Proposal for a Regulation on standard-essential patents in the European Union

A patent that protects technology essential to a standard is called a Standard-Essential Patent (SEP). These patents refer to key technologies that are used in manufacturing, developing, or deploying products or services in a given industry.

SEPs play a crucial role in the context of technology standards, such as those used for mobile communications. When a standard is set, it is of paramount importance that patent holders commit to licensing those patents under fair, reasonable, and non-discriminatory (FRAND) conditions. This means interested third parties can obtain licenses to use an essential technology on fair and non-discriminatory terms.

SEPs and FRAND licenses are primarily intended to encourage innovation and promote the widespread adoption of technological standards. This prevents the blocking of competition and favors an environment of collaboration and cooperation between different actors in the industry by ensuring that holders of standard-essential patents do not abuse their dominant position.

The European Union intends to address SEPs and FRAND conditions through a Regulation. As such, a proposal for a Regulation of the European Parliament and of the Council on standard-essential patents, amending Regulation (EU) 2017/1001, has been presented.

The proposed Regulation can be accessed via the following links: the Spanish version and the English version.

This proposed Regulation, according to Article 1, establishes the following rules on standard-essential patents (SEPs):

a) rules providing for enhanced transparency with regard to information necessary for SEP licensing;

b) rules on the registration of SEPs;

c) a procedure to evaluate the essentiality of registered SEPs;

d) a procedure for the amicable settlement of disputes related to fair, reasonable and non-discriminatory nature of terms and conditions (‘FRAND determination’);

e) competences for the EUIPO for the fulfilment of the tasks set out in this Regulation.

It is further specified in the proposal that this Regulation applies to SEPs that are essential to standards published by a standard development organization (SDO) that calls on SEP holders to commit to licensing on fair, reasonable, and non-discriminatory (FRAND) terms and conditions. It does not apply to SEPs that are subject to the royalty-free intellectual property policy of the SDO that has published the standard.