Changes from report parliamentary committee draft to plenary report

AddedArticle 50 – paragraph 1: 1. At any time during the FRAND determination, the panel of conciliators or a party on its own motion or by invitation of the panel of conciliators may submit proposals for a determination of FRAND terms and conditions.

AddedArticle 50 – paragraph 3: 3. When submitting suggestions for FRAND terms and conditions, the 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 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.

AddedArticle 51 – title: Recommendation of a determination of FRAND terms and conditions by the panel of conciliators

AddedArticle 51 – paragraph 1: The 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.

AddedArticle 52 – paragraph 1: Following the notification of the written recommendation of FRAND terms and conditions by the 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 panel of conciliators.

AddedArticle 53 – paragraph 1: If the 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.

AddedArticle 54 – paragraph 1: 1. When the 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.

AddedArticle 54 – paragraph 2: 2. A party may request the panel of conciliators that specific information in a submitted document is kept confidential.

AddedArticle 54 – paragraph 3: 3. When a party requests the information in a document it had submitted to be kept confidential, the 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.

AddedArticle 55 – paragraph 1: 1. At the latest 45 days before the end of the time limit referred to in Article 37, the 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.

AddedArticle 55 – paragraph 2: 2. Either party may submit observations to the proposal and suggest amendments within a deadline set by the 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.

AddedArticle 56 – paragraph 1 – point b: (b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55;

AddedArticle 56 – paragraph 1 – point c: (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 panel of conciliators referred to in Article 55;

AddedArticle 56 – paragraph 1 – point d: (d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55.

Article 56 – paragraph 4: 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.

Change 58

RemovedArticle 61 – title: One-stop shop for MSMEs

AddedArticle 57 – paragraph 1: 1. The 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).

RemovedArticle 61 – paragraph 1: 1. The competence centre shall set up and manage a one-stop shop for MSMEs, which shall perform the following tasks free of charge: / (a) help MSMEs to identify which SEPs might be relevant to their product or service and possible licensors, in the event that the MSMEs is a SEP implementer; / (b) help MSMEs to identify possible licensees and with the help of the European Observatory on infringements of intellectual property rights advise the MSMEs on how to best enforce their SEP rights on European and global level, in the event that the MSME is a SEP holder; / (c) offer training and support on SEP related matters; / The competence centre shall not be held liable for any help provided to MSMEs under this Article.

AddedArticle 57 – paragraph 2 -– point d: (d) a non-confidential methodology and the assessment of the determination of FRAND terms and conditions by the panel of conciliators.

RemovedArticle 61 – paragraph 3 a (new): 3a. Paragraphs 1 and 2 shall not apply to patent assertion entities or to MSMEs, which are a subsidiary, affiliate, or owned or directly or indirectly controlled by another natural or legal person that is not a MSME itself.

AddedArticle 58 – paragraph 1: 1. Except the methodology and the assessment of the FRAND determination by the 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.

RemovedThis addition is necessary in order to exclude shell companies and patent assertion entities from benefitting from the MSMEs provisions.

AddedArticle 60 – paragraph 1 a (new): 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.

AddedArticle 61 – title: SEP Licensing Assistance Hub for SMEs and start ups

AddedArticle 61 – paragraph 1: 1. The competence centre shall 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:

AddedArticle 61 – paragraph 1 – point a (new): (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;

AddedArticle 61 – paragraph 1 – point b (new): (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;

AddedArticle 61 – paragraph 1 – point c (new): (c) offer training and support on SEP related matters.

AddedArticle 61 – paragraph 1 – subparagraph 1 a (new): 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.

AddedArticle 61 – paragraph 1 a (new): 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.

AddedArticle 61 – paragraph 2: 2. The competence centre may commission studies, if it considers it necessary, to assist 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.

AddedArticle 61 – paragraph 3: 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.

AddedArticle 61 – paragraph 3 a (new): 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.

AddedArticle 62 – paragraph 2: 2. When a SEP holder, 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.

AddedArticle 62 – paragraph 3: 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).

AddedArticle 62 – paragraph 3 a (new): 3a. Any benefits granted to SMEs under this Regulation may be withheld or withdrawn in cases of circumvention or misuse.

Article 63 – paragraph 4: 4. The level of the fees shall be reasonable and limited to the costs of the services. It shall take into account the situation of micro, small and medium-sized enterprises.

Change 59

ChangedArticle 6665 –a paragraph(new): 1:Article 1.65a Until/ [OJ:Reasoned pleaserequest insertto the dateCommission =/ 28A monthsSEP fromholder theor entrya intoSEP forceimplementer ofmay thissubmit regulation]a holdersreasoned ofrequest SEPsto essentialthe Commission to adetermine standardwhether: published/ before(a) the entrySEP intolicensing forcenegotiations ofon thisFRAND Regulationterms (‘existingand standards’),conditions fordo whichnot FRANDgive commitmentsrise haveto beensignificant made,difficulties mayor notifyinefficiencies affecting the competencefunctioning centreof pursuantthe tointernal Articlesmarket 14,as 15regards andidentified 17implementations of anycertain standards or parts thereof within 1 month of the existingpublication standardsof orthe partsstandard thereofby thatthe willStandard beDevelopment determinedOrganisation; in/ (b) the delegatedfunctioning actof the internal market is severely distorted due to significant difficulties or inefficiencies in accordancethe withlicensing Articleof 1(5).SEPs Thefor procedures,particular notificationexisting andimplementations publicationof requirementsstandards setor outparts inthereof thiswithin Regulation12 applymonths mutatisof mutandis.the entry into force of this Regulation.

Change 60

AddedArticle 65 b (new): Article 65b / Delegated acts with respect to new standards / 1. Within 4 months of the receipt of the request referred to in paragraph 1, 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.

AddedArticle 65 c (new): 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.

AddedArticle 66 – paragraph 1: 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 Article 65c. The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis.

Article 66 – paragraph 4: deleted

Change 61

RemovedThe text has been moved to Article 1 (5).

AddedArticle 67 – paragraph 2: 2. The power to adopt a delegated act referred to in Articles 4(5), 65b and 65c shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation.

RemovedArticle 70 – paragraph 1 a (new): 1a. By ... [OJ: please insert the date = 2 years from entry into force of this regulation] the Commission shall evaluate 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.

AddedArticle 67 – paragraph 3: 3. The delegation of power referred to in Articles 4(5), 65b and 65c 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.

RemovedArticle 70 – paragraph 3: 3. When preparing the evaluation reports referred to in paragraphs 1, 1a and 2, the Commission shall consult the EUIPO and stakeholders.

AddedArticle 67 – paragraph 6: 6. A delegated act adopted pursuant to Articles 4(5), 65b and 65c 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.

RemovedArticle 70 – paragraph 4: 4. The Commission shall submit the evaluation reports referred to in paragraphs 1, 1a and 2 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 1a shall be accompanied, where appropriate, by a legislative proposal.

AddedArticle 70 – paragraph 1: 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 implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular:

AddedArticle 70 – paragraph 1 – point a (new): (a) the impact, effectiveness and efficiency of the competence centre and its working methods;

AddedArticle 70 – paragraph 1 – point b (new): (b) the effectiveness and efficiency of the SEP registration and the essentiality check system; and

AddedArticle 70 – paragraph 1 – point c (new): (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.

AddedArticle 70 – paragraph 2: deleted

AddedArticle 70 – paragraph 3: 3. When preparing the evaluation reports referred to in paragraph 1, the Commission shall consult the EUIPO and stakeholders.

AddedArticle 70 – paragraph 4: 4. The Commission shall submit the evaluation reports referred to in 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.