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# 52013PC0554

**Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL amending Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters /\* COM/2013/0554 final - 2013/0268 (COD) \*/**

  

EXPLANATORY MEMORANDUM

1.           CONTEXT OF THE PROPOSAL

1.1. General Context

Council Regulation (EC) No 44/2001 on
jurisdiction and the recognition and enforcement of judgments in civil and
commercial matters (the "Brussels I Regulation") sets out rules determining
the international jurisdiction of the courts of the Member States and rules
preventing parallel proceedings before the courts of different Member States. It
also lays down rules for the recognition and enforcement of judgments of
national courts in other Member States. It covers, among other matters,
litigation in the area of intellectual property rights, including patents. On 12
December 2012, Regulation (EU) No 1215/2012 of the European Parliament and of
the Council on jurisdiction and the recognition and enforcement of judgments in
civil and commercial matters[1]
("Brussels I Regulation (recast)"), recasting Regulation (EC) No 44/2001,
was adopted. Regulation (EU) No 1215/2012 will enter into application on 10
January 2015.

In December 2012, an agreement was reached on
the so-called “patent package” – a legislative initiative consisting of
two Regulations[2]
(the "Unified Patent Regulations") and an international Agreement (the
"Unified Patent Court Agreement" or "UPC Agreement"), laying
the ground for the creation of unitary patent protection in the European Union.

The Unified Patent Regulations were adopted in
enhanced cooperation including 25 Member States (all Member States except Italy and Spain). The UPC Agreement was signed on 19 February 2013 by most Member States. Once the
Regulations apply, it will be possible to obtain a European patent with unitary
effect – a legal title ensuring uniform protection for an invention across 25
Member States – on a one-stop shop basis, providing cost advantages and
reducing administrative burdens.

Article 89(1) of the UPC Agreement provides
that the Agreement cannot enter into force prior to the entry into force of the
amendments to the Brussels I Regulation (recast) regulating the relationship
between both instruments. The aim of these amendments is twofold. First, the
amendments aim at ensuring compliance between the UPC
Agreement and Brussels I Regulation (recast), and second, at addressing the particular
issue of jurisdiction rules vis-à-vis defendants in non-European Union
States.

On 15 October 2012, the three Member States
Contracting Parties to the Treaty of 31 March 1965 concerning the establishment
and statute of a Benelux Court of Justice have signed a Protocol modifying the
said Treaty. The Benelux Court of Justice is a court common to Belgium, Luxembourg, and the Netherlands which has the task to ensure the uniform application of
rules common to the Benelux Member States concerning various matters such as
intellectual property (in particular certain types of rights relating to
trademarks, models and designs). Up to today, the Benelux Court's task consists
mainly in giving preliminary rulings on the interpretation of these rules. The
2012 Protocol, however, creates the possibility to extend the competences of
the Benelux Court of Justice to include jurisdictional competences in specific
matters which come within the scope of the Brussels I Regulation. This
possibility may be executed by a revision of the separate agreements between
the Benelux Member States on specific matters; this revision will effectively
transfer jurisdiction from the national courts to the Benelux Court of Justice.
As a result, similar to the UPC Agreement, the Protocol to the Benelux Treaty
requires an amendment to the Brussels I Regulation (recast) with the aim first,
to ensure compliance between the revised Treaty and the
Brussels I Regulation (recast), and second, to address the lack of common jurisdiction
rules vis-à-vis defendants in non-European Union States.

1.2. Grounds for and objectives of the
proposal

The present proposal aims, firstly, at
allowing the entry into force of the UPC Agreement. Art. 89(1) of the UPC
Agreement makes the entry into force of the Agreement dependent on the
amendment of Regulation (EC) No 1215/2012. In addition, the proposal aims at
ensuring compliance with the Brussels I Regulation of this Agreement as well as
the Protocol to the Benelux Treaty of 1965.

The Unified Patent Court will be a court
common to certain Member States and will be subject to the same obligations
under Union law as any national court. The Unified Patent Court will have
exclusive competence, thus replacing national courts, for the matters governed
by the UPC Agreement. The UPC Agreement regulates the internal distribution of
competences between the different divisions of the Unified Patent Court and the
enforcement of the judgments of the Unified Patent Court in the Contracting
Member States. The Benelux Court of Justice is equally a court common to
certain Member States which will have jurisdictional competence in matters to
be defined by the Contracting Member States concerned.

In order to ensure the combined and coherent
application of the above Agreement and Protocol and the
Brussels I Regulation (recast) it
is necessary to address the following issues in the Brussels I Regulation
(recast):

1.           Clarify
in the text of the Regulation that the Unified Patent Court and the Benelux
Court of Justice are ‘courts’ within the meaning of the Brussels I Regulation;

2.           Clarify
the operation of the rules on jurisdiction with respect to the Unified Patent Court and the Benelux Court of Justice insofar as defendants domiciled in
Member States are concerned. Create uniform rules for the international
jurisdiction vis-à-vis third State defendants in proceedings against
such defendants brought in the Unified Patent Court and Benelux Court of
Justice in situations where the Brussels I Regulation does not itself provide
for such rules but refers to national law;

3.           Define
the application of the rules on lis pendens and related actions in
relation to the Unified Patent Court and the Benelux Court of Justice on the
one hand and the national courts of Member States which are not Contracting
Party to the respective international agreements on the other hand. Define also
the operation of these rules during the transitional period referred to in
Article 83(1) UPC Agreement; and

4.           Clarify
the operation of the rules on recognition and enforcement in the relations
between Member States which are and Member States which are not Contracting
Parties to the respective international agreements.

Detailed explanation on the issues to be
addressed is given in point 3 below (“Legal elements of the proposal”).

2.           RESULTS OF CONSULTATIONS WITH THE
INTERESTED PARTIES AND IMPACT ASSESSMENTS

The patent package has been the subject of
extensive consultation prior to its adoption. This consultation showed broad
support not only for the creation of a unified patent but also for the
establishment of a unified jurisdictional regime. The present proposal allows
for the entry into force of the UPC Agreement, as foreseen in Art. 89(1) of
that Agreement. Since the Protocol modifying the 1965 Treaty on the Benelux
Court of Justice raises identical issues as the UPC Agreement, both amendments
should be made at the same time. Insofar as jurisdiction rules vis-à-vis third
State defendants is concerned, this matter was extensively assessed in the
Commission's impact assessment accompanying the legislative proposal amending
Regulation (EC) No 44/2001 on jurisdiction and the recognition and enforcement
of judgments in civil and commercial matters ("Brussels I")[3]. This assessment concerned the
harmonisation of jurisdiction vis-à-vis third State defendants
generally; the conclusions of that assessment are a fortiori relevant
for the limited harmonisation foreseen in this proposal.

3.           LEGAL ELEMENTS OF THE PROPOSAL

The proposed amendments to the Brussels I
Regulation (recast) are as
follows:

·
Provisions addressing the relationship between
the UPC Agreement and the Protocol to the 1965 Benelux Treaty on the one hand and
the Brussels I Regulation on the other hand;

·
Provisions completing the uniform jurisdiction
rules in relation to third State defendants in civil and commercial disputes
brought before the Unified Patent Court and the Benelux Court of Justice in
matters covered by the UPC Agreement or the Protocol to the 1965 Benelux
Treaty.

These amendments are combined in four new provisions,
Articles 71a through 71d of the Brussels I Regulation.

3.1. The explicit
inclusion of the Unified Patent Court and Benelux Court of Justice as ‘courts’
within the meaning of the Brussels I Regulation (recast)

As a result of the internal division of
competences within the Unified Patent Court a defendant could find
him/herself before a division which would not be situated in the Member State of the court designated by the rules of the Brussels I Regulation. For
instance, a Dutch defendant expecting to be sued at its domicile on the basis
of Art. 4(1) of the Brussels I Regulation (recast) may be brought before the
competent central, regional or local division which may be situated in France, Germany or the United Kingdom (or any other Member State, depending on where regional or
local divisions will be set up). This is also relevant when the defendant is
domiciled or habitually resident in a Member State which is not a Contracting
Party to the UPC Agreement (e.g. a licensee domiciled in Spain had to perform
an obligation under the license agreement in the Netherlands; proceedings are
brought before the German central division instead of the Netherlands as place
of performance of the obligation). Equally, as a result of the transfer of
competences to the Benelux Court of Justice, a defendant, including from a
non-Contracting Member State, could find him/herself before a court which would
not be situated in the Member State of the court designated by the rules of the
Brussels I Regulation. While Article 71 of the Brussels I Regulation allows
conventions on particular matters which already exist, it does not allow any
such new conventions. As a result, it is necessary to clarify that both the
Unified Patent Court and the Benelux Court of Justice are to be considered as
courts of a Member State in the sense of the Brussels I Regulation, thus
ensuring that the Regulation applies fully to the these courts.

The Brussels I
Regulation (recast) does not provide for a definition of the term "court".
It limits itself, in Article 3, to include certain specific authorities within
the concept of “court" for purposes of the operation of the Brussels I
Regulation. Recital 11 does clarify, however, that the term "court"
should be understood as including courts or tribunals common to several Member
States. Recital 11 explicitly refers to the Benelux Court of Justice when it
exercises jurisdiction in matters falling within the scope of the Brussels I
Regulation. Recital 11 clarifies that judgments given by such common courts
should be recognized and enforced in accordance with the Brussels I Regulation.
Nevertheless, a recital does not have binding nature and cannot ensure with a
sufficient degree of legal certainty compliance of the respective international
agreements with the Brussels I Regulation (recast), in particular Article 71
thereof. A specific legislative amendment is therefore necessary. This
amendment follows the approach taken for the Hungarian notary and Swedish
enforcement authority in Article 3 of the Regulation; it includes specifically
the Unified Patent Court and the Benelux Court of Justice in the concept of
"court" of the Regulation. For reasons of readability, all necessary
changes relating to the UPC and Benelux Court of Justice Agreements are
combined in four new provisions (new Articles 71a to 71d).

By clarifying that both
the Unified Patent Court and the Benelux Court of Justice should be considered
as "courts" within the meaning of the Brussels I Regulation (recast),
it will be ensured that the international jurisdiction of these courts will be
determined by the Brussels I Regulation; in particular it will be ensured that
defendants which would expect to be sued in a specific Member State on the
basis of the rules of the Brussels I Regulation may be sued before either a
division of the Unified Patent Court or before the Benelux Court of Justice which is located in another
Member State than the national courts designated on the basis of the Brussels I
Regulation. Legal certainty and predictability for defendants requires that
this change of territorial jurisdiction is set out clearly in the text of the Brussels
I Regulation.

3.2. The operation of the rules on
jurisdiction in relation to the Unified Patent Court and the Benelux Court of
Justice on the one hand and the courts of Member States which are not Contracting
Parties to the UPC Agreement or the Protocol to the 1965 Benelux Treaty on the
other hand

In order to create full
transparency on the combined and coherent application of the respective
international agreements and the Brussels I Regulation (recast), the latter should
prescribe how the jurisdiction rules of the Brussels I
Regulation (recast) apply to the Unified Patent Court and Benelux Court of
Justice, in the same way as Article 71 of the Brussels I Regulation (recast)
does for other international conventions on particular matters. Similar
clarifications are also found, for instance, in Articles 64 and 67 of the 2007
Lugano Convention on jurisdiction and the recognition and enforcement of
judgments in civil and commercial matters.

The new rule in
Article 71b, paragraph 1 thus prescribes that the Unified Patent Court and the
Benelux Court of Justice will have jurisdiction any time when a national court
of one of the respective Contracting Member States would have jurisdiction
based on the rules of the Brussels I Regulation. A contrario, the Unified
Patent Court and the Benelux Court of Justice will not have jurisdiction when
no national court of a Contracting Member State has jurisdiction pursuant to
the Brussels I Regulation (for example, when jurisdiction pursuant to
the Brussels I Regulation would lie with the courts of a non-Contracting
Member State).

3.3. The completion of the jurisdictional
rules in relation to third State defendants

Article 31 of the UPC Agreement provides
that the international jurisdiction of the Unified Patent Court shall
be established in accordance with Regulation (EU) No 1215/2012 or, where
applicable, on the basis of the Convention on jurisdiction and the recognition
and enforcement of judgments in civil and commercial matters (Lugano Convention). However, insofar as the Brussels I Regulation (recast) and the
2007 Lugano Convention determine jurisdiction by reference to national law (see
Article 6 of that Regulation and Article 4 of the Lugano Convention), it is not
determined which rules should apply to determine the jurisdiction of courts
which are common to several Member States such as the Unified Patent Court and
the Benelux Court of Justice. In addition, a reference to the one or the other
national law for the several divisions of the Unified Patent Court would create an unequal access to justice in a unified
jurisdictional system which could not be justified on any objective reason.

A similar problem has already been addressed
in the existing Trademark Regulation (Council Regulation (EC) No 207/2009 on
the Community Trade Mark) and Design Regulation (Council Regulation (EC) No
6/2002 on Community designs), which each do contain a complete set of uniform
rules on jurisdiction vis-à-vis third State defendants.

It is therefore necessary to complete the
jurisdiction rules of the Brussels I Regulation (recast) for matters which will
come within the competence of the Unified Patent Court and the Benelux Court of Justice insofar as
defendants domiciled in non-European Union States are concerned. Uniform
jurisdiction rules already exist in certain situations (such as exclusive
jurisdiction with respect to the registration and validity of patents, choice
of court agreements), but not in others (such as proceedings concerning the
infringement of patents, licensing agreements in the absence of choice of
court).

The new proposal in Art. 71b, paragraph 2
therefore extends the Regulation's jurisdiction rules to disputes involving
third State defendants domiciled in third States. In addition, the Unified Patent Court's and
Benelux Court of Justice's jurisdiction to issue provisional, including
protective measures is ensured even when the courts of third States have
jurisdiction as to the substance of the matter. This extension will apply
without prejudice to the 2005 Agreement between the European Community and the
Kingdom of Denmark on jurisdiction and the recognition and enforcement of
judgments in civil and commercial matters, which already regulates the
situation of Danish defendants, and the 2007 Lugano Convention on the same
subject matter which already regulates the situation of Swiss, Norwegian, and
Icelandic defendants.

As a result of this extension, access to
the Unified Patent Court and the Benelux Court of Justice will be ensured in situations where
the defendant is not domiciled in an EU Member State as access is ensured in
situations where the defendant is domiciled in an EU Member State. In addition,
such access is ensured independently of which instance or division within the Unified Patent Court is
seized of a claim.

In addition, the new proposal in Art. 71b,
paragraph 3 establishes one additional forum for disputes involving defendants
domiciled outside the EU. The proposal provides that a non-EU defendant can be
sued at the place where moveable assets belonging to him are located provided
their value is not insignificant compared to the value of the claim and that
the dispute has a sufficient connection with the Member State of the court
seized. The forum of the location of assets balances the absence of the
defendant in the Union. Such a rule currently exists in a sizeable group of
Member States and has the advantage of ensuring that a judgment can be enforced
in the State where it was issued. It is a rule which fits better in the general
philosophy of the Brussels I Regulation (recast) than other rules of subsidiary
jurisdiction such as those provided for in the Trademark and Design Regulations
mentioned above which allow proceedings against third State defendants to be
brought, in particular, before the courts of the Member State where the
plaintiff is domiciled (forum actoris). An asset-based forum may ensure
the jurisdiction of the Unified Patent Court and the Benelux Court of Justice
in situations where the Regulation's extended jurisdiction rules would not
provide for jurisdiction and where such jurisdiction may be appropriate. For
instance, with respect to the Unified Patent Court, the asset-based
jurisdiction would ensure that the Court would have jurisdiction vis-à-vis a
Turkish defendant infringing a European patent covering several Member States and Turkey.

3.4. The operation of the rules on lis
pendens and related actions in relation to the Unified Patent Court and the
Benelux Court of Justice on the one hand and the courts of Member States which
are not Contracting Parties to the UPC Agreement or the Protocol to the 1965
Benelux Treaty on the other hand

In addition, the new rule in Art. 71c
prescribes that the rules on lis pendens and
related actions of the Brussels I Regulation (recast) apply between the Unified Patent Court or the Benelux Court of Justice on the one hand and the courts of
non-Contracting Member States on the other hand. Finally, this Article also
prescribes that the rules of the Brussels I Regulation (recast) apply when,
during the transitional period referred to in Article 83(1) UPC Agreement,
proceedings are brought before the Unified Patent Court on the one hand and before
the national courts of Contracting Member States to that Agreement on the other
hand.

3.5. The operation of the rules on
recognition and enforcement in relation between Member States that have
ratified the UPC Agreement and the Member States that have not ratified the UPC
Agreement

In order to create full transparency on the
combined and coherent application of the respective international agreements
and the Brussels I Regulation (recast), the latter should prescribe how the rules on recognition and enforcement of the Brussels I Regulation
(recast) will apply in the relations between the Member States Contracting
Parties to the respective international agreements and the Member States which
are not Contracting Parties to those agreements. Similar provisions are found
in Article 71 of the Brussels I Regulation (recast) with respect to other international
conventions on particular matters and Articles 64 and 67 of the 2007 Lugano
Convention on jurisdiction and the recognition and enforcement of judgments in
civil and commercial matters.

The new Art. 71d thus regulates the
recognition and enforcement of judgments of the Unified Patent Court and the Benelux Court
of Justice in Member States which are not Contracting Parties to the respective
international agreements, as well as the recognition and enforcement of
judgments given in Member States which are not Contracting Parties to these
agreements in matters governed by such agreements which need to be recognised
and enforced in Member States Contracting Parties to the international
agreements.

2013/0268 (COD)

Proposal for a

REGULATION OF THE EUROPEAN PARLIAMENT
AND OF THE COUNCIL

amending Regulation (EU) No 1215/2012 on
jurisdiction and the recognition and enforcement of judgments in civil and
commercial matters

THE EUROPEAN PARLIAMENT AND THE
COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty on the
Functioning of the European Union, and in particular Article 67(4) and points
(a), (c) and (e) of Article 81(2) thereof,

Having regard to the proposal from the
European Commission,

After transmission of the draft legislative
act to the national parliaments,

Having regard to the opinion of the
European Economic and Social Committee[4],

Acting in accordance with the ordinary
legislative procedure,

Whereas:

(1)       On 19 February 2013,
certain Member States signed an Agreement on a Unified Patent Court. This
Agreement provides that it shall not enter into force prior to the first day of
the fourth month after the date of entry into force of the amendments to
Regulation (EU) No 1215 concerning the relationship of the latter with the
Agreement.

(2)       On 15 October 2012, the
three Member States Contracting Parties to the Treaty of 31 March 1965
concerning the establishment and statute of a Benelux court of Justice signed a
Protocol modifying this Treaty, creating the possibility to grant certain jurisdictional competences to the Benelux Court of Justice in
specific matters which come within the scope of Regulation
(EU) No 1215/2012.

(3)       It is necessary to
regulate the relationship between the above international agreements and Regulation
(EU) No 1215/2012.

(4)       The Unified Patent Court and
the Benelux Court of Justice should be considered as courts within the meaning
of this Regulation in order to ensure legal certainty and predictability for
defendants which may be brought before those courts in a Member State different
from the one designated by the rules of this Regulation.

(5)       The Unified Patent Court
and the Benelux Court of Justice should be able to exercise jurisdiction with
respect to defendants not domiciled in a Member State. Insofar as matters
coming within the jurisdiction of the Unified Patent Court and the Benelux
Court of Justice are concerned, the rules of this Regulation should therefore
apply to defendants domiciled in non-Union Member States. The existing rules on jurisdiction ensure a close link between
proceedings to which this Regulation applies and the territory of the Member
States which justifies their extension to defendants wherever they are
domiciled. In addition, this Regulation should determine the cases in which the
Unified Patent Court and the Benelux Court of Justice may exercise subsidiary
jurisdiction.

(6)       The rules of this
Regulation on lis pendens and related actions, aimed at preventing
parallel proceedings and irreconcilable judgments, should apply when
proceedings are brought before the courts of Member States where the above
international agreements apply and before the courts of Member States where
these agreements do not apply.

(7)       The rules of this
Regulation on lis pendens and related actions should equally apply where
during the transitional period referred to in Article 83(1) of the Agreement on
a Unified Patent Court proceedings concerning certain types of disputes
relating to European patents as defined in that provision are brought before the
Unified Patent Court on the one hand and a national court of a Contracting
Member State to the UPC Agreement on the other hand.

(8)       Judgments given by the Unified Patent Court or Benelux Court of Justice should be recognised and enforced in Member
States which are not Contracting Parties to the respective international
agreements in accordance with this Regulation.

(9)       Judgments given by courts
of Member States which are not Contracting Parties to the respective
international agreements should continue to be recognised and enforced in the
other Member States in accordance with this Regulation.

(10)     This
Regulation should start to apply at the same time of Regulation (EU) No
1215/2012 in order to allow for the appropriate entry into force of the UPC
Agreement and effective transfer of competences to the Benelux Court of
Justice.

(11)     Regulation
(EU) No 1215/2012 should therefore
be amended accordingly,

HAVE ADOPTED THIS REGULATION:

Article 1

(1)        In
Regulation (EU) No 1215/2012, the following new
sentence is added at the end of recital 14:

"Uniform jurisdiction rules should also
apply regardless of the defendant's domicile in cases where courts common to
several Member States exercise jurisdiction in matters coming within the scope
of application of this Regulation"

(2)        In
Regulation (EU) No 1215/2012, Articles 71a, 71b, 71c,
and 71d are inserted:

"Article
71a

1.       For the purposes of this Regulation, a
court common to several Member States (a "common court") shall be a
court of a Member State when, pursuing to the agreement establishing it, it
exercises jurisdiction in civil and commercial matters within the meaning of
this Regulation.

2.       For the purposes of this Regulation,
the following shall each be a common court:

(a)      the Unified Patent Court established by
the Agreement on a Unified Patent Court signed on 19 February 2013 (the
"UPC Agreement");

(b)     the Benelux Court of Justice established
by the Treaty of 31 March 1965 concerning the
establishment and statute of a Benelux Court of Justice (the "Benelux
Agreement").

Article
71b

The jurisdiction of a common court shall be
determined as follows:

1.       The common court shall have
jurisdiction where, under this Regulation, the courts of a Member State party to an agreement establishing a common court have jurisdiction in a matter
governed by that agreement.

2.       Where the defendant is not domiciled
in a Member State, and this Regulation does not otherwise confer jurisdiction
over him, the provisions of Chapter II shall apply as if the defendant was
domiciled in a Member State. Article 35 shall apply even if the courts of
non-Member States have jurisdiction as to the substance of the matter.

3.       Where the defendant is not domiciled
in a Member State and no court of a Member State has jurisdiction under this
Regulation, the defendant may be sued in the common court if:

a)       property belonging to the defendant is
located in a Member State party to the agreement establishing the common court;

b)       the value of the property is not
insignificant compared to the value of the claim;

c)       the dispute has a sufficient
connection with any Member State party to the agreement establishing the common
court.

Article
71c

1.       Articles 29 to 32 shall apply when
proceedings are brought in a common court and in a court of a Member State not party to the agreement establishing that common court.

2.       Articles 29 to 32 shall apply where during
the transitional period referred to in Art. 83(1) of the UPC Agreement proceedings
are brought in the Unified Patent Court and in a court of a Member State party to the UPC Agreement.

Article
71d

In matters of recognition and enforcement, this
Regulation shall apply to the recognition and enforcement of

a)       judgments given by the Unified Patent Court or the Benelux Court of
Justice which need to be recognised and enforced in Member States which are not
Contracting Parties to the UPC or Benelux Agreements; and

b)       judgments given by the courts of Member
States which are not Contracting Parties to the UPC or Benelux Agreements which
need to be recognised and enforced in Member States Contracting Parties to such
Agreements."

Article 2

This Regulation shall enter into force on
the twentieth day following that of its publication in the Official Journal
of the European Union.

It shall apply from 10 January 2015.

This Regulation shall be binding
in its entirety and directly applicable in the Member States in accordance with
the Treaties.

Done at Brussels,

For the European Parliament                       For
the Council

The President                                                 The
President

[1]               OJ L 351, 20. 12. 2012, p. 1.

[2]               Regulation (EU) No 1257/2012 of the European
Parliament and of the Council implementing enhanced cooperation in the area of
the creation of unitary patent protection, OJ L X; Council Regulation (EU) No
1260/202 implementing enhanced coopertion in the area of the creation of
unitary patent protection with regard to the applicable translation
requirements, OJ L

[3]               SEC(2010) 1547 final of
14.12.2010.

[4]               OJ C , , p. .

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