Changes from plenary report to adopted text

RemovedDRAFT EUROPEAN PARLIAMENT LEGISLATIVE RESOLUTION

AddedP9_TA(2024)0100

Removedon the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001

AddedStandard essential patents

Removed(COM(2023)0232 – C90147/2023 – 2023/0133(COD))

AddedCommittee on Legal Affairs

AddedPE753.697

AddedEuropean 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))

▸7 unchanged paragraphs

(Ordinary legislative procedure: first reading)

The European Parliament,

– having regard to the Commission proposal to Parliament and the Council (COM(2023)0232),

– 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 (C90147/2023),

– having regard to Article 294(3) of the Treaty on the Functioning of the European Union,

– having regard to the opinion of the European Economic and Social Committee of 20 September 2023,

– having regard to Rule 59 of its Rules of Procedure,

Changed– having regard to the opinions of the Committee on International Trade and the Committee on the Internal Market and Consumer Protection,– having regard to the report of the Committee on Legal Affairs (A9-0016/2024),Protection,

Added– having regard to the report of the Committee on Legal Affairs (A9-0016/2024),

1. Adopts its position at first reading hereinafter set out;

2. Calls on the Commission to refer the matter to Parliament again if it replaces, substantially amends or intends to substantially amend its proposal;

3. Instructs its President to forward its position to the Council, the Commission and the national parliaments.

Change 1

RemovedRecital 1: (1) On 25 November 2020, the Commission published its intellectual property action plan31, 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)32 . The action plan was supported by Council Conclusions of 18 June 202133 and by the European Parliament in its Resolution of 11 November 202134.

AddedP9_TC1-COD(2023)0133

RemovedRecital 2: (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 reduce 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.

AddedPosition 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

RemovedRecital 2 a (new): (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.

Added(Text with EEA relevance)

RemovedRecital 2 b (new): (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.

AddedTHE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

RemovedRecital 3: (3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents in force in one or more Member States that a SEP holder claims to be 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 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.

AddedHaving regard to the Treaty on the Functioning of the European Union, and in particular Article 114 thereof,

RemovedRecital 4: (4) There are well established commercial relationships and licensing practices for certain implementations of standards, 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 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 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.

AddedHaving regard to the proposal from the European Commission,

RemovedRecital 4 a (new): (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.

AddedAfter transmission of the draft legislative act to the national parliaments,

RemovedRecital 5: (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology 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 or the development of innovative technologies and emerging 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 implementations, for which SEPs can be registered.

AddedHaving regard to the opinion of the European Economic and Social Committee,

RemovedRecital 6: (6) Because a FRAND commitment should be made for any SEP 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 Council35.

AddedHaving regard to the opinion of the Committee of the Regions,

RemovedRecital 7: (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.

AddedActing in accordance with the ordinary legislative procedure,

RemovedRecital 7 a (new): (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.

AddedWhereas:

RemovedRecital 10 a (new): (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 licence them to all interested licensees regardless of their position in the value chain and preferably include all the SEPs relevant to the standard.

Added(1) On 25 November 2020, the Commission published its intellectual property action plan, 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). The action plan was supported by Council Conclusions of 18 June 2021 and by the European Parliament in its Resolution of 11 November 2021. [Am. 1]

RemovedRecital 10 b (new): (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.

Added(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]

RemovedRecital 12: (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 crucial to ensure that the competence centre has the necessary means, including human and financial resources to effectively perform its tasks.

Added(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]

RemovedRecital 12 a (new): (12a) 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 EU´s technological leadership in innovation.

Added(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]

RemovedRecital 13: (13) The competence centre should on the one hand set up and administer an electronic register containing detailed information on SEPs in force in one or more Member States. 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 also set up and 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 courts, should have access to the information in the database free of charge. Academic institutions should also be able to request access to the information free of charge under certain conditions. The electronic register and the electronic database should offer a high level of legal certainty.

Added(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 bethat 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 nothas 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]

RemovedRecital 13 a (new): (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.

Added(4) There are well established commercial relationships and licensing practices for certain use casesimplementations 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 casesimplementations – 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 forimplementations 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]

RemovedRecital 14: (14) The competence centre should be the subject 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 should be made between the free public access to basic information and the need to finance the functioning of the competence centre.

Added(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]

RemovedRecital 15: (15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holders to plan expected return on investment and SEP implementers to estimate the cost of standard integration in their products. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, 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.

Added(5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use casesimplementations 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 nascentinnovative technologies and emerging use casesimplementations. 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 casesimplementations, for which SEPs can be registered. [Am. 8]

RemovedRecital 16: (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 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.

Added(6) Because a FRAND commitment should be made for any SEP declaredclaimed 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. [Am. 9]