. Until … [OJ: please insert the date = 28 months from the entry into force of this Regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have or have not been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in the delegated act in accordance with paragraph (4) Article 65c . The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. [Am. 257]
2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis.
3. Until [OJ: please insert the date = 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis.
4. Where the functioning of the internal market is severely distorted due to inefficiencies in the licensing of SEPs, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, determine which of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. [Am. 258]
5. This article shall apply without prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation].
Article 67
Exercise of delegation of power
1. The power to adopt the delegated acts is conferred on the Commission subject to the conditions laid down in this Article.
2. The power to adopt a delegated act referred to in Articles 1(4), 4(5) , 65b and 65c and 66(4) shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation. [Am. 259]
3. The delegation of power referred to in Articles 1(4), 4(5) , 65b and 65c and 66(4) may be revoked at any time by the European Parliament or by the Council. A decision to revoke shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force. [Am. 260]
4. Before adopting a delegated act, the Commission shall consult experts designated by each Member State in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making.
5. As soon as it adopts a delegated act, the Commission shall notify it simultaneously to the European Parliament and to the Council.
6. A delegated act adopted pursuant to Articles 1(4), 4(5) , 65b and 65c and 66(4) shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or of the Council. [Am. 261]
Article 68
Committee procedure
1. The Commission shall be assisted by a committee. That committee shall be a committee within the meaning of Regulation (EU) No 182/2011.
2. Where reference is made to this paragraph, Article 5 of Regulation (EU) No 182/2011 shall apply.
Article 69
Commission guidance
The Commission may issue guidance under this Regulation on matters covered by its scope, excluding matters related to the interpretation of Article 101 and Article 102 TFEU.
Article 70
Evaluation
1. By … [OJ: please insert the date = 5 years from entry into force of this Regulation] , and every three years thereafter, the Commission shall evaluate the effectiveness and efficiency of the SEP registration and the essentiality check system. implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular: [Am. 262]
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(a) |
the impact, effectiveness and efficiency of the competence centre and its working methods; [Am. 263] |
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(b) |
the effectiveness and efficiency of the SEP registration and the essentiality check system; and [Am. 264] |
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(c) |
the impact that the essentiality check system, the aggregate royalties determination and the FRAND determination system have, in particular on the competitiveness of the Union SEP holders on a global level and on innovation in the Union. [Am. 265] |
2. By [OJ: please insert the date = 8 years from entry into force of this regulation], and every five years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods. [Am. 266]
3. When preparing the evaluation reports referred to in paragraphs (1) and (2) paragraph 1 , the Commission shall consult the EUIPO and stakeholders. [Am. 267]
4. The Commission shall submit the evaluation reports referred to in paragraphs (1) and (2) paragraph 1, together with its conclusions drawn based on those reports to the European Parliament, to the Council, to the European Economic and Social Committee and to the Management Board of the EUIPO. The evaluation report referred to in paragraph 1 shall be accompanied, where appropriate, by a legislative proposal. [Am. 268]
Article 71
Amendments to Regulation (EU) 2017/1001
Regulation (EU) 2017/1001 is amended as follows:
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1. |
Article 151(1) is amended as follows:
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|
2. |
in Article 157(4), the following point is added:
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|
3. |
Article 170 is amended as follows:
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Article 72
Entry into force and application
1. This Regulation shall enter into force on the twentieth day following that of its publication in the Official Journal of the European Union.
2. It shall apply from … [OP: please insert the date = 24 months after the date of entry into force of this Regulation].
This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at …,
For the European Parliament
The President
For the Council
The President
(1) OJ C , , p. .
(2) OJ C , , p. .
(3) Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions Making the most of the EU’s innovative potential An intellectual property action plan to support the EU’s recovery and resilience of 25 November 2020, COM(2020) 760 final.
(4) OJ L 124, 20.5.2003, p. 36.
(5) Council conclusions on intellectual property policy, as approved by the Council (Economic and Financial Affairs) at its meeting on 18 June 2021.
(6) European Parliament resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (2021/2007(INI)).
(7) Regulation (EU) No 1025/2012 of the European Parliament and of the Council of 25 October 2012 on European standardisation, amending Council Directives 89/686/EEC and 93/15/EEC and Directives 94/9/EC, 94/25/EC, 95/16/EC, 97/23/EC, 98/34/EC, 2004/22/EC, 2007/23/EC, 2009/23/EC and 2009/105/EC of the European Parliament and of the Council and repealing Council Decision 87/95/EEC and Decision No 1673/2006/EC of the European Parliament and of the Council (OJ L 316, 14.11.2012, p. 12).
(8) Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, OJ C 11, 14.01.2011, p. 1 (currently under review).
(9) Judgment of the Court of Justice of 16 July 2015, Huawei Technologies Co. Ltd v ZTE Corp. and ZTE Deutschland GmbH, C-170/13, ECLI:EU:C:2015:477.
(10) Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004, p. 45).
(11) Judgment of the Court of Justice of 13 December 1979, Hauer v. Land Rheinland-Pfalz, C-44/79, ECLI:EU:C:1979:290, para. 32; judgment of the Court of Justice of 11 July 1989, Hermann Schräder HS Kraftfutter GmbH & Co. KG v. Hauptzollamt Gronau, C-256/87, ECLI:EU:C:1999:332, para. 15, and judgment of the Court of Justice of 13 July 1989, Hubert Wachauf v. Bundesamt für Ernährung und Forstwirtschaft, C-5/88, ECLI:EU:C:1989:321, paras. 17 and 18.
(12) The conciliation procedure follows the conditions for mandatory recourse to alternative dispute settlement procedures as a condition for the admissibility of an action before the courts, as outlined in the CJEU judgments; Joint Cases C-317/08 to C-320/08 Alassini and Others of 18 March 2010, and Case C-75/16 Menini and Rampanelli v. Banco Popolare Società Cooperativa of 14 June 2017, taking into account the specificities of SEP licensing.
(13) 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, ECLI: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, ECLI:EU:C:2017:457.
(14) Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements (OJ C 11, 14.1.2011, p. 1) (currently under review).
(15) Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017.
(16) OJ L 123, 12.5.2016, p. 1.
(17) Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13).
(18) Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, p. 1).
(19) Regulation (EU) 2018/1725 of the European Parliament and of the Council of 23 October 2018 on the protection of natural persons with regard to the processing of personal data by the Union institutions, bodies, offices and agencies and on the free movement of such data, and repealing Regulation (EC) No 45/2001 and Decision No 1247/2002/EC (OJ L 295, 21.11.2018, p. 39).
(20) Regulation (EU) No 1025/2012 of the European Parliament and of the Council of 25 October 2012 on European standardisation, amending Council Directives 89/686/EEC and 93/15/EEC and Directives 94/9/EC, 94/25/EC, 95/16/EC, 97/23/EC, 98/34/EC, 2004/22/EC, 2007/23/EC, 2009/23/EC and 2009/105/EC of the European Parliament and of the Council and repealing Council Decision 87/95/EEC and Decision No 1673/2006/EC of the European Parliament and of the Council (OJ L 316, 14.11.2012, p. 12).
ELI: http://data.europa.eu/eli/C/2025/1360/oj
ISSN 1977-091X (electronic edition)