Arbitration Act 2001 · 2020 Revised Edition · Part 9A · Arbitrations Relating to Intellectual Property Rights
52C. Effect of award involving IPR
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This section applies if an award deciding an IPR dispute is made in arbitral proceedings.
award
“award” means a decision of the arbitral tribunal on the substance of the dispute and includes any interim, interlocutory or partial award but excludes any order or direction made under section 28;
The fact that a person is a third‑party licensee or third‑party holder of a security interest in respect of the IPR does not of itself make the person a person claiming through or under a party to the arbitral proceedings for the purposes of section 44(1).
party
“party” means a party to an arbitration agreement or, in any case where an arbitration does not involve all of the parties to the arbitration agreement, means a party to the arbitration;
However, subsection (2) does not affect any right or liability between a third‑party licensee or third‑party holder of a security interest and a party to the arbitral proceedings whether —
arising in contract; or
arising by operation of law.
In this section —
“third‑party holder of a security interest”, in relation to an IPR in dispute in arbitral proceedings, means a person who —
IPR
“intellectual property right” or “IPR” means —(a)a patent;(b)a trade mark;(c)a geographical indication;(d)a registered design;(e)a copyright;(f)a right in a protected layout‑design of an integrated circuit;(g)a grant of protection in respect of a plant variety;(h)a right in confidential information, trade secret or know‑how;(i)a right to protect goodwill by way of passing off or similar action against unfair competition; or(j)any other intellectual property right of whatever nature.(2) In this Part, a reference to an IPR includes an application for the registration of an IPR if the IPR is protectable by registration.(3) In this Part,
is a holder of a security interest in respect of the IPR granted by a party to the arbitral proceedings; but(b)is not a party to the arbitral proceedings;
“third‑party licensee”, in relation to an IPR in dispute in arbitral proceedings, means a person who —
is a licensee (whether or not an exclusive licensee) of the IPR under a licence granted by a party to the arbitral proceedings; but(b)is not a party to the arbitral proceedings.