Changes from plenary report to adopted text

Added(b) the invalidation of a registered SEP by a competent authority; or

Added(c) a final judgment that the registered SEP is not essential to the relevant standard.

Added5. 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]

Added6. 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.

Added7. 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).

Added8. The competence centre mayshall 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]

Added9. Any corrections pursuant to this article shall be made free of charge.

AddedArticle 24 Effects of absence of registration or suspension of registration of SEPs

Added1. 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]

Added2. 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 damagesbring 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]

Added3. Paragraphs (1) and (2) areParagraph 1 is without prejudice to provisions included in contracts settingconcluded 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]

Added4. Paragraphs (1) and (2) applyParagraph 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]

Added5. 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.

AddedArticle 25 Removing a SEP from the register and the database

Added1. A SEP holder may request the removal of its registered SEP from the register and the database, on the following grounds:

Added(a) expiry of the patent;

Added(b) invalidation of the patent by a competent authority;

Added(c) final judgment of a competent court of a Member State that the registered patent is not essential to the relevant standard;

Added(d) as a consequence of a negative result from the essentiality check pursuant to Article 31(5) and Article 33(1).

Added2. 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).

Added3. The competence centre shall remove the SEP from the register and the database.

AddedTitle IV Evaluators and Conciliators

AddedArticle 26 Evaluators and conciliators

Added1. An evaluator shall conduct essentiality checks.

Added2. A conciliator shall conduct the following tasks:

Added(a) mediate among parties in establishing an aggregate royalty;

Added(b) provide a non-binding opinion on an aggregate royalty;

Added(c) serve in a FRAND determination.

Added3. The evaluators and conciliators shall adhere to a code of conduct.

Added4. The competence centre shall appoint [10] evaluators from the roster of evaluators as peer evaluators for a period of [three] years.

Added5. 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]

Added(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]

Added(b) the procedures pursuant to Articles 17, 18, 31 and 32 and Title VI.

AddedArticle 27 The selection procedure

Added1. 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).

Added2. 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]

Added(a) there is no potential conflicts of interest, so that the chosen evaluators and conciliators are impartial and unbiased; [Am. 164]

Added(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]

Added3. Where the competence centre has not yet established roster of candidatesThere shall be different rosters of evaluators orand 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]

Added4. The competence centre shall regularly review the rosters that a sufficient number of qualified candidates is maintained.

AddedTitle V Essentiality checks of standard essential patents

AddedArticle 28 General requirement for essentiality checks

Added1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in ana transparent, objective and impartial manner and that confidentiality of the information obtained is safeguarded. [Am. 167]

Added2. 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.

Added3. Essentiality checks shall not be done on more than one SEP from the respective patent family.

Added4. 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.

Added5. 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.

Added6. 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.

AddedArticle 29 Administration of essentiality checks

Added1. 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]

Added2. 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.

Added3. The competence centre shall publish the list of SEPs selected for essentiality check.

Added4. 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]

Added4a. 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]

Added5. 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.

Added6. 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.

Added7. 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.

Added8. 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.

Added9. 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:

Added(a) maintain, or