Intellectual Property Law CPD Courses

THE INSTITUTE OF BRAND AND INNOVATION LAW UCL FACULTY OF LAWS Intellectual Property Law CPD Courses 2011-12 • The Commercialisation of IP • The Law o...
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Intellectual Property Law CPD Courses 2011-12 • The Commercialisation of IP • The Law of Trade Marks & Brands • Technology and IP • The Law of Copyright and Designs • Patent Law: History, Theory and Economy • International & Comparative Law of Trade Marks, Design and Unfair Competition

from October 2011 - March 2012

About the Institute of Brand & Innovation Law and our staff The Institute of Brand and Innovation Law at UCL Laws provides a unique forum for academics, the judiciary, policy-makers, the professions and users of the IP system to come together and exchange ideas on cutting-edge IP issues. Professor Sir Hugh Laddie QC founded the UCL Institute of Brand and Innovation Law when he joined UCL in 2007. Inspired by Sir Hugh’s vision, IBIL has become a centre of excellence for intellectual property, inspiring students of all levels and raising awareness of IP issues across UCL and beyond. IBIL has organised a series of keynote IP seminars, attracting speakers from around the world, including Lord Hoffmann, Lord Justice Jackson, Mr Justice Kitchin, Mr Justice Arnold, Judge Rader, Professor Jan Brinkhof, Professor J Thomas McCarthy, counsel from Amazon, AstraZeneca, Bristol Myers Squibb, GlaxoSmithKline, Google and Procter & Gamble, as well as senior representatives from the European Commission, the Intellectual Property Office and the Office of Fair Trading. Our audiences have exceeded 350 people per event from all sectors of the IP community. UCL has recently appointed the Rt Hon Sir Robin Jacob (Lord Justice Jacob) as the first holder of Sir Hugh Laddie Chair at UCL Laws, and Director of the Institute of Brand and Innovation Law. As holder of this Chair, Sir Robin will carry on the legacy and the outstanding vision of Sir Hugh Laddie and will foster the strength of UCL in London as a centre for intellectual property practice and scholarship. He will help to shape a multi-disciplinary research agenda on intellectual property, within UCL and more broadly worldwide, and will lead IBIL’s young, dynamic IP team.

The Law of Trade Marks and Brands (11 weeks) The aim of this course is to provide students with a detailed understanding of the law of trade marks in the United Kingdom and the European Union. The course will examine the system for registered marks (including the process of registration, revocation, invalidity and infringement) as well as common law marks. At the end of the course you will have: • A systematic understanding of the law of trade marks and its operation in the UK and European Union. • A critical awareness of issues and problems relating to the system for registered marks, (including the process of registration, revocation, invalidity and infringement) and also common law marks. • The ability to critically analyse and interpret relevant legislation, the relevant case law of the UK courts and the European Court of Justice and academic literature in the field. 06 October

Introduction to intellectual property and trade marks Types of intellectual property, what is a trade mark, functions of a trade mark, relationship with EU law

13 October 20 October

Passing Off I Essential elements of the action, goodwill, goodwill in indicia other than names, misrepresentation, protection for packaging, get-up and the design of goods

27 October

Registration and subject matter / Absolute Grounds for the Refusal of Registration I Definition of a trade mark, graphical representation and non-traditional marks: colour, smells, sounds

03 November

Absolute Grounds for the Refusal of Registration II Lack of distinctive character, descriptiveness, genericity, acquired distinctiveness, shape marks (distinctiveness and functionality), immoral marks, bad faith, deceptive marks

10 November

Relative Grounds for the Refusal of Registration and types of infringement Double identity, identity of marks, confusion-based infringement, similarity of marks, similarity of goods, role of earlier mark’s reputation, assessing and defining confusion (including global appreciation)

17 November

Types of Infringement (continued) - dilution Dilution, well-known marks, similarity of goods?, role of association, blurring, tarnishment, unfair advantage, lack of due cause, proof levels for dilution, conflicts with earlier rights, consent

24 November

Trade Mark Use Definition of use, meaning of ‘in the course of trade’, must there be use ‘as a trade mark’? – a review of Arsenal, Adam Opel et al, is trade mark use required for dilution?, trade mark use on the internet

01 December

Section 11 Defences Prior registered mark, own name defence, descriptive use, spare parts defence, honest practices proviso, comparative advertising

08 December

Revocation & Invalidity Revocation for non-use, mark has become generic, mark has become deceptive, second bites of the cherry and cause of action estoppel

15 December

Parallel Imports The origins of the doctrine, EEA and international exhaustion, consent to putting goods on the market in the EEA, when are goods put on the market?, repackaging, overstickering, further commercialisation of the goods, passing off and exhaustion

Passing Off II Damage and common field of activity, actions by foreign traders, inverse passing off, trade libel/injurious falsehood

This course is held on Thursday from 4 - 6pm Taught by Dr Ilanah Simon Fhima (UCL), Dr Matt Fisher (UCL), and Prof. Sir Robin Jacob (UCL) Fees: £990

The Law of Copyright and Designs (11 weeks) This course explores in detail the law of copyright and designs in the United Kingdom and the European Union in relation to subject matter such as books, films, computer software, artistic works and performances. The course will focus on issues relating to acquisition of rights and also their infringement and enforcement. At the end of the course you will have: • A systematic understanding of the law of copyright and designs in respect of various subject matter such as books, films, computer software, artistic works and performances. • A critical awareness of the issues and difficulties relating to the acquisition of copyright and design rights, as well as their infringement and enforcement. • The ability to critically analyse and interpret relevant case law, legislation and academic literature in the field. 03 October Introduction: Overview; justifications; The international & EC context Historical and Economic Background; International Conventions; Impact of EC: harmonisation directives.

10 October Subject Matter I Copyright subsistence; Material form; Copyright works; Literary; Dramatic; Musical; Artistic; Typographical arrangements; Films; Sound Recordings; Broadcasts. 17 October Subject Matter II Copyright subsistence; Requirements for protection; Material form; Substantiality; Copyright works; Literary; Dramatic; Musical; Artistic; Typographical arrangements; Films; Sound Recordings; Broadcasts. (Continued) 24 October Originality 31 October

Qualification, Duration, Authorship and First Ownership Qualifying Requirements; Joint authorship; Ownership; Duration regulations

07 November Infringement: Economic Rights I General Principles; Restricted Acts; Reproduction in different material form; Proof of copying; Substantiality. 14 November Infringement: Economic Rights II Idea/expression dichotomy; Authorization & secondary liability; On whether use of peer-to-peer software is an infringement. (Continued) 21 November

Defences Temporary copies; Fair Dealing Exceptions: Research and Private Study; Criticism and Review; Reporting Current Events; Education; Libraries; Public Interest. Human Rights Act 1998 - freedom of expression?

28 November Moral Rights Overview; Right of paternity; Right of Integrity; Right to object to False Attribution. 05 December Designs Industrial designs;UK Unregistered design rights; Community unregistered design rights; Copyright protection. 12 December Designs Industrial designs; UK Registered design rights; Community Registered design rights.

This course is held on Mondays from 12 - 2pm Taught by Dr Matt Fisher (UCL) Fees: £990

Commercialisation of Intellectual Property Law (11 weeks) This course explores the application of intellectual property law in the commercial environment, including licensing, joint ventures and franchising. At the end of the course you will be enabled to demonstrate the following: • A systematic understanding of the various mechanisms for the commercialisation of intellectual property rights, including licencing, joint ventures and franchising. • A critical awareness of the legal, structural and commercial difficulties arising from the commercialisation of intellectual property rights. • The ability to critically analyse and interpret the relevant legislation, the case law and legal documentation as well as academic literature in the field. 9 January

Introduction to IP Law Patents, Trade Marks, Copyrights, Designs, Plant varieties, Confidential information, Differences between authorship, ownership and the right to exploit. Commissioned works. Dealings generally - assignments, different types of licenses (sole and exclusive, oral and written, express and implied), Termination

Dealings in Copyrights: Licensing, franchising, merchandising, photo, architects, films, categories of industry set out in Copinger

16 January

Dealings in Trade Marks Difference between registered and unregistered rights. Registered users. Quality Control. Trusts. Franchising. Merchandising. Right to sue.

23 January

Dealings with Patents Licences and assignments. Agreements to assign. Oral and written licences/assignments. Defining rights. Compulsory licensing. International aspects (TRIPs & Doha Declaration). Right to sue. Licences of rights. Registration of assignments/licences. Assignee/Licensee estoppel. Patent Pooling. Standard Setting, Patent ambushes and FRAND. Crown use. Employees’ statutory compensation rights. Dealings in Plant varieties.

30 January

Dealings in Know How and trade secrets Nature of the rights, express and implied creation of rights, relative secrecy, licences and assignments. Oral and written licences/assignments. Defining rights. Right to sue. Employees’ rights. Restrictions on employees during the post employment. Unreasonable restraint of trade. Whistleblowing.

06 February

Dealings in Registered and unregistered designs

13 February

Software Software licensing, shrink wrap, dealing with software.

20 February

Due Diligence, Corporate Transactions, Audits IP due diligence in corporate transactions, IP issues in corporate transactions, IP audits.

27 February

The Internet and IP dealings Including domain name disputes, website design/hosting.

05 March

Antitrust and IP dealings UK, EU and US, EU free movement issues.

12 March

IP valuation and securitization

29 March

Protecting value Enforcing rights, litigation (interlocutory, full trial, Anton Piller and Mareva), damages and accounts of profits, arbitration (choice of law, choice of forum, enforcement of awards, arbitrable disputes), mediation, ICANN Settlement agreements.

This course is held on Mondays from 12 - 2pm Taught by Prof. David Llewellyn (KCL), Dr Christopher Stothers (UCL / Arnold & Porter), John Hull (UCL / Memery Crystal LLP), Prof. Sir Robin Jacob (UCL) Fees: £990

Technology and Intellectual Property Law (11 weeks) This course aims to provide students with a detailed understanding of patent law and practice in the UK, and also covers select aspects of trade secrecy law where appropriate. The course examines the system for the registration of a UK patent, dealing with issues of procedure, patentability and entitlement as well as issues of infringement, defences and the determination of patent scope. By the end of this course you will have: • A detailed understanding of the application of intellectual property laws to emerging technologies. • A critical awareness of the problems raised by emerging technologies for intellectual property law, and potential solutions. • The ability to critically analyse and interpret all relevant legislation, the relevant case law of the UK courts and the decisions of the Boards of Appeal of the European Patent Office, and academic literature in the field. 12 January Introduction Aims and scope of the course. A brief history of the patent system and consideration of some of the theories advanced to justify its existence. Sources of law and an introduction to the main players in the system. 19 January Patenting process & strategy Patent documentation and process of obtaining a patent. Entitlement and employee inventions. Strategic considerations, portfoilio building. 26 January Novelty State of the art. Enabling disclosure. New uses of known things 2 February Inventive step & sufficiency Skilled addressee - who they are and what they know. Inventive step in the UK. The EPO’s problem & solution approach. Sufficiency and support.

09 February

Patentable subject matter I Excluded subject-matter. Software & business method inventions

16 February

Patentable subject matter II Biotechnological & medical inventions. Morality. Industrial application.

23 February

Patent infringement I Construction

01 March

Patent infringement II Infringing acts & exceptions

08 March 15 March

Enforcement, litigation & licensing Strategic considerations: standing; declarations of non-infringement; threats; revocation. Forum. Remedies. Licences. SPCs. Confidential information Overview. Elements of the Action. Third parties; strangers, employees. Springboard doctrine. Defences. Remedies

22 March Review This course is held on Thursdays from 4-6pm Taught by Dr Matt Fisher (UCL) and Prof. Sir Robin Jacob (UCL) Fees: £990

Patent Law: History, Theory and Economy (11 weeks) The course examines the historical, theoretical and economic underpinnings of the modern patent grant. Its aim is not to teach you about the nuts and bolts of the modern patent system. It will not provide instruction about the details of the patent process, or the rules and laws by which a modern patent is judged. Its aim is not this narrow. Instead, the course aims to provide an understanding of the great events and issues of policy that have contributed to mould the modern system into the shape that we see today. It is concerned with the macro features of the system, the forces that drive it and the justifications that underpin it, rather than the micro Contents (not necessarily in week order) Introduction: What is a Patent? • The patent system today - general shape of the law: novelty, inventive step, utility etc. • Exclusionary function of the patent – brief intro to infringement in the UK and U.S.: each providing different approaches to the same issue. • The pressures of internationalisation – the PCT, EPC and TRIPs effect • Rationale for an historical analysis

Introduction to the Theory & Economics of Intellectual Property and the Patent System • Economic Theory of Property Rights – The Fundamentals • Supply & Demand • An Introduction to the Law and Economics of IP • The Economic Impact of Patents • Economics of Monopoly • The Patent Monopoly

Setting the Scene: Pre-history & early Patent Custom. • Statute of Venice • Early English Patent Custom • German mining grants • Guild systems • Elizabethan Patent Custom I • From inception… • … to the darker side of monopoly • The darker side of monopoly – reports of the Commons and Lords discussions on the problems of the Elizabethan Custom • Odious Monopolies • Coke and his influence on the Patent Custom • Darcy v Allen – The Case of Monopolies • James I – Book of Bounty • Statute of Monopolies & Coke’s Commentaries

The Patent Controversy in Mid-nineteenth Century England • The patent after the Statute of Monopolies • The growth of the Specification • Patents in the 19th Century – Problems with the system • The Patent Controversy • Select Committees on Patents • Robert Andrew Macfie, and the Parliamentary Consideration of Patents

The U.S.: from colonisation to constitution and beyond • Early State Practice following Colonisation • Problems with State Patents • The Constitution • Early U.S. Practice • Claim Theories • The Doctrine of Equivalents – Formation and Reinvigoration • The Court of Appeals for the Federal Circuit

Patents & Economists: Economic Appreciation of the Patent System • Why Economics? • Early Approaches to the Economic Theory • Understanding Innovation • Patents within Society • The Patent Monopoly • Managing the Monopoly

Post-Classical Theories of Patent Protection • Patents as Prospects; • Races to Invent and Other Theories; • Alternatives to Patents.

Patents and Development This course is held on Fridays from 4 - 6pm from Friday 7 October Taught by Dr Matt Fisher (UCL) Fees: £990

International and Comparative Law of Trade Marks, Designs, and Unfair Competition (22 weeks) The course examines the laws of trade marks and unfair competition in at least the UK, USA and EU, as well as the many international aspects. Looking at “hot topics” in the area, it compares and contrasts the ways in which different jurisdictions approach the hard questions concerning brands (in the widest sense) and the public interest. Additionally, the course looks at the vexed issues in the law covering designs. 07 October

Introduction and Functions of Trade Marks Historical aspects, economic function of trade marks, introduction to the quality guarantee and advertising functions.

14 October

International systems & Introduction to Unfair Competition International law as it applies to trade marks, Paris Convention, Madrid Agreement, TRIPs Agreement, key themes in unfair competition

21 October

Passing Off I Elements of the action: goodwill, misrepresentation, damage

28 October

Passing Off II Extending the reach of passing off: extended passing off after the Advocaat case, foreign goodwill, prospects for a general tort of unfair competition

04 November

US Unfair Competition: Confusion Introduction to the Lanham Act, overview of §43, development of the confusion action in the US, types of confusion, test for confusion

11 November

US Unfair Competition: Misappropriation Justifying a misappropriation action, the INS case, the response to an action for ‘reaping without sowing’, preemption and the overlap with other IP rights, contemporary cases on misappropriation

18 November

US Unfair Competition: Dilution Meaning of dilution, Schechter’s article, the Federal Trademark Dilution Act 1995 and its problems, the response: the Trademark Dilution Revision Act 2006, elements of today’s dilution action in the US

25 November

French Unfair Competition History of the action, its place in the French Civil Code, proving concurrence déloyale, parasitism

02 December

German Unfair Competition History of the action, introduction to the UWG, reform of the UWG, overview of activities actionable under the revised UWG (including confusion, misappropriation of reputation and slavish imitation)

09 December

Europe: Registered Trade Marks I. Absolute Grounds Graphic representation and non-traditional marks, distinctiveness, descriptiveness, generic marks, acquired distinctiveness, functionality

16 December

Europe: Registered Trade Marks II. Relative Grounds and Scope of Protection Double identity, confusion-based infringement, dilution and unfair advantage

13 January

Europe: Registered Trade Marks III Infringement Trade mark use issues, making sense of the conflicting Court of Justice case law: Arsenal, Adam Opel, O2 and Google, trade mark use on the internet

20 January

Europe: Registered Trade Marks IV, Defences Revocation and Invalidity Own name defence, descriptive use, the honest practices provisio, revocation for non-use or genericity, invalidity

27 January

US: Registered Trade Marks I Registrability; The use requirement, non-descriptive marks and the Abercrombie test, non- traditional marks, trade dress, functionality

03 February

US: Registered Trade Marks II Scope of protection, infringement & defences. The test for confusion, types of confusion (including post-sale and initial interest confusion), the fair use defence, infringement on the internet

10 February

Special Topics: Trade Marks and Freedom of Speech – Parody The meaning of parody and its place in free discourse, introduction to free speech protection in the EU and US, identifying the conflicts with trade marks, how well have the courts and legislators balanced free speech and trade marks?

17 February

Special Topics: Trade Marks and Freedom of Speech – Comparative Advertising What is comparative advertising?, benefits of comparative advertising for traders and consumers, regulation of comparative advertising in Europe, regulation of comparative advertising in the US

24 February

Trade Mark/Design Interface Identifying the overlaps between design protection and trade mark protection – new strategies for protecting product features, protection of designs in Europe and the UK: registered and unregistered rights, US design patents

02 March

Parallel Importation I: US The legislative framework, territoriality and the presumption against parallel importation, the common origin doctrine, the material different in quality rule

09 March

Parallel Importation II: EU European law and the free movement of goods: the role of parallel importation, exhaustion of rights and the differential treatment of goods from the EEA and those from elsewhere, repackaging, other legitimate reasons to oppose the resale of goods

16 March

Geographical Indications Should geographical indications be protected? Protecting geographical terms though registered trade marks and unfair competition, international protection, the EU regime protecting geographical indications

This course is held on Fridays from 11-1pm Teaching on Dr Ilanah Simon Fhima (UCL), and Dr Matt Fisher (UCL) Fees: £1750

About the Teachers: THE RT HON LORD JUSTICE JACOB, Sir Hugh Laddie Chair in Intellectual Property Law and Director of the Institute of Brand and Innovation Law. Sir Robin read Natural Sciences at Cambridge, then read for the Bar and took an LLB from the LSE. He practiced at the Intellectual Property Bar from 1967. From 1976 to 1981 he was the Junior Counsel for the Comptroller of Patents and for Government departments in intellectual property. He was made a Queen’s Counsel in 1981 and served as a High Court Judge (Chancery Division) from 1993 to 2003. He was appointed a Lord Justice of Appeal in October 2003, and was in charge of the Court of Appeal’s Intellectual Property List. He is Hon. Fellow of the LSE, an Hon. Fellow of St Peter’s College, Oxford, an Hon. LLD of the University of Wolverhampton, President of the Intellectual Property Institute, Governor of the LSE, Hon. President of the UK branch of the Licensing Executive Society, Hon. President of the Association of Law Teachers and was formerly Distinguished Judicial Visitor to UCL and a member of the Advisory Board of the European Law Centre of King’s College London. He was a Governor of the Expert Witness Institute from its foundation until 2004. He was Treasurer of Gray’s Inn in 2007. He has written extensively on all forms of intellectual property. He often lectures, mainly on IP topics both in the UK and abroad. DR Matt Fisher, Co-Director and Senior Lecturer in IP Law, joined UCL in 2009. Prior to this he was a visiting lecturer (2008-09). He previously worked (as both lecturer and senior lecturer) at the University of Bristol (2002-09) where he established a reputation as an expert in the field of patent law. He has also taught, on a visiting basis, at the University of Hong Kong since 2002. Matt is particularly interested in patent law, and has developed a body of work, which is both cross-disciplinary (concerning legal, economic and historical analyses of the patent system) and comparative (examining international perspectives on patent law, particularly with respect to Germany, the US, Japan and the European Patent Office). Matt’s articles have attracted international attention and his first book, Fundamentals of Patent Law: Interpretation and Scope of Protection (Hart, 2007), has been very wellreceived, winning the inaugural Inner Temple Young Author’s Book Prize. Dr Ilanah Simon Fhima, Co-Director and Lecturer in IP Law, joined UCL in September 2007. Ilanah completed her PhD as a Herchel Smith Research Scholar at the Intellectual Property Research Institute of Queen Mary University of London, during which time she also taught at UCL and Kings College, London. More recently, she was a lecturer at Brunel University (2006-07) and an invited researcher at the Institute of Intellectual Property Law, Tokyo. Ilanah serves on the editorial board of the European Intellectual Property Review. She has been deputy editor of the European Trade Mark Reports, and group leader on the European section of the International Trade Mark Association’s Well Known Marks and Dilution Committee. She co-founded and was previously a contributor to the IPKat intellectual property weblog. Ilanah speaks regularly and presents her research at international conferences, and has conducted judicial training on intellectual property in Israel and Croatia. She has written on all areas of intellectual property and has particular interests in comparative trade mark law and the influence of European law on intellectual property. Her most recent publication is ‘Dilution by Blurring: a Conceptual Roadmap’ [2010] IPQ 44. Her monograph on trade mark dilution, will published by OUP in November 2011. Veronica Barresi, Co-Director and Research Fellow in IP Law. She holds an LLM in European Law from the University of London (UCL) and practised in the Intellectual Property group at White & Case LLP for five years before joining UCL. Her practice mainly focused on trade mark prosecution, management and infringement matters and advertising regulation. She is dual-qualified in the UK and Italy. Veronica’s main research interest lies in the process of European harmonisation of trade mark law. She also has an interest in the judicial protection of Intellectual Property rights. Dr Daniel Alexander QC, Visiting Professor in IP Law, is a barrister at 8 New Square Chambers. His practice area covers litigation of intellectual property cases, including IT and media/entertainment cases, competition, EC, commercial and administrative law. He also has experience of international and EC cases include multi-jurisdictional IP issues, private international law, and the international arbitration of IP and media disputes. John Hull, Visiting Lecturer in IP Law, is a Partner at Memery Crystal LLP. He is a graduate of the University of Warwick and the LSE. He is also Visiting Professorial Fellow at the Queen Mary IP Research Institute and visiting lecturer at the IP Academy in Singapore. His practice covers both contentious and non-contentious intellectual property. He has a particular interest in the law relating to commercial secrecy, privacy, data privacy

and freedom of information and in the commercial exploitation of IP. He also practices in the field of public law and has represented mainly universities in over 20 judicial review cases in recent years. He has published widely. He is the author of “Commercial Secrecy: Law and Practice”; co-author of the “Ideas and Information” section of Butterworths Education Law Handbook and many articles and reviews in academic and professional journals. Dr Christopher Stothers, Visiting Lecturer in IP and Competition Law, is Counsel with Arnold & Porter (UK) LLP in London, in the intellectual property litigation group. He previously taught at both Oxford and Cambridge, where he completed his PhD, and has published widely. His research spans intellectual property law (especially patents and trade marks), competition law, EC law and their interface. He has a particular interest in parallel trade and the essential facilities doctrine. His book, Parallel Trade in Europe: Intellectual Property, Competition and Regulatory Law, was published by Hart in 2007.

Teaching method The teaching method is by two-hour seminars, conducted as part lecture and part discussion. Students will therefore be required to read material in advance and come to seminars prepared to participate in class discussion. Please note that while we have included our anticipated schedule there may be some changes. We will notifiy participants of any changes in advance.

Fees and what’s included The fees for the UCL IP courses are £990 for an 11 week course and £1750 for a 22 week course. These fees include: • tuition at the lectures stated in the brochure • access to online course materials • a UCL email account • a UCL continuing education student ID card • access to the Institute of Advanced Legal Studies library Examination: UCL Continuing Education students on the IP courses DO NOT sit examinations or other assessments. Tutorials are not open to continuing education students. At the end of the course you will receive a Certificate of Attendance which details the subject areas covered in the course.

Other courses Other courses available at UCL which might be of interest to IP lawyers are: • EC Competition Law (October - March) • US and EC Antitrust Law (October - March) • The Principles of Media Law (October - December) • Media Law: Libel and Privacy (October - December) See other courses at:

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Commercialisation of IP (£990) The Law of Trade Marks and Brands (£990) Technology and Intellectual Property Law (£990) The Law of Copyright and Designs (£990) Patent Law: History, Theory and Economy (£990) Int & Comparative Law of Trade Marks, Designs and Unfair Competition (£1750)

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