The Cost of Not Having Patent Protection

By Fatih Ozluturk
October 21, 2014

How many patent applications has your company filed today?

Facebook filed at least one patent application today, Oracle filed about 3, Google filed about 5, Microsoft and Apple filed more than 8 each, IBM filed nearly 30 patent applications just today. These are the recent averages per workday anyways. Currently Facebook has more than 450 pending applications, Google has about 3500, Oracle has 3700, Apple has 7000, and Microsoft has 30,000 pending applications. I picked these names to come up with the averages because these names have software heavy portfolios, the type of patents that have been feeling some pressure from both the anti-patent circles and from the Supreme Court – as has been amply covered by IPWatchdog.

If you are a typical new economy small tech company with software and internet centric technology or products, the number of patent applications your company filed today is probably zero. Of course filing and prosecuting patent applications is not cheap and that’s part of the explanation. However it is worth noting that most of the successful companies with software-heavy products, including those in the list above, have been filing patent applications from their very early days. An excellent recent article at IPWatchdog revealed that even an overtly anti-patent company such as Twitter has been indeed filing patent applications from its very early days and have been accumulating a large portfolio through further acquisitions. The fact is that patent protection is a hallmark of a successful innovative business, whether the product is software or not. So, it is startling to see the difference in attitude of the small innovators and the already successful large innovators when it comes to protecting their inventions.

Let me share a perspective that’s based on being an inventor and an IP manager on software as well as ‘hard’ technologies for two decades, and having the benefit of meeting hundreds of tech startups in the workshops I give in the NYC accelerators and co-working spaces. Large tech companies are no different than politicians that dispense populist messages for the masses, but in reality follow policies that benefit only the connected few. An utterly uninformed opinion that I hear all too often from software developers is that patents stifle innovation and keeps them from sharing code freely. The fact is, if you have a patent on a software technology, you can still share it with others, and they can share theirs with you. The mechanism to do this is no different than the current licenses that you agree to when you share and use a software library. The difference is that the innovator now has control over the invention and can benefit from it financially when that innovation helps others make money by using it. Innovators have to arm themselves with a good understanding of what patent protection means for them. Without that understanding, it is a completely asymmetric warfare in the dog-eat-dog world of business. There is a very good reason Google keeps telling small innovators that patents stifle innovation while they employ a patent department that’s probably larger than your entire company, and they spend tens of millions of dollars a year to protect their own inventions.

Here is an excellent example of how small innovative companies benefit from patent protection and use their IP as business assets. An innovative startup company that’s a graduate of Entrepreneurs Roundtable Accelerator in NYC recently had a very successful exit when it was acquired by a larger industry player before they even raised an equity round. When the company was putting together their first demo on their software product three years ago, on my urging they filed a patent application and then followed that up with additional applications. When the company was in buyout talks a couple of years later, it turned out that there were two other competitors with similar products and pretty much similar price points, that the acquirer was looking at. Because of the small but growing IP position this startup had, it beat out the competitors and was acquired at a very good valuation. In the founders’ own estimate, the IP position allowed them to extract 25%-30% higher valuation, and just as importantly, closed the deal, and closed it in a shorter amount of time. What seemed like a large expense of filing and prosecuting a handful of applications earlier turned out to be an excellent investment and paid off for the founders.

Let me also describe a situation that’s known to more than a few inventors. You ate macaroni and cheese everyday and wore old sandals for two years while developing a transformative software technology. Kudos!. Typical of software inventions, most of the value is in the product concept; but you also put in a lot of effort to make sure the code you wrote is robust and free of bugs, works across platforms, secure, and is production quality. Real stuff of sweat and tears. You show it to others, maybe even companies such as Google or Microsoft, hoping they would be interested enough to buy it. Then you see a large software company develop and market the exact same thing a few months later, maybe even after you showed it to them. What now? Don’t count on NDAs, as any lawyer will tell you. It is extremely rare that an NDA can be successfully litigated on, even if you had the resources. You are out of luck. Go back to eating macaroni and cheese and come up with another idea perhaps? The only thing that can possibly level the playing field and keep everyone honest is for the inventor to protect the technology as soon as possible with patent applications.

Here is another example of how a defensible IP position is helping a startup company I know closely, although the circumstances are very different than the earlier example. A startup I have been advising on IP matters has a software solution in the 3D printing space. The company developed a very innovative technology and have been diligent in protecting it in a number of patent applications. More recently, they have been discussing their technology with a large industry player and disclosing how their technology works, in hope of cooperation or possible acquisition. Discussions went on for six months and finally came to a close when the large player suddenly introduced a product that is substantially the same although they had no such technology at the beginning of the discussions. There is no way of knowing, short of litigation and discovery, who knew what and when, and whether an NDA was violated. If not for the patent position the startup has been building, they would have nothing to show for their two years of innovating and building a product. However, now that they have a defensible IP position, they get to play another round and possibly benefit from their innovations by working out a patent licensing agreement. Time will tell, but the patent protection may work exactly the way it is intended in this instance by keeping the small innovator from being steamrolled by a large industry player.

As it has been covered at IPWatchdog and other forums, the changes to the patent law and legislature that’s been happening under the umbrella of ‘patent reform’ has, perhaps unintentionally and perhaps not, put small innovative companies and inventors at a further disadvantage compared to the large industry players. There is a reason the President visits Mountain View every chance he gets, there is a reason why Supreme Court has recently wreaked havoc on owners of software patents, and there is a reason why an ex Google executive is nominated to run the US Patent Office. It is not to help the small inventors and small innovators. It is the opposite. So, when I hear small companies say they believe patents stifle innovation, I say ignorance stifles innovation. This is especially true for startups and small innovators lacking the sophisticated know-how on IP protection and the understanding of how the recent changes affect it.

There are many other examples and scenarios I have seen where patents have been a key business asset for a startup. I can’t tell you how many times I heard an inventor say “I wish I had patented it”; after meeting hundreds of inventors, I assure you I never heard anyone say “I wish I had not patented it”.

So, how many patent applications should your company file tomorrow?

The Author

Fatih Ozluturk

Fatih Ozluturk is a Managing Principal of the Soryn IP Group and Soryn Capital. He is an inventor with over 200 issued patents and nearly 200 pending patent applications. His inventions have been licensed to every major cellular OEM. He teaches IP workshops in the NYC startup community. He is also the author of the popular book "Patents. Simplified." Fatih has his PhD from the University of Massachusetts, and his MBA from the Wharton School.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 37 Comments comments.

  1. Rajiv Prasad October 22, 2014 7:22 am

    I like it!

  2. Benny October 22, 2014 10:27 am

    ” IBM filed nearly 30 patent applications just today…” how does an engineer at such a company find out if his latest idea hasn’t already been patented by the company? Can IBM reasonably keep track of infringers or potential licencees?

  3. Fatih Ozluturk October 22, 2014 11:02 am

    That’s a question I am asked frequently so it may be worth what I know about this. In most large firms that file many patent applications, there may be an internal review of the inventions before sending them to patent attorneys for drafting of applications. This is a go/no-go type review done by a department head or a senior researcher, perhaps. But typically a patent search is not conducted. Therefore there is never a certainty that the invention had not been patented before. There are two main reasons for operating in this manner, one is that doing a search is costly and takes time, and also you have to declare anything that comes up in your search that’s relevant to the USPTO if you decide to file a patent applications. And the second reason is that lot of research departments are working on fairly new concepts and have some level of confidence that they are not reinvention the wheel, in general. This has been my experience.

  4. Anon October 22, 2014 12:20 pm

    It may also be worth noting that there is no legal requirement (for normal patent applications) to perform ANY search of ANY kind.

    Is attempting to obtain a patent with such “zero-search” wise? I would say not.
    Is it done? Most definitely.
    Why is such done? In addition to what Mr. Ozluturk indicates, this is a decision that ENTIRELY belongs to the client. As an advocate to the client, I can ONLY provide the pros and cons and offer my advice, but I must follow the directions of the client on this matter (or refuse to continue to represent the client, but even this has strings attached).

    The attempt to force applicants to perform searches was one of the aspects that was deemed beyond the legal authority of the Office, as such is indeed a step of examination that the Office is responsible for. See Tafas

  5. Benny October 22, 2014 2:02 pm

    Thanks for the answers, but what I actually meant to ask was, how does a company with such a large patent portfolio ensure that they don’t file an application for an invention which was previously described in another of their OWN applications or patents? I have actually seen this happen in one international company with design teams in different countries. I wasn’t suprised, because I know that very few engineers read patents – even their own companys’ patents – and I did wonder if they could be accused of inequitable conduct for not disclosing their own patent as prior art

  6. Curious October 22, 2014 2:44 pm

    But typically a patent search is not conducted.
    From my understanding, at the company in question, there is always a search performed.

    how does a company with such a large patent portfolio ensure that they don’t file an application for an invention which was previously described in another of their OWN applications or patents.
    You cannot “ensure” most things in life. However, in the larger companies, there are special patent committees that review the disclosures and they do a pretty good job of identifying ones they’ve seen before.

    I did wonder if they could be accused of inequitable conduct for not disclosing their own patent as prior art
    From my reading, Rule 56 attaches to individuals — not companies.

  7. Anon October 22, 2014 8:19 pm

    Curious,

    I would disagree with your reading. The tone of the rule (inclusive, with “each” and “every”), coupled with the AIA allowance of pure filing by a juristic entity – with the substitute statement carrying the penalty of law of 18 USC 1001 – point in the opposite direction. The entire background as to why Congress enacted the section of the AIA allowing juristic entities to file was one of mere convenience – not one that would eliminate the duty of candor.

    Further, since juristic entities must use a registered agent, the agent(s) are likewise still owe a duty to the Office (as well as a duty to the client). I know that personally our firm has had to deal with understanding patent families of clients – with applications that were being processed by other firms – and we did take the time to track prosecution on all related items, in part to comply with our duty to the Office as mentioned herein.

  8. Curious October 23, 2014 9:32 am

    I would disagree with your reading.

    37 CFR 1.56(a): “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”

    37 CFR 1.56(c): “(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are: (1) Each inventor named in the application; (2) Each attorney or agent who prepares or prosecutes the application; and (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.”

    When a large company files a lot of applications, it is extremely unlike that one person can be “substantively involved in the preparation or prosecution of [all] of the application[s].” Although some have misinterpreted them to require a higher standard than what is actually required (see e.g., 35 USC 112), there is a lot of reasonableness inherent in both the Patent Rules and Patent Code. I stand by my original statement that Rule 56 does not attach to companies — just to individuals.

  9. Anon October 23, 2014 10:16 am

    Curious – you should be aware that a juristic person is also referred to as “an individual” – do not be confused by thinking that “individual” excludes such. It does not.

    Also – 37 CFR 1.56(c)(3), in pertinent part, “Every other person…associated with…with anyone…” – these are GLOBAL style terms.

    Your attention to “any one person knowing all” misses the aspect of what it means to be a juristic person. You seem to have no working familiarity with this legal term.

    Finally, you seem to have missed the comment I provided as to the changes in the AIA. Your view would negate the duty of candor for large corporations, and nowhere is such intent evident. You need more to support your view than a mere feeling and forced reading of “individual” that ignores the fact that a juristic person is both an individual and a “plural” entity.

  10. Gene Quinn October 23, 2014 10:30 am

    Curious-

    You say: “From my understanding, at the company in question, there is always a search performed.”

    You are quite lucky to work for a company that always does a search. Companies rarely do searches prior to filing patent applications.

    You say: “You cannot “ensure” most things in life. However, in the larger companies, there are special patent committees that review the disclosures and they do a pretty good job of identifying ones they’ve seen before.”

    Again, you are very lucky if you work for a company that always gets it correct, but it seems your corporate experience is quite unusual. It is well known in the industry that what you say here is not the case. Most companies don’t even know what patents they own, let alone what they have applied for or what prior art is known by their people. Furthermore, committees are notorious for missing things and pursuing innovations that fail at the expense of innovations that later become huge.

    You say: “From my reading, Rule 56 attaches to individuals — not companies.”

    You are correct to say this, but it still seems you have a misunderstanding because the comment that provoked your response is also correct. People have a duty of candor at the Patent Office, but that duty attaches to everyone who is substantively involved in the patent process. So if prior art is known and not disclosed there would be a violation of Rule 56. You cannot say that the company applied for the patent so there is no inequitable conduct because only people knew.

    -Gene

  11. Benny October 23, 2014 10:53 am

    “Most companies don’t even know what patents they own, let alone what they have applied for ”
    I find that almost mind boggling. In such cases, enforcement would be virtually impossible – you could be holding a competitors product in your hand, entirely unaware that it is infringing one of your own patents.

    In our company, if anyone has a patentable idea, it’s my job to do a prior art search to see if that exact (emphasis on exact) invention has been patented before. If I find such a patent or application, we conclude that drafting and filing an application would be a waste of money, so we don’t do it (or we rethink our ideas). After all an hour of my time costs less than the filing fee.

  12. Curious October 23, 2014 10:59 am

    you should be aware that a juristic person is also referred to as “an individual” – do not be confused by thinking that “individual” excludes such. It does not.
    Whether an “individual” or “person” includes a corporation is done on a case by case basis, and the general rule is that is does not. A company is not an inventor. A company is not an attorney or agent who prepares the application. A company is not a person involved in the preparation or prosecution of an application.

    ignores the fact that a juristic person is both an individual and a “plural” entity
    Your “fact” is a fact only in the specific factual context in which the decision is rendered.

    BTW — I’m trusting Black’s Law Dictionary over you.

  13. Anon October 23, 2014 11:14 am

    Curious,

    Where in Black’s law dictionary are you referring to?

    (noting that the phrase “juristic person” is “singular,” I still think that you are mistaking some notion of singularity that somehow excludes a “plurality” nature of a corporation.

    And (again) – you ignore the AIA aspect of corporate filing (in the sense of a juristic person).

    Please do not cling to a belief without thinking – without taking these points offered to you into consideration, without explicating just why you remain steadfast in your view.

  14. Curious October 23, 2014 11:41 am

    Most companies don’t even know what patents they own, let alone what they have applied for or what prior art is known by their people.
    Most companies, people, and governments aren’t aware of all assets they own either.

    You cannot say that the company applied for the patent so there is no inequitable conduct because only people knew.
    I never said that. Whether the company applied for the patent or not is immaterial to my arguments.

    So if prior art is known and not disclosed there would be a violation of Rule 56
    It has to be known by one of the individuals described in the rule. Just because an individual has some relationship with the “patent process” of the company doesn’t mean he/she falls within the meaning of “individual” as set forth in Rule 56.

    Consider the hypothetical of patent attorney G for company A in Japan having intimate knowledge of a piece of Japanese prior art PA that reads on the claims in application X written by patent attorney H in London for company A, with two inventors C, D from Scotland. Attorney G doesn’t read/write English and H, C, and D don’t read/write Japanese. Neither H, C, nor D have knowledge of the Japanese prior art PA, and patent attorney G has no knowledge of application X. If the reference has not been cited has inequitable conduct been committed? If so, who committed it? I suggest, as a good read, the Federal Circuit case of Exergen Corp v. Wal Mart.

  15. Curious October 23, 2014 11:51 am

    you ignore the AIA aspect of corporate filing
    You ignore the plain language of 37 CFR 1.56(c). Just because a “juristic entity” can be an applicant doesn’t make them an inventor. Absent from subsection (c) is a mention of “applicant.”

    Please do not cling to a belief without thinking – without taking these points offered to you into consideration, without explicating just why you remain steadfast in your view.
    I took your points into consideration and I rejected them based upon my own reading of the rule — further bolstered by my research into the meaning of “individual” and “person” — still further bolstered by my reading of Exergen v. Wal Mart. Don’t accuse me of not thinking just because I disagree with you. You may be accurate when referring to MM, 6, or NH, but it doesn’t apply to me.

  16. Anon October 23, 2014 12:39 pm

    Re-read my post at 10 – it is not absent as you maintain.

  17. J N Gross October 23, 2014 1:14 pm

    Great points Fatih!

    I’ve been around long enough to remember all the “small” peripheral IC companies watch helplessly as Intel ate their lunch and slowly incorporated every neat feature these little guys had into yet another Intel processor or bridge chip…. none of these guys were smart enough to put up even a small barrier to entry. The recent “Twitpic” demise is equally telling – those guys had no IP to stop Twitter from cannibalizing their entire business…. Facebook does the same thing; both are in the same position as Intel, except in the SW space.

  18. Benny October 23, 2014 1:47 pm

    Curious at 15. – I wouldn’t see a case of deliberate wrongdoing in the example you gave, but having your own patent cited against you as prior art is going to make you look mighty foolish

  19. Anon October 23, 2014 2:21 pm

    Curious,

    Thank you for the source of Exergen v. Wal Mart, a copy of which can be located at http://www.cafc.uscourts.gov/images/stories/opinions-orders/06-1491.pdf .

    I see where you put your trust at pages 25-26, but that trust is mistaken, as the court makes an error by citing to the MPEP directly, which does not have the force of law.

  20. Curious October 24, 2014 12:25 pm

    but having your own patent cited against you as prior art is going to make you look mighty foolish
    I’ve seen it happen many times — and doesn’t phase me in the slightest.

  21. Curious October 24, 2014 12:29 pm

    I see where you put your trust at pages 25-26, but that trust is mistaken, as the court makes an error by citing to the MPEP directly, which does not have the force of law.
    I think page 27 also applies. Regardless — it is a Federal Circuit case, which counts for something.

    Re-read my post at 10 – it is not absent as you maintain.
    Rule 56 isn’t chopped up like you did in post 10.

    Also – 37 CFR 1.56(c)(3), in pertinent part, “Every other person…associated with…with anyone…” – these are GLOBAL style terms.

    What is really reads is: (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.”
    The “who is substantively involved in the preparation or prosecution of the application” negates the “GLOBAL” aspect of “Every other person.”

  22. Anon October 24, 2014 12:48 pm

    Curious,

    We will continue to disagree here.

    Just because you rest on a Federal Circuit case does not mean that you are correct under the law. You still need to show the ‘vlaidity’ of the legal line of thought – and you cannot (or at least, you have not). The point I make instantly distinguishes the case and moots your attempted take-away. Don’t close your eyes to the fact that the MPEP does not have the force of law – even if a panel of the CAFC makes that mistake (it is still a mistake, and further courts – with this notice – will not repeat that mistake).

    As to “chopping” Rule 56 and the non-absence, you have not addressed the rest of my comment as to the nature of a juristic person (i.e. singular) fitting into the phrase. Further, there is no negation of the global aspect because of your focus on the singular-ness of person or of the word “who.” I would recommend that you pick up some statutory construction material and note the singular/plural connotations that such provide.

  23. Curious October 24, 2014 5:42 pm

    you have not addressed the rest of my comment as to the nature of a juristic person (i.e. singular) fitting into the phrase
    I have. The AIA allows a juristic person to be an applicant. That doesn’t change Rule 56 since “applicant” isn’t one of the individuals listed in subsection (c).

    Your analysis also doesn’t contemplate that there has to be a showing of a “specific intent to deceive the PTO” before inequitable conduct can be proven.

    because of your focus on the singular-ness of person or of the word “who.”
    I’m not focusing on the “singular-ness” of any phrase. My argument is based upon “who is substantively involved in the preparation or prosecution of the application” requires an actual actor — a human being. Moreover, nothing within Rule 56 gives rise to an inference that the individual means anything other than a human being. That an individual may be considered, by law, a corporation is an exception to the rule.

  24. Anon October 24, 2014 6:04 pm

    You are running in a circle Curious – your “who” is a human being because that is what you need it to be (and you ahve provided nothing else, but a bad case cite to show otherwise). The point of the exception is that it applies in this case – see my note about the intent of the AIA.

  25. Benny October 25, 2014 3:31 am

    Curious at 21 – are you sure you mean “phase” rather than “faze” ? Though I have only ever seen “faze ” used in the negative , i.e, “unfazed”. Having your own patent cited against you means you didn’t do your homework before dropping 15K on a patent application. In our company, that wouldn’t go down well.

  26. Curious October 26, 2014 11:55 pm

    You are running in a circle Curious
    I’m working with the plain language of Rule 56 and a Federal Circuit case and you are relying upon the “intent” of the AIA.

    As best as I can tell, the “intent” of the AIA was to allow corporations to be applications (so as to get around the mess inconvenience of non-cooperative inventors). I’m not sure how that changes the law regarding inequitable conduct. Who has unclean hands when no one attempted to deceive the USPTO?

  27. Curious October 27, 2014 12:04 am

    Having your own patent cited against you means you didn’t do your homework before dropping 15K on a patent application. In our company, that wouldn’t go down well.
    First, I have worked for several companies whose portfolios number in the thousands if not tens of thousands. NOBODY at any of those companies have knowledge of even a minor fraction of those patents. For someone to have independent developed a technology (which very well may have been described using different phraseology) from another someone in the same company is not surprising in the least.

    Second, the fact that an Examiner has cited the prior art is usually meaningless. In the first office action, I see killer prior art less than 1 times out of 20. That ratio may be closer to 1 in 30 or 1 in 40. Hence, even if the Examiner cited the client’s own patents, it is very likely that the Examiner missed something. I have seen my client’s prior art cited (I’m guessing here) probably 50-75 times over my career. I have only seen killer prior art cited once in all those times (I thought the application was dead on after reading the prior art) — but it didn’t take me long to realize that the Examiner was citing the published application against itself (got a good laugh with the client over that one).

  28. Benny October 27, 2014 3:05 am

    “NOBODY at any of those companies have knowledge of even a minor fraction of those patents”

    Almost defeats the purpose of owning the patent rights.

  29. Curious October 27, 2014 9:18 am

    Almost defeats the purpose of owning the patent rights.
    In big companies, there are usually a lot of people doing the same job — the loss of any one person isn’t going to bring down the ship.

  30. Anon October 27, 2014 9:24 am

    Curous,

    You are continuing to close your eyes to what a juristic person is.

    It is that simple.

  31. Curious October 27, 2014 11:37 am

    You are continuing to close your eyes to what a juristic person is.
    Hardly. A juristic person is an artificial person (e.g., a corporation). However, a juristic person is not a natural person, which is what the law usually refers to when the term “person” is employed.

    What you don’t address is that a juristic person does not necessary have the same rights, responsibilities, protections, protections as a natural person. The AIA gives a juristic person the right to file a patent application — however, that doesn’t attach all patent rights, responsibilities, etc. normally associated with a natural person to a juristic person.

    It is that simple.
    Then explain how you establish inequitable conduct without a bad actor (e.g., in the hypotheticals discussed above). Who has the intent to deceive?

  32. Anon October 27, 2014 12:50 pm

    Curious – that’s were you are simply wrong – the juristic person does have all of the rights and responsibilities.

    It simply would make no sense otherwise – that a corporation could hide behind the fact that they are a corporation to evade the same duty of candor that ALL persons have.

  33. Curious October 28, 2014 11:05 am

    the juristic person does have all of the rights and responsibilities.
    Case cite please.

    the same duty of candor that ALL persons have
    Not “ALL” — just some. Remember, Rule 56 doesn’t apply to everybody.

    It simply would make no sense otherwise
    No. Those people (within and outside the corporation) that do have the duty of candor still do. Nothing about being part of the corporation (or not) allows those people to hide. Nothing changes. On the other hand, your position is to permit allegations of inequitable conduct when no “bad” conduct was perpetrated.

  34. Anon October 29, 2014 8:30 am

    Now you are spouting nonsense Curious.

    I will leave you to your delusions.

    Have a good day.

  35. Curious October 29, 2014 3:59 pm

    I will leave you to your delusions.
    I’ll take that as you stating “I have no ammunition against you so I’ll dismiss you as delusional, head home with my tail between my legs, hope nobody notices.”

    If you want to talk law, let’s talk law. However, the best I got from you is that the AIA said that a corporation is a juristic entity that could apply for a patent. Sort of OK, but not really on point.

  36. Anon October 30, 2014 10:49 am

    You take that incorrectly – just as you take the very notion of juristic person incorrectly.

    You should take it instead that I will not countenance your circular reasoning any further.

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