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An overview of IP Licensing, with examples and interactive sessions between instructors and attendees:

·        Licensing – the friendly side of IPRs

·        Subjects for Licensing

·        Trade Secrets protection and enforcement

·        Non-Disclosure Agreements, Letters of Intent, Memorandum of Understanding

·        Industry-University Cooperation– Model Agreements in Germany

·        Licensing Contracts

·        License enforcement: IPRs infringement actions

·        Determining reasonable license fees and royalty rates: valuation methodologies

·        Alternate Dispute Resolution Mechanisms – Mediation and Arbitration in License Agreements

·        Fairtrading, Antitrust Law and Licensing

·        Licensing Game (“Renewable Wind Turbine”)

 

 

Why this joint Workshop by LES-SP and LES-DE?

LES-SP and LES-DE are both members of LES International (LESI), an umbrella association with over 10.000 professionals from all over the world.

Both associations share the importance of Networking and Education in the business of Intellectual Property. Networking with an international flavor and Education based on the day-by-day experience of their members, i.e., with a strong practical component.

Since years now, LES-DE is organizing a series of courses on the subject of "License Projects", offering a number of modules providing a survey of the problems involved in license projects. With a rather mixed audience (participants from industry, universities, and from the free profession, mainly patent attorneys and lawyers), the course has de-facto become an introduction to IP Licensing that German industry uses to send junior members of their IP departments, who are fully qualified already as patent attorneys or attorneys at law, but do not have experience with licensing yet.

Through this collaboration, LES-SP is offering interested professionals in Spain and Portugal, as well as internationally, the opportunity to benefit from this successful experience and to link to a number of seasoned instructors.

 

Instructors

·        Prof. Dr. Heinz Goddar, Partner at Boehmert & Boehmert, Ex-President LES Deutschland.

·        Dr. Helga Kutzenberger, Patent Attorney at Kutzenberger & Wolff, Cologne, Germany

·        José Miguel Lissén, Partner at Gómez-Acebo & Pombo Abogados, S.L.P.

·        Ingo A. Brückner, LL.M., Patent Attorney, Gerlingen, Germany

·        Prof. Dr. Christian Czychowski, Attorney at Law at Boehmert & Boehmert

·        Javier Fernández-Lasquetty, Attorney at Law, Partner at Elzaburu, Madrid, Spain

·        Prof. Dr. Julio Cerviño, Associate Professor of Marketing, Universidad Carlos III de Madrid

·        Dr. Jochen Schäfer, Attorney at Law at Schäfer & Partners, Munich, Germany

·        Dr. Matthias Zintler, LL.M., Partner at KNPZ Rechtsanwälte, Hamburg, Germany

 

(See further details at the end of this document)

 

 

The Business of Licensing

A joint Workshop by LES-SP and LES-DE

PROGRAM

10.00 – 10.15 h

Reception and welcome: General introduction to the workshop

Susana Bayón

Head of IP of Repsol, President of LES Spain & Portugal

10.15 – 10.30 h

Licensing – the friendly side of IPRs

Prof. Dr. Heinz Goddar

Partner, Boehmert & Boehmert. Ex-President LES Deutschland

10.30 – 10.45 h

Subjects for Licensing

Dr. Helga Kutzenberger

Patent Attorney, Kutzenberger & Wolff, Cologne, Germany. Ex-President LES Deutschland

10.45 – 11.15 h

Trade Secrets protection and enforcement

José Miguel Lissén

Attorney at Law, Partner, Gómez-Acebo & Pombo Abogados, S.L.P.

11.15 – 11.45 h

Coffee/Tea Break

11.45 – 12.15 h

Non-Disclosure Agreements, Letters of Intent, Memorandum of Understanding

Ingo A. Brückner, LL.M.,

Patent Attorney, Gerlingen

12.15 – 12.45 h

Industry-University Cooperation– Model Agreements in Germany

Prof. Dr. Christian Czychowski

Attorney at Law, Boehmert & Boehmert

12.45 – 13.15 h

Licensing Contracts

Ingo A. Brückner, LL.M.,

Patent Attorney, Gerlingen

13.15 – 13.45 h

License enforcement: IPR infringement actions

Javier Fernández-Lasquetty

Attorney at Law, Partner Elzaburu

13.45 – 14.30 h

Lunch break

14.30 – 15.00 h

Determining reasonable license fees and royalty rates: valuation methodologies

Prof. Dr. Julio Cerviño

Associate Professor of Marketing, Universidad Carlos III de Madrid

15.00 – 15.30 h

Alternate Dispute Resolution Mechanisms – Mediation and Arbitration in License Agreements

Dr. Jochen Schäfer

Attorney at Law, Schäfer & Partners

15.30 – 16.00 h

The new TTBER: A brief overview of the current regulatory system

Dr. Matthias Zintler,

Attorney at Law, KNPZ Rechtsanwälte

16.00 - 18.00 h

Licensing Game (“Renewable Wind Turbine”)

Helga Kutzenberger and Heinz Goddar

18.00 h

Closing remarks

 

 

Registration

For all LES members:

free of charge

For non-LES members, up to 39 years old: 100 €

For non-LES members. 40 years old and above: 300 €

Online, through the following URL

www.les-sp.org

 

Registration open: 26 September 2017

Registration deadline: 24 October 2017

 

 

Prof. Dr. Heinz GODDAR a German Patent Attorney and European Patent and Trademark Attorney, is partner of Boehmert & Boehmert and of Forrester & Boehmert, with his office at Munich. Prof. Dr. Goddar has a technical background (as well as PhD degree) in physics, with a focus on polymer physics. He teaches Patent and Licensing Law as an Honorary Professor at the University of Bremen, Germany; as a Lecturer at the Munich Intellectual Property Law Center (MIPLC), Munich, Germany; and as a Visiting/Adjunct Professor at several other Universities both in Greater China, Japan and U.S.A.. Professor Dr. Goddar is a Director at the Global Institute of Intellectual Property (GIIP), Delhi, India. He is a Past President of LES International and of LES Germany. In 2005 he has received the Gold Medal of LESI, and in 2014 he has been inducted into the IP Hall of Fame of IAM

 

Dr. Helga KUTZENBERGER is a founding partner of Kutzenberger Wolff & Partner with her office at Cologne. She specialises in a wide range of chemical subjects such as polymers, biotechnology products, inorganic products, special chemicals and packaging material.  She worked at Bayer AG for many years, focusing on the protection of industrial rights. As Senior Vice President she became the head of the ‘Licensing and Technical Cooperation’ division, and was responsible for the corporation’s activities in this area.  Dr Kutzenberger holds a PhD in chemistry and is a German patent attorney as well as an approved representative at the EPO and OHIM. In addition, she was president of LES Germany and holds regular seminars there on the subject of licensing rights.

 

José Miguel LISSÉN ARBELOA is a partner at Gómez-Acebo & Pombo Abogados, S.L.P.’s Madrid office and specializes in IP litigation in different technical fields, with a significant emphasis on conflicts involving the infringement and validity of standard essential patents (SEPs). He also advices his clients on licensing and technology transfer agreements and trade secrets protection and enforcement, including patent portfolio licensing of SEPs and non-SEPs. José Miguel is Secretary of LES Spain-Portugal and co-chair LES Internationals’ European Committee. José Miguel is consistently ranked by International legal directories as a leading professional in the fields of patent litigation and licensing in Spain.

 

Ingo A. BRÜCKNER, LL.M., German Patent Attorney and European Patent and Trademark Attorney, Gerlingen, Germany. Ingo Brückner has a technical background in mechanical engineering, aeronautics and astronautics holding a diploma degree from the Technical University Munich, Germany. Since1992 he has been working with the Intellectual Property Department of Daimler AG and its legal predecessors and is currently Head of Patents Propulsion Technologies. Ingo Brückner has been responsible in both prosecution and litigation of technical Intellectual Property Rights in the automotive field in the areas of combustion engines, e-Drive (including electric motors as well as battery and fuel cell technology), transmissions, manufacturing technology, vehicle safety, body and materials. He held numerous presentations in Europe and Asia on IP-Topics such as German and U.S. Patent Law, Strategic Intellectual Property Management, IP Licensing, R&D Contracts, IP Portfolio Management and IP Portfolio Assessment. Ingo Brückner is, inter alia, member of LES Germany (International Delegate), Board Member of VPP (German Association of Intellectual Property Experts) and Member of the Examination Board for German Patent Attorneys.

 

Prof. Dr. Christian CZYCHOWSKII is Attorney at Law (Germany) and Certified IT, Copyright and Media Lawyer, focuses on information technology, patent, licensing, contract, copyright, and trademark law. His clients include worldwide technology companies, software companies, and leading industry associations. Furthermore, he represents small and medium-sized businesses, public authorities, and internationally leading orchestras, musicians, and artists.

 

Javier FERNÁNDEZ-LASQUETTY, Partner at ELZABURU. Practicing lawyer since 1982, specialising in Intellectual Property, ICT and image rights. Previously a lawyer in several ICT and consultancy firms, as well as a partner at a multinational law firm. Appears in the leading international legal directories (Chambers & Partners, Legal 500, Best Lawyers, Who's Who Legal) and named as Leading Patent & Technology Licensing Lawyer by IAM Magazine. Since 1988, he has been a Professor of Intellectual Property at IE Law School, Instituto de Empresa, in various Master of Laws programmes, and since 2002 he has been the Director of that institution’s Advanced Intellectual Property Programme. Panelist at WIPO’s Arbitration and Mediation Center (IP General and Media & Entertainment). President of the Intellectual Property Section of the Madrid Bar Association (ICAM). Active member of professional associations of his sector such as LES Spain-Portugal, AIPPI, ALADDA, DENAE and INTA. Member of the Academic Council of Fide and Co-director of its 21st Century Intellectual Property Forum.

 

Dr. Jochen M. SCHAEFER, Attorney-at-Law (Germany) and Legal Counsel of the World Federation of the Sporting Goods Industry, has been involved in international business throughout his career. A graduate of Erlangen University, he has counselled renowned clients, with a focus on the international sporting goods industry, automotive suppliers, such service providers as IT companies and leaders in the market research field, among others. JMS started his career as General Counsel for adidas with worldwide responsibilities, and continued in private practice by providing legal advice to numerous overseas clients, licensors, licensees, franchisors and franchisees, joint venture partners, manufacturers and distributors, with a particular focus on the international sporting goods industry. Since 1986, JMS has served as Legal Counsel for the World Federation of the Sporting Goods Industry (WFSGI) and has also been the Legal Counsel for the European Federation of the Sporting Goods Industry (FESI) for many years. He is also an International Delegate to the Licensing Executive Society International (LESI) and Chair of the WFSGI Committee for Intellectual Property Protection. His clients benefit from his extensive global network and his entrepreneurial attitude. After more than 20 years as partner or managing partner of major law firms, JMS now heads up his own law office based in Munich, Germany.

 

Prof. Dr. Julio CERVIÑO is a professor of Marketing at University Carlos III of Madrid. He holds a Ph.D. in Marketing and Brand Management from Autonomous University in Madrid and a MBA in International Business and Affairs from Washington University (USA). He is the co-director of the Master in International Management at University Carlos III and a visiting professor in several Latin American and European Universities. He is also the co-director of the Research & MarketinGroup, a University´s official research group for international competitive analysis and brand, patent and anti-competition issues. He has published numerous articles in top leading academic journals and has received several awards for his publishing and research outcomes. As a technical consultant on Competition Law and IP (Intellectual Property) valuation and analysis, he has personally undertaken or either managed/supervised marketing research and legal and technical reports commissioned by companies and Institutions. He is a permanent advisor for the “Brands of Spain Group – Foro de Marcas Renombradas Españolas” in brand, patent and competition affairs, and he acts as a technical expert in Competition Law and Intellectual Property issues for the Spanish and European Courts. He is an active member of LES Spain-Portugal.

 

Dr. Mathias ZINTLER, LL.M., Partner at KNPZ Rechtsanwälte, Hamburg, Germany, regularly publishes essays in legal journals; he frequently lectures on intellectual property rights at Deutsche AnwaltsAkademie as well as at the ISM (International School of Management) in Hamburg, Frankfurt and Munich, and is a recognized speaker on the subject of current legal developments in IP law. Mathias Zintler is a member of the German Regional Group of the LES Licensing Executives Society, an international association of professionals that exclusively addresses questions of technology transfer and the exploitation of industrial and ancillary protection rights, in particular on the expert committee FIT. He is also a member of the German Association for the Protection of Intellectual Property (GRUR), INTA Intellectual Trademark Association, ECTA European Communities Trade Mark Association, MARQUES The Association of European Trade Mark Owners, PTMG Pharmaceutical Trade Marks Group and of the German-Italian association of lawyers. Mathias Zintler speaks German, English, French and Italian.

Desayuno de Preguntas y Respuestas con un Examinador/a de la Oficina Española de Patentes y Marcas.

El objetivo de este evento es dar la posibilidad a los participantes de tener un contacto directo con un examinador de la OEPM y la oportunidad de despejar las dudas habituales que se puedan tener a la hora de tramitar una solicitud de patente española, sobre el funcionamiento de la OEPM, y demás. Se prevé una presentación introductoria por el examinador previa a la sesión de preguntas y respuestas.

Programa

Sala de Reuniones de la planta 18. la Oficina Española de Patentes y Marcas (OEPM)

Paseo de la Castellana, 75; 28046 Madrid

Fecha: 28 de abril de 2017

INSCRIPCIÓN AQUÍ

Management Committees

    Audit
    The mission of the Audit Committee is to insure that the financial records, reports, procedures and systems of the Society at the end of each fiscal year are accurate and in compliance, to report to the Board of Delegates on the results of its annual reviews to insure such accuracy and compliance and to advise the LESI Treasurer and the Board of Delegates with regard to modifications and improvements to the financial record-keeping and reporting procedures and systems of the Society.
    + Info...


    Awards
    The mission of the Awards Committee is to insure that LESI identifies and appropriately recognizes the achievements of deserving individuals by recommending to the Board of Directors and the Board of Delegates as to awards, criteria for awards and nominees for awards to be given by LES International. In doing so, the Committee reviews the qualifications of candidates for awards, including the gold medal award of LESI, and makes recommendations each year as to whether and to whom an award, such as the gold medal award, should be granted that year. The Committee also makes recommendations as to whether and to whom honors or appreciations should be granted by LES.
    + Info...


    Communications
    The mission of the Communications Committee is to: supervise, monitor and improve communications between LES International and Member Societies, among Member Societies, among Committees and their members, among Member Societies and Committees; and between LESI and its LES members worldwide. In doing so, the Committee is responsible for managing the operation of the LES International website and the publication and distribution of les Nouvelles (including compliance with contracts for electronic distribution of les Nouvelles); ensuring a current and accurate directory of members is always available to members; educating Member Societies and their members on use of the LES International web site; encouraging Member Societies to either establish their own websites or establish their own page on the LES International website; and establishing and actively managing a public relations program designed to enhance the recognition and image of LES International.
    + Info...


    Education
    The mission of the Education Committee is to manage, devise and disseminate educational programs and materials of LES International, as well as of those from LES Member Societies, and, in collaboration with other institutions, enhance the dissemination of knowledge and experience of business dealings with and related to intellectual property including domestic and international licensing of intellectual property rights and transfer of technology to interested groups and persons inside and outside of LES International.
    + Info...


    Endowment
    The mission of the Endowment Committee is to manage the LESI Management Fund and to identify, investigate and make recommendations to the LESI Board of Directors and LESI Board of Delegates the criteria for the use of such funds and on special projects that would be beneficial, in general, to the membership of the LES Member Societies and recommends whether the funding of such projects should be approved.
    + Info...


    External Relations
    The mission of the External Relations Committee is to manage LESI's relations with external entities by maintaining, facilitating and intensifying contacts with other international organizations whose activities are complementary to or can assist in promoting the purposes of LES International, such as WTO, WIPO, AIPPI, ICC, Agencies of the UN, World Economic Forum, as identified by the Committee, the Board of Directors or the Board of Delegates from time to time and by collaborating with these organizations on worthwhile projects and conferences and consulting with them on any significant new developments planned or to be initiated having an impact on the purposes of LESI as set out in Article 1 Section 2 of the By-Laws. Such contacts include contacts between the LESI Committees and such external entities.
    + Info...


    Investment
    The mission of the Investment Committee is to provide sound fiscal advice to the LESI Board of Directors and the LESI Board of Delegates on the investment of LESI funds and to manage those investments.
    + Info...


    IP Maintenance
    The mission of the IP Maintenance Committee is to manage LESI's Intellectual Property by registration and maintenance of the LESI trademarks, copyrights and other proprietary information and materials, devising and recommending standards for the use of the copyrights, trademarks and of the logo of LESI, monitoring compliance and, in the case of infringements of the intellectual property rights of LESI, recommending suitable action to take to the Board of Directors and/or the Board of Delegates, as appropriate.
    + Info...


    Legal
    The mission of the Legal Committee is to manage legal issues and matters for LESI by providing advice and expertise on legal questions and issues, particularly those relating to the business and programs of LESI and overseeing the examination of, and making of recommendations for, amendment to the By-Laws and procedures related thereto.
    + Info...


    Long Range Planning
    The mission of the Long Range Planning Committee is to develop and manage the long range planning of LESI by continuously studying the goals, objectives, roles and activities of LESI, and developing long-range plans for the future development, the structure, the projects and the activities of LES International to achieve them.
    + Info...


    Meetings
    The mission of the Meetings Committee is to insure the successful execution of LESI Conferences and Meetings by establishing the criteria used to select host Societies and venues, examining nominee host Societies and venues for their ability to adhere to the criteria, recommending host Societies and venues for LESI Conferences and Meetings and providing aid, support and oversight to host Societies and venues, as requested and needed.
    + Info...


    Membership
    The mission of the Membership Committee is to devise and manage programs and materials for LES International and interested LES Member Societies for the recruitment and retention of members by reviewing the qualifications Member Societies apply to become an LES member, monitoring compliance with the Articles of Incorporation and By-Laws of LES International, and in particular with the obligations for Member Societies as set out in Sections 1 and 2 of Article VIII thereof, assisting candidate societies to meet membership criteria, examining any application for membership of candidate societies, assisting Member Societies to increase their activities and making recommendations on any of the foregoing.
    + Info...

    Nominations
    The mission of the Nominations Committee is to insure the successful operation of LESI by evaluating the Candidates for the Officers and Auditor of LESI and nominating those Candidates who are the most appropriate for the position in question.
    + Info...


Continuing Ad-Hoc Committees

    Global Technology Impact Forum
    Responsibility for the planned annual event in advance of the Davos World Economic Forum and related activities including the Invent for Humanity Technology Transfer Impact Forum.
    + Info...

    Standard Contracts
    The committee will include a member appointed by each IPR committee and the chair will be appointed by the Board of Directors. The committee will identify or develop standard license contracts capable of use in all countries. The goal would be to publish form license agreements of general application in most countries for patent, trademark, copyright, trade secret/knowhow and hybrid licenses, with appropriate substitution provisions and explanations. Where the committee identifies and wishes to incorporate a standard contract from another source, it will obtain permission to use and publish it. The committee will present an outline of its proposed publication to the Board of Delegates at its final meeting in 2010 and will present a publication by the last meeting in 2013. Unless extended, the committee will expire at the end of 2013.
    + Info...


    Valuation
    The committee will include qualified members from various disciplines and a chair appointed by the Board of Directors. The committee will identify issues, factors and methodologies used in giving value to IP portfolios or license deals. The goal would be to publish a practical overview of the valuation process with comments and recommendations as to approaches to such valuation. The committee will present an outline of its proposed publication to the Board of Delegates at its final meeting in 2010 and will present a publication by the last meeting in 2013. Unless extended, the committee will expire at the end of 2013.
    + Info...


    Young Members Congress
    The mission of the Young Members Congress of LESI is:
        To increase the number of active members under the age of 40 within LES Member Societies;
        To encourage participation and networking by young members at LESI events through the organization of unique educational and social programs;
        To mentor young executives for participation and leadership at LESI Board, Delegate and Committee levels as well as to make LESI officers aware of the interest, accomplishments and contributions of younger members.
        To encourage family participation through special programs and incentives.
        Collectively, the activities of the YMC will assure a strong foundation for the next generation of LESI excellence.
    + Info...


Industry Committees

    Chemicals, Energy Environment and Materials
    The mission of the Chemicals, Energy, Environment and Materials Committee is to promote licensing in the oil petrochemical, chemical, polymers, renewable energy, and associated industries by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, these industries
    + Info...

    Consumer Products Industries
    The mission of the Consumer Products Industry Committee is to promote licensing in the consumer products industries, including branded products, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, these industries.
    + Info...


    Electronics, IT and Telecommunications
    The mission of the Electronics, Information Technology and Telecommunications Committee is to promote licensing in the electronics, information technology, software, e-commerce telecommunications and other high tech industries, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, these industries.
    + Info...


    Engineering, Transportation and Physical Sciences Industries
    The mission of the Engineering, Transportation and Physical Sciences Committee is to promote licensing in the engineering, automotive, aerospace and other transportation industries and in the physical sciences and other high tech industries, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, these industries.
    + Info...


    Life Sciences Industries
    The mission of the Life Sciences Committee is to promote licensing in the pharmaceuticals, biotechnology, agrobio, genetic engineering, medical diagnostics and associated industries by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, these industries.
    + Info...


Professional Committees

    Copyright Licensing
    The mission of the Copyrights Committee is to promote the licensing of copyrights, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, copyrights.
    + Info...


    Dispute Resolution
    The mission of the Dispute Resolution Committee is to promote dispute resolution in licensing, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, this profession.
    + Info...


    Industry, University /Government Transactions
    The mission of the Industry, University and Government Transactions Committee is to promote the licensing profession involved with transactions between Industry and University/Government bodies, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, this profession.
    + Info...


    Patent & Technology Licensing
    The mission of the Patent and Technology Licensing Committee is to promote the licensing profession involved with transactions concerning patents and technology, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, this profession.
    + Info...


    Trademark, Design and Merchandising
    The mission of the Trademarks, Designs and Merchandising Committee is to promote the licensing profession involved with trademarks, designs and merchandising, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars and identifying and collaborating on problem areas of concern to, and major new developments in, this profession.
    + Info...


Regional Committees

    Americas
    The mission of the America’s Committee is to promote the licensing profession in the America’s, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars, monitoring legal developments in the region and identifying and collaborating on problem areas of concern to, and major new developments in, professionals in this region.
    + Info...


    Asia-Pacific
    The mission of the Asia-Pacific Committee is to promote the licensing profession in the Asia- Pacific region, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars, monitoring legal developments in the region and identifying and collaborating on problem areas of concern to, and major new developments in, professionals in this region.
    + Info...


    European
The mission of the European Committee is to promote the licensing profession in the EMEA region, by, inter alia, promoting networking among its members, sponsoring appropriate educational activities such as workshops, lectures, and seminars, monitoring legal developments in the region and identifying and collaborating on problem areas of concern to, and major new developments in, professionals in this region.
+ Info...

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