What changed between the plenary report and the adopted text

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

Added:Article 4 Register of standard essential patents

Removed:Article 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.

Added:1. A Union register for SEPs ('the register') is establishedshall be set up and maintained in an electronic format by the competence centre. [Am. 83]

Removed: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:

Added:2. The register shall be maintained in electronic format by the competence centre. [Am. 84]

Removed:Article 18 – paragraph 9 – point a: (a) to grant a suspension of the procedure 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

Added:3. The register shall contain the following entries:

Removed:Article 18 – paragraph 10: 10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 9(a) or of the decision referred to in paragraph 9(b). The opinion shall be supported by at least two of the three conciliators.

Added:(a) information on relevant standards;

Removed:Article 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.

Added:(b) identification of registered SEPs identification, including the country of registration and patent number; [Am. 85]

Removed:Article 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:

Added:(c) the standard version, the technical specification and the specific sections of the technical specification for which the patent is considered essential; [Am. 86]

Removed: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.

Added:(d) reference to the terms of the SEP holder’s FRAND licensing commitment to the standard development organisation;

Removed:Article 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).

Added:(e) name, address and contact details of the SEP holder;

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

Added:(f) if the SEP holder is an affiliate, subsidiary or part of a group ofone or more companies, the name, address and contact details of the parent company; [Am. 87]

Removed:Article 22 – paragraph 3: 3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 3 months.

Added:(g) name, address and contact details of the SEP holder’s legal representatives in the Union, where relevant;

Removed:Article 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.

Added:(h) the existence of any publicpublicly available standard terms and conditions, including SEP holder’s royalty, royalty-free and discount policies; [Am. 88]

Removed:Article 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.

Added:(i) the existence of any publicpublicly available standard terms and conditions for SEP licensing to SMEs and start-ups; [Am. 89]

Removed:Article 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:

Added:(j) availability for licensing through patent pools and the name of the respective patent pool, where applicable; [Am. 90]

Removed:Article 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.

Added:(k) contact details for licensing, including licensing entity;

Removed: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.

Added:(l) the date of registration of the SEP in the register and the registration number.

Removed:Article 24 – paragraph 1: deleted

Added:4. The register shall also contain the following entries, each accompanied by the date of recording of such entry:

Removed:Article 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.

Added:(a) changes in the contact details of entries referred to in paragraph (3), points (e), (f), (g) and (k);

Removed:Article 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.

Added:(b) the grant or transfer of a licence through patent pools, where applicable pursuant to Article 9;

Removed:Article 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).

Added:(c) any information on whether an essentiality check or peer evaluation have been performed and, unless not possible due to contractual limits agreed upon by the parties, also a reference to the resultoutcome of the essentiality check; [Am. 91]

Removed:Article 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:

Added:(d) information on whether the SEP is expired or, invalidated or deemed unenforceable by a final judgment of a competent court of a Member State; [Am. 92]

Removed:Article 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;

Added:(e) particulars regarding proceedings and decisions on SEPs pursuant to Article 10;

Removed:Article 27 – paragraph 2: 2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators and make sure that:

Added:(f) date of publication of information pursuant to Article 19(1) in conjunction with Article 14(7), Article 15(4) and Article 18(11); [Am. 93]

Removed:Article 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;

Added:(g) the date of suspension of the SEP from the Register pursuant to Article 22;

Removed:Article 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.

Added:(h) corrections of the SEP, pursuant to Article 23;

Removed:Article 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.

Added:(i) the date of removal of the SEP from the register pursuant to Article 25 and the grounds for removal;

Removed:Article 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.

Added:(j) the correction to or removal from the register of the item referred to in points (b), (e) and (f).

Removed:Article 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).

Added:4a. Prior to registering their patents, SEP holders may voluntarily submit their SEPs for essentiality checks to the competence centre. [Am. 94]

Removed:Article 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.

Added:5. The Commission is empowered to adopt delegated acts in accordance with Article 67, amending paragraphs (3) and (4) to determine items other than those referred to in paragraphs (3) and (4) that are to be entered in the Register for the purposes of this Regulation.

Removed:Article 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.

Added:6. The competence centre shall collect, organise, make public and store the items referred to in paragraphs (3) and (4), including any personal data for the purposes of this Regulation.