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I completed my PhD 3 years ago from a university in the UK. Today I was looking for some papers in google scholar. I found a patent in China. The patent was written in Chinese however, all diagrams/figures and equations were exactly same as one of my PhD research papers, which was also part of my PhD thesis.

I translated Chinese text to English I found that work is exactly....same as my PhD thesis and research paper. My research paper was published 1 year before the patent was filed. When I translated the inventors name. I found one of the inventors is my PhD supervisor, who is Chinese but works in a UK university. I couldn't believe it. This patent was filed by a power company in China with my PhD supervisor as one of the inventors.

I am fully aware that the research paper is an open source idea anybody can use it. However, this is the case of copyright infringement. I have full right on text, diagrams, figure and tables in my research paper and my PhD thesis. They have copy-pasted diagrams as well. These diagrams are scientific diagrams nobody can reproduce them without the data.

Now, I am not sure, where should I complain?

  1. should I first confront my supervisor directly as he is one of the inventors? or
  2. complain to the university, because if this paper is a patent then only the university has first right over it before a power company in China. I never gave any consent to sell my research work or file a patent of my work without me being the inventor.
  3. Another issue is that I did research at a UK university. This patent is filed in China. What actions I can take?
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    This is probably a question for a lawyer. – Buffy Sep 9 at 23:54
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    I recommend posting this question (or a variant) to AskPatents. – vallismortis Sep 11 at 13:39
  • This conversation has been moved to chat. Please take all discussion/speculation about international patent law enforcement options to chat or a qualified lawyer. – eykanal Sep 12 at 16:31

11 Answers 11

186

This sounds like a clear-cut case of a violation of academic ethics to me - if he’s willing to steal work from you, how could anyone trust anything he’s ever published? I’d strongly consider going to talk with the head of your faculty, school, or department, depending on how your university’s hierarchy is structured, so that the university can begin academic integrity proceedings against him, and I’d also consider talking to the university’s lawyers about what your legal options to dispute the patent are, and if you would be able to file one in the UK.

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    Thanks. I will complain to the university. Till now I was thinking he has made only one patent from my PhD research. I just found his Chinese google scholar he produced 5 patents from my PhD. Two of them are repetition of ideas. – SS23 Sep 10 at 0:30
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    +1 talk to your university. @SS23 no offense but you are the small fry here. The university's lawyers would love to have a word or two with this guy. Universities rarely take kindly to their rights being infringed. – Spark Sep 10 at 4:07
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    @Spark I’d imagine that his boss probably would, too; this sort of academic misconduct is the sort of academic misconduct that might well cost him his job - and possibly his visa, too, if he’s there on a work visa. – nick012000 Sep 10 at 4:32
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    This also drags the university through the mud. I certainly wouldn't want to study there. The university will definitely fight this big time. – Nelson Sep 10 at 9:11
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    @SS23 - Can you update us later on with what happens? – BruceWayne Sep 10 at 16:00
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China does not have a good history of enforcing IP rules. This is a widely-covered topic (Stanford legal blog summary, CNBC study, google search on the topic). This topic has been a focus in recent international politics, as IP has been a non-insignificant focus in larger trade talks. While President Xi has claimed that he's cracking down, things still aren't that great.

To that extent, you're simply now experiencing pain that many others have felt. Unfortunately, there aren't many resources available for you to remedy this problem.

As you say that your advisor works for a UK university, you might be able to do contact the UK university and see if they can assist in policing this in some way. It is unlikely they can for the patent to be overturned or rewritten to acknowledge you, but there may be some other pressure they can exert on the professor. Similarly, if anyone tries to claim rights to your invention outside of China, it's highly likely you could claim prior art.

Lastly, while certainly suspicious, I wouldn't take it as proven that your advisor was responsible, at least not based on what you've written.

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    "As you say that your advisor works for a UK university, you might be able to do something there... if anyone tries to claim rights to your invention outside of China, it's possible you could do something." - Details of what 'something' is would vastly improve this answer. – RyanfaeScotland Sep 10 at 11:51
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    I just extensively modified this post, adding a lot of links and tried to remove offending text. I hope this helps. – eykanal Sep 12 at 16:24
  • Comments are not for extended discussion; this conversation has been moved to chat. Please keep comments focused on the question itself and take all discussion on related issues to chat. – eykanal Sep 12 at 16:29
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    @eykanal In this state it's certainly a better answer, but there is so little left of the original that I think it's highly misleading to keep it attributed to the original poster and it is undermining the voting system that you transformed 50 votes for one answer into 50 votes for another answer – Nobody Sep 12 at 20:59
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    @AnonymousPhysicist - Posted a question to Meta. – eykanal Sep 13 at 12:38
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Legally, you don't need to do anything, you lost nothing and don't need to worry.

Ethically, well, others answered that adequately I think. Obviously it's not ok, but you don't even know for sure your advisor was involved. I would just like to add that you should keep in mind the cost to yourself of taking any action and whether you really want conflict in your life when you aren't actually threatened.

Details about the legal aspects:

In general, getting a patent is meaningless. The patent registry does some research to verify validity, but only as much as their fee pays for. States don't enforce patents in general, so the people who filed the patent would need to sue you. Then you would trivially win, because I assume you had your thesis published in a reputed place which can vouch for the publication date and it's such a blatant copy (which thus isn't novel, and that's the basic requirement for patents all over the world).

You yourself couldn't get a patent on the idea anyway (in most countries), because you published your paper and thus destroyed novelty (yes, patent law really works like this - you need to file for a patent before you publish anything).

Next, Chinese patents only have any effect in China even if they are legal and enforceable in (Chinese) court. Because of the exorbitant cost of patents and the questionable enforce-ability in China, you probably don't want a patent in China anyway unless you are Chinese or otherwise based there.

If, next time, you wanted to get a patent yourself you should talk to your university early on. Often they will get a patent for you (but also own the patent) or help you get a patent (depending on your contract with them).

(I took a lecture on intellectual property recently, but that's all of my credentials)

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    This is a good answer and there's no good reason it deserves a minus vote. – Randy Zeitman Sep 11 at 4:39
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    @Acccumulation You need to file a pre-registration (don't know the proper term in English). That's less detailed, cheaper and easier than the whole registration. Then you have a year or slightly more to file the rest of the patent. If you publish before the pre-registration someone can challenge the patent on the ground that it isn't novel and cite your own paper as prior art. – Nobody Sep 11 at 6:54
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    @Acccumulation IANAL (thankfully :-) ) - the following is 'from memory' but believed correct.| Until 'a few years back' the USA worked on 1 year after publication for a patent to be able to be filed. About all the rest of the world required filing prior to publication. The US changed to the international norm said few years back. – Russell McMahon Sep 11 at 11:49
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    @LightnessRacesinOrbit If the mission of SE is so important to it's veterans. Wouldn't the veterans who downvote want to comment why they downvoted so answers can be improved? Or atleast why they downvoted, if for a relevant reason. – LiefdeWen Sep 12 at 14:13
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    Please let me note that I wasn't complaining and if I received written critique I would be thanking for that and not complaining either. I do think that my last sentence boils down to "I got it certified by a renowned university that I spent at least 60 hours (2 ECTS credits) learning about the basics of IP law" and not "I don't know what I'm talking about". While 60 hours isn't much, it's enough to cover the very basic statements I make in my answer. – Nobody Sep 12 at 21:07
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I am not a lawyer but this is my understanding of patent law...

Another consideration is that a patent is granted on the understanding that the object or idea covered by the patent was not publicly disclosed prior to the patent application. Such a public disclosure constitutes "prior art".

If your paper was published by a journal, or your thesis was deposited in an online university repository, then relevant prior art was publicly disclosed, predating the patent application. As such the patent should not have been granted in the first place and would be unenforceable if push came to shove in a court. So your university (his employer... perhaps shotly to be his ex-employer) should have a very easy case to get the patent set aside. They will have the legal firepower available to do this, you won't be able to afford what they can afford to protect their reputation. Talk to your research organisation.

Even if the system in China rejects the complaint, the holders won't be able to register a patent anywhere else in the world for this substance / process and anywhere else in the world will be free to use the substance / process so it will seriously devalue the theft of your IP.

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    Patent law varies considerably around the world. – Buffy Sep 10 at 11:10
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    It would be good to have an answer with this approach and some more substance. I suspect the patent would be invalid because of en.wikipedia.org/wiki/Prior_art in most of the world. Maybe contact the company's competitors to find someone interested in fighting the patent in court? :) – JollyJoker Sep 10 at 12:55
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    According to this: en.wikipedia.org/wiki/Patent_law_of_China#Novelty such a patent is invalid in China. I thought the big issue with patents in China was the enforcement i.e. you (typically a foreign entity) have a patent but you can't get it enforced. I guess in this case it could go the other way with the novelty rule not being enforced. – JimmyJames Sep 10 at 15:50
  • A thesis or journal/conference paper is almost certainly not in the public domain; for a written work to be in the public domain the copyright must have expired or the author must have explicitly dedicated it to the public domain, and even that would be valid only in the parts of the world that allow this.(There are also some other country-specific rules probably not relevant here.) However, the (non-copyrightable) methods in the thesis might certainly qualify as prior art that could serve to invalidate the patent. – Curt J. Sampson Sep 11 at 12:17
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    @CurtJ.Sampson In the link I provided above it states: "an invention is not new (and therefore is unpatentable) if it was published or publicly disclosed anywhere in the world before the priority date." It doesn't appear that being in the 'public domain' is relevant. I think this answer is not using the term 'public domain' in the strict sense that you are reading it. – JimmyJames Sep 11 at 16:48
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Three issues together with a TL;DR:

  • Science ethics (talk with your Uni)
  • Copyright (largely irrelevant as it's China, unfortunately)
  • Patents (dito)

The "patent" aspect would be your least worry. I assume that you do not actually want to use the idea of your paper in China, but maybe in a western country. In that case, any western court should make that very much possible for you. Patents are all about invention; the entity acquiring a patent must prove that they invented it, and if a challenger can prove that the thing was extant before, then it's a moot point.

The "copyright" issue is a big headache for you, but it does not hurt you, really. You did a paper anyways, so it is out there, and in western countries which respect the idea of copyright, that's it. You can easily prove, by comparing the dates on the documents, that you are the copyright holder. If you, say, want to rework your paper into a book, or something like that, you can easily do that (in the west).

"Ethics" is really only applicable here because your supervisor is in the UK as well. If you want to go that way, sure, your uni should have contacts for you. It won't change anything in China, but maybe it creates enough repercussions for that person so something changes... which will be more for your own peace of mind than anything else, I guess.

Except for notifying your uni, I'd let it go, frankly. Unless you have very concrete plans to actually use your paper in aspects of copyright/patentability, you'll not gain anything except gray hair and gastric ulcers... and even then - what I called "easy" up there would still involve lawyers and a lot of time and possibly money depending on whether the chinese company has a dependency (or a vested interest) in a western country.

  • To sum that up - China wins again. – Jeffery Thomas Sep 10 at 13:42
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    @JefferyThomas inside China, yes. But I don't see an invalid patent (from the outside perspective) as a particular problem for OP. IANAL and such goes without saying. ;) – AnoE Sep 10 at 15:36
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    IANAL either. For me it's the principle of the matter. They took something that didn't belong to them and are taking credit for it. That is unequivocally wrong. – Jeffery Thomas Sep 10 at 16:51
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    Letting it go? No, that's not a good advice. The University should be notified. – Sulthan Sep 10 at 21:43
  • @Sulthan, yes, talking with the uni is good (I've added a half sentence to make that more clear); but I think he has no chance of reversing the patent in China, and on the other hand the patent in China doesn't actually hurt him in a way patents can be hurtful (presuming he didn't want to patent that in China himself, obviously, which I see no intention from OP for). – AnoE Sep 11 at 7:07
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Patents are only useful in the case of a dispute. And a patent dispute will really only occur when there is competition. If nobody competes with the company that "stole" your patent, then in the big picture, the patent is meaningless. If the corporation that filed the patent is state-owned, then it is likely that it will never face meaningful competition to begin with. At that point, the patent almost certainly provides prestige value only.

It is hard to see how anything of value has been taken from you unless you intended to productize your Ph.D thesis inside China. However, there is a way for you to possibly extract value from the patent that even the patent holder cannot. You should simply advertise on your C.V. that your thesis is already being implemented in China, and refer to the Chinese corporation and its patents as proof. This certainly validates your ideas more strongly than not having a physical implementation. If you really want to take it to the next level, you should contact your adviser and make them give you a fawning quote about your work and how it made possible the glorious Chinese patent for the good of the Motherland (or is it the Fatherland?). Unless acknowledging your role would somehow cause a loss of face for your adviser, this seems like a win-win situation to me.

Even if acknowledging your contribution would cause a loss of face, making your adviser balk, you can simply turn the screws by letting your adviser know that you will be contacting his corporation's legal department to advise them of the provenance of key patent data. That should remove any hesitation to give you the well-deserved acknowledgment, which could easily be written in English, in a place that few people in China are likely to see or look for.

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    Seems like what was stolen was the opportunity for self-branding. – Randy Zeitman Sep 11 at 4:38
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I, too, am not a lawyer, but know enough that patent law varies considerably across the globe. It is even possible that a patent granted in China won't be recognized in the US, though I have no specific knowledge of that. But, among other things, the standards about what can be patented are likely different in different locations. Certainly the process is.

The proper course is to talk to a patent lawyer who can give valid advice. Your university, if it is a large one, probably has access to such lawyers who can advise you and even file for a patent (say in the US) on your behalf and that of the university.

  • Even if it's not recognized in the US that won't really matter. China will profit from it however they can. Speaking with a lawyer is advised but be aware that China has zero regard for the international courts. They'll do whatever they please. – Jeffery Thomas Sep 10 at 13:40
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    Patents from one country are never recognized in a different country. You have to apply for and be granted a patent in every country you want to protect your intellectual property. There are ways of streamlining the process, i.e. the International Patent Application allows you to only apply once to multiple countries, but each country will still go through its own application process, its own investigation, and grant its own patent. The European Patent goes one step further, in that there is not only one application, but also only one application process and investigation, and if the … – Jörg W Mittag Sep 10 at 16:28
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    … European Patent Office decides to grant the patent, then all signatory states (that are named in the application) must grant the patent, but the patents are still separate patents for each country, and the inventor still has to file patents in each country in the official language of that country. In general, unless there is a specific treaty that both countries have signed, no country will ever recognize another country's laws, no matter whether that are patent laws, copyright laws, tax laws. That's part of what it means to be a "country", make your own laws however you choose. – Jörg W Mittag Sep 10 at 16:30
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    There are long-standing plans for a EU-Patent, but they are just that: plans. – Jörg W Mittag Sep 10 at 16:34
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    What does the US have to do with the situation? The question clearly says that OP is based in the UK. – Peter Taylor Sep 11 at 8:02
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According to this Wikipedia article inventions that are not new are not patentable in China since 2009. The article also mentions two ways of initiating an opposition procedure.

One of them, is at the CNIPA which has a rather comprehensive English website: http://english.sipo.gov.cn/. I'm pretty sure that calling them would at least give you some answers as to what actions are available. The site also contains translations of Chinese patent laws.

There is also another option for you. You can contact the power company that filed the patent. Or threaten your supervisor with that. It is very likely that he received compensation for the invention from that company. In this case, that would mean he committed a crime as the invention was unpatentable and he sold them something that wasn't his.

If the power company filed the patent without even your supervisor's knowledge, it might be a little more difficult. Power companies in China are state-owned mega-corporations with... well... a lot of power. You would need a little more noise to make them give up the patent. I doubt that is the case here though. They don't really have competition. It doesn't make sense for them to try to patent open source ideas.

1

I'm not a lawyer and I don't know much about Chinese law, but much of this has been missed by other posters so far and I've done a bit of IP work in the past.

China is a "First to File" country

My country is a "first to file". ie if your boss files a patent for something you invented, he has full right to it and you might actually not have any rights over it at all. From a quick google search it appears that China is also a "first to file" country. If your supervisor filed the patent correctly, it should go through if you don't do anything.

More Chinese patent law from my quick google search

In china there are three types of patents: invention patents, utility model patents, and design patents. This might be an invention patent, but I'm not sure. Now, I believe according to this site, there would be a 6 month grace period where you would have been able to contest this patent since it was first made public in an academic setting. However, according to this site, China has no patent opposition procedure. You can still try to beat this by filing an invalidation application as outlined in the same site. It doesn't seem to me that the patent itself is invalid though.

What can you do?

  1. If it is important to you, file a patent in the UK and in any other country you want to do business in/want your ideas recognized/want to be involved in litigation in (ooh fun!, not).
  2. Talk to your supervisor and ask him to add you as an inventor.
  3. Consider speaking to a patent attorney.

Copyright and Patent are two different things

If you wrote the paper and made the figures, then perhaps you are right and you automatically have copyright over that stuff. Be aware that some journals actually take copyright from the authors and some uni's do the same. Neither of those things invalidate the patent itself. I know it sounds strange, but it's patent law - it's all strange. I do not know which of the above is the case though. It is very difficult to determine who wrote the paper this far from the actual fact. Your supervisor may very well have thought he did sufficient work to be the inventor and/or have written significant portions of the paper.

Ownership and inventorship are not equivalent

Even if you were listed as an inventor, you don't necessarily have ownership over anything. So let's say you were able to get yourself listed as an inventor......you are still in the same boat, but now you have bragging rights. You still couldn't sell something based on that paper in china without infringing on their patent. If your intent is to make money off of this paper in China, then I would honestly say it isn't worth it. There are other countries where your paper is not patented and where you could engage in rampant capitalism at your pleasure. If you intend to do that, it's an easy, albeit expensive, journey of several thousands of dollars for each patent.

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    patents filed in China are nothing but mandarin version of my research papers. How can anyone's research paper could be used as patent? Is it normal to take someone's research paper to be rewritten in English or Chinese as a patent. – SS23 Sep 12 at 0:06
  • I don't know what type of patent they filed, but yes a research paper can be patented under a few conditions. In china they have to be novel, have industry applicability, and substantive features or qualities previously uninvented (unpatented). I recently was named as an inventor on a patent of a research paper. Def possible. I know it's totally wonky that someone else can patent your research, but that might be how it is (I say might since I'm not a lawyer hehe). Seek the advise of someone who is qualified to give you more specific actions if you wish to be on the patent as an inventor. – Joe B Sep 12 at 0:11
  • Also even if you are an inventor on the patent, that does not give you ownership rights to the actual patent. From what you've described, your supervisor is not the owner of the patent and the chinese corp is. Currently, neither you nor him are owners of the patent. – Joe B Sep 12 at 0:17
  • In my post, I only mentioned that the patent is filed by a Chinese company with my supervisor as one of the inventors. It's not just a Chinese company. This patent is filed by a Chinese company and a top university in China, where my supervisor is a visiting professor. My PhD was entirely conducted and funded by a UK university where my supervisor is a full-time professor. – SS23 Sep 12 at 0:35
  • A type of spying. – Sentinel Sep 12 at 5:15
1

It is unfortunately common to hear stories similar to this with regards to graduate work. There are no proven damages you list, so there is really no way to sue. It would also not be very beneficial in this circumstance, as it is very difficult to influence or otherwise enforce international intellectual property rules on other countries in general.

The most promising way forward here is not a legal solution, but a social one. Contact the supervisor associated with the publication, and explain that you found your paper filed as patent in China. It is possible they were also unaware, but that isn't necessarily relevant. The relevant issue is to see if they can help correct the patent filing to include you as an inventor.

It is possible to correct the names of inventorship for a patent in China. Given that you approach this from an inclusive stance as opposed to a combative one, you may have some luck there.

According to the The International Association for the Protection of Intellectual Property (AIPPI), "the inventorship of a patent application can be corrected after the filing date in China upon request with related statement of agreement or evidence."

As for the request, make sure that you can provide some sort of documentation to the supervisor for them to present. China's patent office will require some proof of inventorship when filing a correction.

The inventorship of a patent application can be corrected after the filing date in China upon request with related statement of agreement or evidence. Under the current Patent Law of China, where the request to make a change is due to failure to fill in the name of inventor or his wrong name filled in, the certifying document signed or sealed by all the applicants (or patentees) and all the inventors before the change shall be submitted;

Short of them consciously making the decision to include you in this list of inventors, it is highly unlikely you will see any beneficial outcome from being forceful here.

There is also the counter argument which may hold some weight regardless of being entirely accurate. If your supervisor were to argue that they directed the effects of your research only to the extent of organizing your work, then you would not be considered as an inventor in China.

The Patent Law of China does not define inventorship based on any particular part of the patent application. Anyone who makes creative contributions to the substantive features of an invention should be considered as the inventor of the application. On the other hand, a person who is responsible only for organizational work, who offers facilities for making use of materials and technical means, or who takes part only in other auxiliary functions, is not considered to be an inventor. While, from a legal perspective, the “substantive features” refer to those features that distinguish the invention from the closest prior art and thus render the invention patentable, in practice they are generally considered as the act of proposing the original idea of the originally claimed invention.


- Source for citations: https://aippi.org/wp-content/uploads/committees/244/GR244china.pdf

0

Are you sure that the officer knew that the patent is just a translation and piracy of your work? Like sending them an complaint or something. I really think it is possible that they just failed to cover some PhD paper in English. I can help you in the translation the Chinese.

Also, as far as I know, patent is to gain protection by disclose of the technique. So the Chinese government will no way benefit from such patent(because it should be open to everybody due to your published paper). It matters only with your supervisor's profit.

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