Changes from plenary report to adopted text

Added(b) revoke

Addedthe results of examination of the essentiality of a registered SEP or of the peer evaluation.

Added10. 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.

Added11. 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

AddedArticle 30 Observations by stakeholders

Added1. 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]

Added2. 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.

Added3. 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]

AddedArticle 31 Examination of the essentiality of a registered SEP

Added1. The examination of essentiality shall be conducted following procedure that ensures sufficient time, rigorousness and high-quality.

Added2. The evaluator may invite the SEP holder concerned to file observations, within a period to be fixed by the evaluator.

Added3. 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.

Added4. 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]

Added5. 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.

Added6. The competence centre shall notify the reasoned opinion to the SEP holder.

AddedArticle 32 Peer evaluation

Added1. 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).

Added2. If the SEP holder requests a peer evaluation, the competence centre shall appoint a peer evaluator.

Added3. 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]

Added4. 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.

Added5. 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]

Added6. The competence centre shall notify the final reasoned opinion to the SEP holder.

Added7. The results of the peer evaluation shall serve to improve the essentiality check process and ensure consistency.

AddedArticle 33 Publication of the results of the essentiality checks

Added1. 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.

Added2. 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.

Added3. 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.

AddedTitle VI FRAND determination

AddedArticle 34 Initiation of the FRAND determination

Added1. 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:

Added(a) SEP holder, prior to any initiation of a SEP infringement claim before a competent court of a Member State;

Added(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.

AddedThe FRAND determination shall not apply to existing licensing agreements during their application term. [Am. 176]

Added2. 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.

Added3. 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.

Added4. 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 StatesState shall consider that a procedure for FRAND determination is ongoing. [Am. 177]

Added5. 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]

AddedArticle 35 Rules of procedure

AddedThe FRAND determination shall be governed by Article 34 to Article 58, as further implemented pursuant to Article 26(5).

AddedArticle 36 Content of the request to initiate a FRAND determination

Added1. The FRAND determination shall be initiated by a written request to the competence centre that shall contain the following information:

Added(a) the name and contact information of the requesting party;

Added(b) the name and address of the responding party;

Added(c) the registration numbers of the relevant SEPs in the register;

Added(d) the commercial name of the standard and the name of the relevant standard developing organisation. [Am. 179]

Added(e) a summary of the licensing negotiations to date, if applicable;

Added(f) references to any other related FRAND determination, if applicable. [Am. 180]

Added2. 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]

Added(a) claim charts mapping patent claims to the standard of selected registered SEPs;

Added(b) proof of essentiality checks, if available.

Added3. The request to initiate a FRAND determination may include a proposal for a FRAND determination.

AddedArticle 37 Duration of the FRAND determination

Added1. 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]

Added2. 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.

AddedArticle 38 Notification of the FRAND determination request and response

Added1. 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]

Added2. 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]

Added3. 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]

Added(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]

Added(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]