The European Commission is due to present a package on patents on Wednesday 26 April, comprising several initiatives and regulations. Amongst these, it is expected to publish a regulation on standard essential patents (SEPs) to improve transparency and predictability for patent holders in particular.
According to a draft version of the proposed regulation obtained by EUROPE, the Commission plans to create an online register and database for SEPs, managed by the European Union Intellectual Property Office (EUIPO). The Commission will set up a competence centre to carry out these administrative tasks online.
This means that SEP owners will have to register their patents and accompanying information with the EUIPO, if they want to enforce the rights associated with them. “SEP holders will be in a better position to understand how their portfolios compare with other SEP holders’ portfolios”, the Commission says.
For some stakeholders, this step adds an extra burden that they could do without.
The Commission also plans to carry out random ‘essentiality checks’ on certain SEPs by independent assessors. These controls will help to avoid having too many registrations, according to the Commission.
Another major element of the text is the introduction of an obligation for SEP holders to have recourse to a mediation system administered by the EUIPO before they can initiate legal action for non-compliance with the terms of the patent by another party. In the opposite case, where a patent user wants to seek an opinion before a national court, they will also have to go through this mediation first.
This system will have to define, through appointed conciliators, the terms of “fair, reasonable and non-discriminatory” (‘FRAND’) use, according to the draft text. “The FRAND determination should simplify and speed up negotiations concerning FRAND terms and reduce costs”, according to the Commission.
To see the draft regulation: https://aeur.eu/f/6ir (Original version in French by Léa Marchal)