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Research Activity Summary of FY2012


1. The Exercise of Essential Patents for Standards(II)

   In recent years, a number of large-scale patent disputes over the exercise of rights based on standard-essential patents have been brought to courts worldwide. In Japan, a court made a noteworthy ruling that it constitutes an abuse of right for a patentee to claim damages without fulfilling the duty to negotiate in good faith despite its FRAND commitment. Also in the United States, the report released by the Federal Trade Commission (FTC, 2011) and the joint statement made by the Department of Justice and the United States Patent and Trademark Office (DOJ and USPTO, 2013) addressed issues of the exercise of rights based on standard-essential patents and (F)RAND terms for licensing such patents. Amid such trends, there is a growing necessity in Japan as well to develop debates on the exercise of rights based on patents.This is an English translation of the summary of a FY2012 Institute of Intellectual Property (IIP) research study report.

    In this research study, with the awareness of the situation mentioned above in mind, we surveyed domestic legal cases and foreign systems to review the recent trends in terms of the exercise of rights based on standard-essential patents. We also identified the present challenges while hearing opinions of patent professionals, and examined in which situation the exercise of rights based on standard-essential patents are found to be inappropriate, by what kind of legal basis such inappropriate exercise of rights can be restricted, and what could be the limits to such restriction under the existing law. This study report shows the outcome of the discussion on the exercise of rights based on standard-essential patents.

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2. Future Patent Attorney System

   In order to collect opinions on a future patent attorney system for this research study, we have conducted a domestic questionnaire survey on patent attorneys, regular member companies of Japan Intellectual Property Association (JIPA), and small and medium-sized enterprises a domestic interview survey on JIPA's regular member companies, small and medium-sized enterprises, municipal entities providing IP-related support to small and medium-sized enterprises, patent firms, professional graduate schools; and an overseas survey on the United States, the United Kingdom, France, Germany, China, South Korea, the EPO, and the OHIM. We established a committee consisting of corporate IP personnel, patent attorneys, lawyers, and people with relevant knowledge and experience. We then had the committee analyze a report with regard to the results of the questionnaire survey, the interview survey, and the overseas survey and discuss a future patent attorney system from such perspectives as the examination system, training system, scope of business, corporation system, attorney-client privilege, conflict of interest, disciplinary procedure, the mission of patent attorneys, acts of non-patent attorneys, and the partial expansion of the autonomy of patent attorneys.

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3. Procedural Issues Relating to the PCT International Application System

   The globalization of economic activities has led to an increase in not only the utility of international applications (PCT international applications) under the Patent Cooperation Treaty (PCT) as a means to obtaining a patent right on an international basis, but also in the number of PCT international applications received by the Japan Patent Office (JPO) acting as a receiving office. However, while there is a great need for the use of PCT international applications among the Japanese users, critical opinions have been voiced on various issues related to the procedures.

   The purpose of this research study is to provide basic material for examining any amendment to the rules or improvement in operation so that the PCT international application system can continue to operate functionally and to enable users to utilize the PCT international application system strategically through research, organization and analysis of the actual conditions of use of PCT international application system. Moreover, this basic material is intended to be used for examining any approaches to the relevant offices of foreign states as well as organizations such as WIPO. In particular, Japanese companies and patent firms were surveyed though questionnaire and interviews, while foreign intellectual property offices and companies were also surveyed through interviews. Based on the results of these surveys, examinations were conducted by the Research Study Committee.

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4. Problems with Procedures in Using the Madrid Protocol

   The international trademark registration system based on the Madrid Protocol is useful for making the process of obtaining trademark rights overseas easy and efficient. Its advantages for applicants have been expanding since the system was first enforced, due to an increase in the number of the member countries and many amendments to the regulations. However, the ratio of applications filed by Japanese users based on the Madrid Protocol System in all foreign applications filed thereby is not necessarily high. Therefore, in this research study, we first looked for problems with procedures for filing applications with the Japan Patent Office (JPO) as the office of the home country or the office of a designated country under the Madrid Protocol System in relation to problems with procedures in using the Madrid Protocol. After that, from the perspective of providing user-friendly services, we conducted a domestic questionnaire survey, domestic interview survey, overseas interview survey, and domestic and international literature search, including WIPO's statistic information, and considered improvements to the operations of procedures, etc. based on the Madrid Protocol System at the committee based on the survey and search results.

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5. System Ensuring that Stable Patents Are Granted

  Since the 2003 revision of the Patent Act, the post-grant opposition system and the patent invalidation trial system have been integrated and unified, and have been replaced with a new patent invalidation trial system that also functions as a post-grant opposition system. However, the current patent invalidation trial system does not seem to be performing well as an alternative to the former post-grant opposition system, because the number of requests for patent invalidation trials, which showed a temporary increase after the 2003 revision, has remained at the pre-revision level. As a result of a reduction in the examination pendency period and a rise in the number of requests for accelerated examination, there has been an increase in the number of patents granted without providing third parties an adequate opportunity to submit information. Furthermore, it has been pointed out that, in comparison with other countries, Japan offers fewer opportunities for post-grant patent screening for eliminating defective patents.

   This research study has been conducted to prepare basic data on which to base a future system that would ensure that stable patents are granted by studying and analyzing the current patent invalidation trial system, the current information submission system, etc..

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6. Future Patent System for Timely Patent Acquisition

  At the 17th meeting of the Intellectual Property Policy Committee of METI's Industrial Structure Council held on March 30, 2012, it was stated that "it is necessary to examine the possibility of establishing a system that allows applicants to choose the timing of examination based on their respective business strategies and IP strategies. The system should be designed with reference to corresponding systems in other countries, aiming for a balance between the applicants' needs and the third parties' burden of monitoring."

   In order to enhance Japan's international competitiveness, it is necessary to establish a system that allows users to obtain a patent within a reasonable timeframe based on their respective IP strategies. It is therefore necessary to discuss the future of the patent system as a whole, including the current accelerated examination system, to allow each applicant to choose when to commence examination based on, for example, the merits and demerits of the system, international trends and harmonization, and the effects of the system on society, the economy, and public well-being.

   In this research study, we identified Japanese users' specific needs in relation to timely patent acquisition, analyzed similar systems in other countries, and discussed a future system in Japan that would allow applicants to choose when to commence examination.

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7. FY2012 Analysis of Economic Growth Arising from Applications for Industrial Property Rights in Japan

  Intellectual property systems, such as the patent system, are some of the most important parts of the infrastructure supporting innovative activities; and patent data plays a vital role as an indicator for measuring the research and development activities of companies and other entities.

   This analytical study incorporated the research outcomes accumulated to date, while also making use of the Survey on Intellectual Property-related Activities conducted by the Japan Patent Office (JPO) and databases such as PATSTAT and a Chinese patent database. In this study, a total of seven empirical analyses were carried out: (1) relational analysis between the number of patent applications filed in Japan and the number filed in foreign countries, focusing on Japanese applicants; (2) influence of the length of time before the commencement of examination on the examination results and stability thereof; (3) analysis of complementary use of the design system and the patent system; (4) statistical analysis of patent applications filed by Japanese joint venture companies in the East Asian region, excluding Japan; (5) analysis of the stability of rights in relation to trials for invalidation; (6) review of methods of estimating the number of requests for examination in Japan; (7) statistical analysis of intellectual property rights and advantage in financing. In addition, the revision of the survey design of the Survey on Intellectual Property-Related Activities was also considered.

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8. Interpretation of Claim in Determining Patentability

   In this research study, domestic interview surveys and foreign questionnaire surveys were conducted with foreign intellectual property offices and patent firms as well as with Japanese companies and patent agents for the purpose of identifying any possible areas of improvement in the Japanese operations, particularly regarding the interpretation of claims in determining patentability of an invention through comparison with other countries, i.e., the United States, Europe, China, and South Korea, by mainly focusing on laws and regulations and examination guidelines.

   Surveys were mainly conducted on the following five themes: (i) Consideration of the Definitions of Terms Used in the Description; (ii) Claims Described by Functions or Characteristics, etc.; (iii) Usage Claims; (iv) Product-by-Process Claims; and (v) Sub-combination Claims.
The Japanese method of interpreting claims was evaluated and examined through research on the state of operation in Japan and comparative reviews on the method of interpreting claims and the underlying concept and background of major countries.

   This research study was conducted with an aim to prepare basic materials that would contribute to improving the interpretation of claims in Japan and defining Japan’s position in the discussion on international harmonization of the system. This shall be accomplished by using survey results to evaluate the method of interpretation of claims used in Japan.

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9. Present Situation of Japan's System for Development of Intellectual Property Human Resources

   In the "Intellectual Property Strategic Program 2011," it was suggested that, with the coming global network age, an Intellectual Property Human Capital Development Plan that meets the needs of the time should be established and implemented swiftly for the purpose of increasing the competitiveness of Japan's intellectual property system. Based on this suggestion, the Expert Panel on Strengthening Competitiveness by Intellectual Property and International Standardization prepared an Intellectual Property Human Capital Development Plan. In the "Intellectual Property Strategic Program 2012," it was decided to steadfastly implement the plan.

   In this research study, the present situation was looked at with respect to the curriculum for development of intellectual property human resources offered by organizations, associations or universities to achieve the Intellectual Property Human Capital Development Plan in Japan; and the basic material to realize a new system for developing intellectual property human resources was prepared.

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10. Study on Global IP Activities


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11. Japanese Experience for Promoting Patent Exploitation and Transfer of Technology to Industry and Development of Suitable System of Patent Exploitation for Universities and Industries in Japan and Vietnam in the Future
NGUYEN Thi Phuong
Deputy Director, National Institute of Patent and Technology Exploitation (NIPTEX), Ministry of Science and Technology (MOST), Vietnam
(Invited Researcher, Institute of Intellectual Property)

   The goal of Vietnam is to become an industrial country by 2020. To achieve this goal Vietnam needs to promote innovation in businesses/institutions and to create new and higher value markets. To do so, the creation, protection, and exploitation of innovative ideas are crucial. Vietnamese Government hasn’t got until now a strategy for IP development to promote creation, protection and exploitation of IP. For many decades and until now, IP, especially patent has been being under-utilized by almost all Vietnamese businesses/institutions. For this reason, their products cannot compete with the products of other countries in the region, not mentioned the global markets. Japan has had good lessons/experiences in developing and implementing policies/measures for creation, protection, and exploitation of innovative ideas and IP system of Japan has become one of the strongest ones in the world. Therefore, this research aimed at drawing an overview of IP/patent utilization in Japan and the way to promote the transfer technology, and innovation to industry. From Japanese experience, the Ministry of Science and Technology (MOST) in Vietnam and the National Institute of Patent and Technology Eploitation (NIPTEX) under MOST can use this research result as a guideline or reference document for building a strategy on IP for Vietnam in the near future and apply some suitable measures and projects to promote IP/patent exploitation in Vietnam. Although Vietnam and Japan have different backgrounds but we hope that experiences of Japan would be very useful for Vietnam in this regard.

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12. Why are the Trademarks Protected? A Comparative Approach to the Questions of the Trademark Functions in Europe and Japan
Yann Henri BASIRE
Doctor in Private Law, Associate Professor at the University of Orleans (France) and Lecturer at the Centre for International Intellectual Property Studies (CEIPI), University of Strasbourg (France)
(Invited Researcher, Institute of Intellectual Property)

  In Europe, the question of the trademark’s function is essential with regard to the development of the case law of the European Court of Justice. It is classical to consider the trademark as a guarantee of origin. But, since 2009, the Court of Justice recognized four new functions: quality, advertising, investment, communication. This new approach of the community judges has for consequences to make harder the understanding of the meaning of the doctrine of the trademark’s function. In order to have a better understanding of this issue, it could be interesting to compare the question of trademark’s functions in another country, and more particularly Japan. Indeed, the Japanese trademark system recognizes also three legal functions: origin, quality and advertising. Therefore, a transversal approach and an analyze of the use of the trademark in both systems could allow determining what the European system and the Japanese one could learn from each other’s experiences.

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13. What Liability for Internet Service Provider Faced with Trade Mark Infringement on Internet Auction Site and Shopping Mall? : Comparison between Europe, France, Germany and Japan
Asako Wechs HATANAKA
Ph.D. Candidate, Centre for International Intellectual Property Studies (CEIPI), University of Strasbourg, France
(Invited Researcher, Institute of Intellectual Property)

   Of 53.4% seized counterfeit high brand products in 2011 by the Japanese National Police Agency are from the sales made on the Internet. Nevertheless, unlike the situation in Europe where the adversarial conflicts between the Internet service providers and the high brand trade mark owners are brought in court, Japan seems to have achieved establishing a collaborative partnership between the two in many ways. Yet, such practice in Japan has not been adequately highlighted as a successful model in the world. On the international sphere, the question remains to be solved, as neither the discussions throughout the WIPO standing committee nor the Anti-Counterfeiting Trade Agreement achieved an international consensus in this regard. The issue is therefore left to the national law, despite the ubiquitous nature of the Internet. The ultimate purpose of this research is therefore to find out an appropriate solution with regards the liability of Internet service provider on trade mark infringement through legal comparative study between Europe and Japan. To this end, the following questions shall be answered: to what extent should an Internet service provider carry the burden of policing the use of trade mark on its site? How shall it be legally secured?

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14. Designs – the Underestimated Weapon against Product Piracy
Attorney at Law, Italian and European Trademark Attorney before IPTO and OHIM, Jacobacci & Partners, IP Law and Consulting Firm, Italy
(Invited Researcher, Institute of Intellectual Property)

   Designs are Intellectual Property rights meant to protect the aspect of industrial products and play a fundamental role in the society, encouraging innovation and increasing market’s competitiveness. They are vital for companies, as they add value to industrial products and stimulate the demand for new appealing items, and for consumers, as they enable the assortment of various similar products satisfying the demand of appealing items as much as possible and enlarging the possibility of choice among price differentiated industrial products. Design rights are exclusive absolute rights, excluding all third parties from their commercial exploitation. They thus are the suitable tools to effectively protect against imitation of products. Nevertheless these rights represent a limitation to the competition, which is based on the undisputed principle of freedom. The balance between the freedom of imitation and the exclusive right onto the shape of industrial products is essential for the healthy growth of the globalized market and the protection of all interest involved. It is therefore essential to understand the requirements allowing the rise of the exclusive design right and determine its scope of protection. European design law and Japanese design law seem to set forth different requirements allowing the protection of design and most of all its enforcement. Both jurisdictions, though, seem not to have clearly determined yet the requirements set forth by the respective design systems. The purpose of this research is to comparatively analyze how the scope of protection of design right is established within European Union and Japan, highlighting the problematic aspects, if any, and trying to establish whether the protection recognized to designs is satisfactory against the product piracy.

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15. A Comparative Study on Court Systems and Mechanisms for Settling Disputes over Intellectual Property in China and Japan – Establishing Specialized Intellectual Property Courts in China
YANG Guangming
President of Intellectual Property Tribunal, No.5 Intermediate People’s Court of Chongqing, P. R. China
(Invited Researcher, Institute of Intellectual Property)

   Nowadays, the establishment of specialized intellectual property (IP) courts seems a world-wide tendency. From the above perspective, China’s “three-in-one adjudication” mode, i.e., a division set up within courts of general jurisdiction to handle cases involving IP which would have been handled by civil, administrative or criminal division respectively, is held no more than a transitional means, while a “specialized court” with fully integrated characteristics seems to be the best choice for reconstruction of China’s IP court system. Under new institutional and strategic circumstances of IP law, China should fully consider features of IP trials and learn more from outside world’s valuable and successful experiences. Thus a comparative study of different IP court modes in Japan and other main countries or regions is necessarily conducive to realizing unity and efficiency of justice. Through the comparison, China should obtain advanced theories and sophisticated laws, which are most beneficial to improvement of her system of adjudication of IP disputes. Of course, while integrating present IP judicial resources, China should pay heed to her own conditions and thus set up specialized courts with Chinese characteristics that have jurisdictions over civil, administrative and criminal cases involving IP so as to push ahead changes and reforms of the IP judicial system.

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16. Studies on the Ideal Trademark Act for the Development of Regional Brands
Risa Ide
(Research Fellow, Institute of Intellectual Property)

  The design of a system for developing regional brands plays a key role not only in the implementation of a national policy of regional developments but also in international trade negotiations. In this regard, South Korea revised its Trademark Act and Agricultural and Marine Products Quality Control Act and introduced two systems concerning geographic indications in the course of the Free Trade Agreement (FTA) negotiations with the United States and the European Union (EU). It would be of great significance to clarify the differences between the geographical indication protection system introduced in South Korea and the Japanese system of regional collective trademark in identifying issues concerning the introduction of the geographical indication protection system. Japan is likely to face these issues in future trade negotiations and in designing a system to suit the conditions in Japan. This research aims to determine the ideal design of the system for developing regional brands in Japan. This will be accomplished mainly by pursuing the appropriate Trademark Act through comparison and examination on the current system concerning the development of regional brands in Japan with reference to the contents of the FTAs between South Korea and the United States or the EU and the revisions made to domestic laws through negotiations for the FTAs.

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17. Research Study on an Ideal Patent Purchase System to Complement the Patent System
Yusuke INAMI
(Research Fellow, Institute of Intellectual Property)

   Since a patent system gives exclusive rights to inventors, it hinders competition and causes social inefficiency. Yet, we maintain the patent system despite this disadvantage. One of the reasons is its contribution to the creation of technological innovations. Specifically, by clearly stipulating in the patent system that inventors would be protected, encouragement of R&D investments is sought. However, it is not desirable to leave the problem of social inefficiency caused by the patent system unaddressed. This research proposes a system that would complement a patent system in order to solve the aforementioned problem of inefficiency. More specifically, this research proposes a patent purchase system. It also reveals cases in which the existence of a patent purchase system could reduce social inefficiency and discusses the relationship between a patent purchase system and corporate R&D investment activities.

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18. Study on Governing Law on Security Rights in Intellectual Property
Ikumi SATO
(Research Fellow, Institute of Intellectual Property)

   This study looks into the issue of which law to apply to security rights in intellectual property—a field where currently there is no established private international law—, based on the United Nations Commission on International Trade Law’s (UNCITRAL) 2010 publication “UNCITRAL Legislative Guide on Secured Transactions: Supplement on Security Rights in Intellectual Property” (hereinafter referred to as the “IP Supplement”). This publication raises doubts about governing international aspects of security rights in intellectual property in accordance with the principle of territoriality—the basis of the existing intellectual property law; and it tries to find a solution in the approach of using the law of the State of the debtor’s location, as applicable to security rights in movable assets and receivables (this approach has been developed in the United States and has been rapidly gaining wider support in recent years). This study examines the conflict-of-laws rules suggested by the IP Supplement from the perspective of whether these rules should be introduced in Japan in policy terms, thereby exploring an international law that will be vital to effectively promoting intellectual property finance.

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19. Study on Constructing a Theory Toward Solving Diversified Indirect Infringements
(Research Fellow, Institute of Intellectual Property)

   In the case of infringement of a patent right by two or more parties, the largest issue is whether each party can be a responsible actor. It is true that the past has seen an indirect infringement approach (application of Article 101 of the Patent Act), joint infringement approach, instrumental theory approach, doctrine of equivalents approach, and control theory approach, all with regard to the issue of infringement of a patent right in which two or more parties get involved. However, all of these approaches are solutions that still have problems with establishing each party involved as a responsible actor. Therefore, this report suggests a solution by applying "risk aversion obligation violation approach" in addition to these conventional approaches. Risk aversion obligation violation approach is the theory of assigning certain responsibility to someone who has committed an act of putting integrity interest (life, health, and property) at risk (an act of putting another person's right at risk according to the type and form of action). This theory has been matured in the world of civil law—the theory of tort by omission (theory of violation of the obligation to avoid damage and the theory of the obligation of security) under the Japanese Civil Code and the theory of Verkehrspflicht (obligation in social life) under the German Civil Code—to infringement of a patent right. As each of two or more parties can be a responsible actor through this theory, it becomes possible to realize a remedy for a patentee in the case of infringement of a patent right by two or more actors, which has been impossible under conventional theories.

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20. Industrial Property Rights Policy in Modern Japan – From 1894 to 1911 –
(Research Fellow, Institute of Intellectual Property)

  In July 1894, as a result of revisions to the so-called unequal treaties, Japan's accession to the Paris Convention was secured. This finally made Japan a member of the international community. Since then, what developments have occurred in Japan in terms of industrial property rights? As a matter of fact, after signing said Convention, Japan encountered many problems related to industrial property rights in the course of negotiations with Western countries and had to struggle to solve them.

  This research will examine the types of problems related to industrial property rights that occurred between Western countries (particularly the U.K. and Germany) and Japan, which had greatly raised its international status by securing accession to the Paris Convention and undergoing the First Sino-Japanese War and the Russo-Japanese War. This research will also analyze, based on historical materials on Japan, the U.K., and Germany, how Japan tried to solve those problems through diplomatic negotiations. Furthermore, this research will reveal how Japan had tried to establish a system to balance national interests and international cooperation as a member of the international community.

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21. How to Control the Quality of Patent Using Nonobviousness Requirement
Takeshi MAEDA
(Overseas Researcher, Institute of Intellectual Property)

   The inventive step requirement (non-obviousness requirement) is the most important requirement that decides the quality of a patent. This report is intended to draw suggestions for Japanese law through an overview of discussions on the non-obviousness requirement in the United States from the perspective of control of the quality of patents. This report considers discussions on the non-obviousness requirement in a multifaceted manner from two perspectives, that is, discussions on substantive determination standards and discussions on the development of a procedural system. With regard to substantive determinations, determination of non-obviousness in the United States has been changing since a recent Supreme Court judgment, and has been coming close to Japan where the Intellectual Property High Court has recently been changing the trends of determination of inventive step. In terms of procedures, the United States is making efforts to ensure the quality of patents while meeting various needs by preparing various systems through legal revisions while Japan adopts a policy of bringing problems under control by preparing an all-round trial for invalidation system. There is a significant difference in procedures between Japan and the United States. It should be noted that both of them have respective advantages and disadvantages.

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22. On the Efficiency of Patent Examination Process for Economic Growth
(Overseas Researcher, Institute of Intellectual Property)

   This research empirically analyses the effects of the reforms of patent examination system and the international cooperation for patent examination on the firms’ patenting activities and the efficiency of examination process.

   In recent years, the complexity of inventions and the applicants’ need for early patent protection have been increasing. We find that these factors increase the necessity for communications between applicants and examiners, and thus extends the examination period. We also find that the accelerated examination system effectively works to accelerate examination process and that the system is used for high-quality inventions. On the other hand, our results suggest that the reduction of the allowable period of examination request makes it difficult for each applicant to assess the value of the application and decreases the average quality of patent. The reform of fee structure functions as an effective policy tool to mitigate such negative effect on the patent quality. Furthermore, this research shows that the use of the search report provided by a foreign patent office significantly enhances the examination efficiency.

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