Changes from report parliamentary committee draft to plenary report

Change 39

RemovedArticle 15 – paragraph 1: 1. Holders of SEPs in force in one or more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for their SEPs covering a standard.

AddedArticle 14 – paragraph 6: 6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3), (4) and (4a) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list.

AddedArticle 15 – paragraph 1: 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 all SEPs covering a standard.

Article 17 – title: Process for facilitating agreements between SEP holders on aggregate royalty

Change 40

ChangedArticle 17 – paragraph 3 – point e: (e) the estimated percentage of SEPs they own individually and collectively from all declared SEPs claimed for the standard.

Change 41

RemovedArticle 18 – title: Determination of an aggregate royalty by a non-binding expert opinion

AddedArticle 17 – paragraph 4: 4. The competence centre shall publish the request and invite other SEP holders to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard.

AddedArticle 17 – paragraph 7: 7. Where the SEP holders fail to make 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.

AddedArticle 17 – paragraph 8: 8. If the SEP holders agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply.

AddedArticle 18 – paragraph 1: 1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on 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.

Article 18 – paragraph 4: 4. The competence centre shall notify the relevant standard development organisation and all 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.

Change 42

RemovedArticle 18 – paragraph 8 a (new): 8a. The panel shall permit participants to submit responses to the submissions provided for in paragraph 8.

AddedArticle 18 – paragraph 5: 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.

AddedArticle 18 – paragraph 6: 6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, 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 having the appropriate experience in the relevant field of technology.

AddedArticle 18 – paragraph 8 – introductory part: 8. Within one month following the appointment, the panel shall request the participating SEP holders to:

AddedArticle 18 – paragraph 8 – point b: (b) submit justification on the impossibility to propose an aggregate royalty due to technological, economic, or other considerations and

AddedArticle 18 – paragraph 8 – point b a (new): (ba) provide evidence or observations to assist the panel in deciding on aggregate royalty.

AddedArticle 18 – paragraph 8 a (new): 8a. The panel shall permit participants to submit responses to the submissions provided for in paragraph 8 and reactions to those responses.

Article 18 – paragraph 9 – introductory part: 9. The panel shall duly consider the submissions and responses provided for in paragraphs 8 and 8a and decide:

Change 43

ChangedArticle 18 – paragraph 9 – point a: (a) to 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

Change 44

ChangedArticle 18 – paragraph 11:10: 11.10. The expert opinionpanel shall include a summary of the information provided in the request,provide the information referred to inexpert Articleopinion 15(2),within the8 namesmonths of the conciliators, theend procedure,of the reasons forsuspension theperiod opinionpursuant onto theparagraph aggregate9(a) royaltyor andof the underlying methodology. Anydecision divergentreferred viewsto andin theparagraph reasons9(b). underlyingThe themopinion shall be specifiedsupported inby anat annexleast totwo of the expertthree opinion.conciliators.

Change 45

AddedArticle 18 – paragraph 11: 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. Any divergent views and the reasons underlying them shall be specified in an annex to the expert opinion.

AddedArticle 19 – paragraph 1 – introductory part: 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:

Article 20 – paragraph 5: 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.

Change 46

RemovedSEP holders update the technical specifications according to Article 4 paragraph 3 (c) very often. They should not be faced with additional administrative burden if there is no added value for transparency.

AddedArticle 20 – paragraph 6: 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 pursuant to Article 29(1).

RemovedArticle 23 – paragraph 3: 3. The competence centre shall notify the request made in accordance with paragraph 2 to the SEP holder and invite the SEP holder to 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 months.

AddedArticle 22 – paragraph 1: 1. The EUIPO shall annually check a sample of SEP registrations in order to verify their completeness and correctness.

Change 47

ChangedArticle 2322 – paragraph 4 – introductory part: 4. The competence centre shall notify the SEP holder and invite the SEP holder to request a3: correction3. ofWhere the entry inregistration thedoes registernot orcontain the information submitted for the database,in whereaccordance relevantwith withinArticles a4 timeand limit5 noor lesscontains thanincomplete 2or months,inaccurate wheninformation, the competence centre isshall informedrequest bythe aSEP competentholder courtto ofprovide athe Membercomplete Stateand pursuantaccurate toinformation Articlewithin 10(1)the orset atime patentlimit officeof orno anyless thirdthan party3 of:months.

Change 48

AddedArticle 22 – paragraph 4: 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.

AddedArticle 23 – paragraph 3: 3. The competence centre shall notify the request made in accordance with paragraph 2 to the SEP holder and invite the SEP holder to 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 3 months.

AddedArticle 23 – paragraph 4 – introductory part: 4. The competence centre shall notify the SEP holder and invite the SEP holder to 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 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:

AddedArticle 23 – paragraph 5: 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.

Article 23 – paragraph 8: 8. The competence centre 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.

Change 49

RemovedArticle 26 – paragraph 3: 3. The evaluators and conciliators shall have the requisite expertise and experience, be unbiased and independent and adhere to a code of conduct.

AddedArticle 24 – paragraph 1: deleted

RemovedArticle 27 – paragraph 2: 2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators. Such candidates shall be impartial, sufficiently qualified, have substantial experience in the patent industry and preferably come from national, Union or international institutions. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise.

AddedArticle 24 – paragraph 2: 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 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.

RemovedArticle 29 – paragraph 1: 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 is not a MSME 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).

AddedArticle 24 – paragraph 3: 3. Paragraph 1 is without prejudice to provisions included in contracts concluded and applied before the entry into force of this Regulation which set a royalty for patents that are or have been claimed to be essential to a standard.

RemovedThis addition is necessary in order to make sure shell companies and patent assertion entities cannot benefit from this exclusion.

AddedArticle 24 – paragraph 4: 4. Paragraph 1 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).

RemovedArticle 29 – paragraph 4: 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 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.

AddedArticle 26 – paragraph 5 – introductory part: 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:

RemovedArticle 29 – paragraph 4 a (new): 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 previous check. If, after the review, the evaluator concludes that the prior essentiality check result was inaccurate, he/she shall conduct a fresh essentiality check for the specific SEP in question.

AddedArticle 26 – paragraph 5 – point a: (a) the requirements for evaluators or conciliators, including a Code of Conduct, including at least the criteria of Article 27(2a) of this Regulation;

Change 50

ChangedArticle 3827 – paragraph 2: 2. The responding party shall notify the competence centre within 15 days from the receiptshall ofestablish thea notificationroster of thesuitable requestcandidates for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the respondingevaluators partyor agreesconciliators toand themake FRANDsure determination.that:

Change 51

RemovedThe parties should be able to wait until the outcome of the FRAND determination procedure in order to decide if they want to be bound by the result.

AddedArticle 27 – paragraph 2 – point a (new): (a) there is no potential conflicts of interest, so that the chosen evaluators and conciliators are impartial and unbiased;

RemovedArticle 38 – paragraph 3 – introductory part: 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 the following shall apply:

AddedArticle 27 – paragraph 2 – point b (new): (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.

RemovedThe parties should be able to wait until the outcome of the FRAND determination procedure in order to decide if they want to be bound by the result.

AddedArticle 27 – paragraph 2 - subparagraph 1 a (new): There shall be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise.

AddedArticle 28 – paragraph 1: 1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in a transparent, objective and impartial manner and that confidentiality of the information obtained is safeguarded.

AddedArticle 29 – paragraph 1: 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).

AddedArticle 29 – paragraph 4: 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 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.

AddedArticle 29 – paragraph 4 a (new): 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.

AddedArticle 30 – paragraph 1: 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.

AddedArticle 30 – paragraph 3: 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.

AddedArticle 31 – paragraph 4: 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.