DR SEYED MASOUD SAJJADI ALEHASHEM v. THE HONG KONG POLYTECHNIC UNIVERSITY AND OTHERS

HCIP 48/2024

[2026] HKCFI 262

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 48 OF 2024

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BETWEEN

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DECISION

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Introduction

1.  By summons dated 26 November 2024 (“the Security Summons”), Ds apply for security of costs in the sum of HK$409,010 up to the close of pleadings on the ground that P is ordinarily resident out of the jurisdiction.

2.  By another summons dated 9 April 2025 (“the Striking Out Summons”), P applies to strike out the Security Summons.

3.  This court ordered that the two Summonses be determined by way of paper disposal and directions for filing their respective written submissions were given. Mr Ling, for Ds, has filed his written submissions and P has filed his. I have perused all of their written submissions.

4.  Logically, I shall first dispose of the Striking Out Summons.

Striking Out Summons

5.  In the Striking Out Summons and his supporting affirmation, P set out his ground of his application which can be summarized as follows.

6.  P and Ds jointly applied to Lok J by way of a consent summons dated 2 January 2025 for directions in regard to the Security Summons. The learned judge made a consent order dated 6 January 2025 (“the Consent Order”). By the Consent Order, it was directed that P should file and serve his affirmation in opposition within 28 days from the date of the order and Ds should file and serve their respective affirmation(s) in reply (if any) within 28 days thereafter.

7.  P only filed his affirmation in opposition on 17 February 2025 after the time prescribed had lapsed in the Consent Order. By an email dated 18 February 2025 (“the Ds’ Email”), Ds’ solicitors asked P for his agreement for Ds to file their affirmation in reply within 28 days from 17 February 2025, which would be 17 March 2025.

8.  By an email dated 19 February 2025 (“the P’s Email”), P indicated to Ds that he agreed to Ds’ filing of their reply affirmation on 17 March 2025.

9.  Ds have not filed an affirmation in reply eventually. P says that Ds’ failure to do so is a breach of Order 41 of the Rules of the High Court (“RHC”) and gives rise to an inference that they do not have any credible basis to resist his claim.

10.  P complains that Ds’ failure to file their affirmation in reply (1) unfairly delays the proceedings, (2) undermines the court’s authority and (3) is egregious given that they are seeking security for costs whilst defaulting their own procedural obligations.

11.  Mr Ling submits that this application is too ludicrous to deserve further examination.

12.  I am of the view that this application is devoid of merit. The Consent Order only gives Ds the right to file an affirmation in reply if they wish to do so. This is what the phrase “if any” in the relevant direction in the Consent Order means. Whether Ds decide to file an affirmation in reply after seeing P’s affirmation in opposition is entirely a matter of their professional judgment. They may conclude that there is nothing to reply and no affirmation in reply is necessary. In any event, they have no obligation to do so under the Consent Order.

13.  It should be noted that the Consent Order allows the parties to fix a hearing date for the Security Summons regardless of whether they have filed their respective affirmations. P’s complaint about delay is groundless.

14.  Strictly speaking, Ds did not have to ask for P’s agreement for them to file their affirmation in reply on 17 March 2025 by the Ds’ Email. The Consent Order allows them to file it within 28 days from the date of P’s filing of his affirmation in opposition. P’s affirmation in opposition was filed out of time and in breach of the direction in the Consent Order. His lateness should and could not affect the right of Ds to file their affirmation in reply within 28 days after receipt of his affirmation.

15.  I would have thought that, as a matter of courtesy, a written indication to P that they would not file any reply affirmation would be advisable. After all, they indicated in the Ds’ Email that they would do so on 17 March 2025.

16.  In light of my conclusion that Ds have no obligation to file an affirmation in reply, the Striking Out Summons is baseless and must be dismissed.

Security Summons

17.  The Security Summons was taken out pursuant to Order 23 r.1, RHC. The guiding principles relating to this application is well settled. The following summary provided by Au-Yeung J in Edward Walecki v The General Fiduciary Co Ltd and Anor. [2020] HKCFI 2921 helpfully referred to this court by Mr Ling (at §18) is sufficient for present purposes:

(1) Where a plaintiff is ordinarily resident out of jurisdiction and has no fixed assets in Hong Kong, the court would be inclined towards making an order for security for costs.

(2) Unless it can be clearly demonstrated that the plaintiff has a high degree of probability of success, the practice of going into the merits of the case in a security application is to be deplored.

(3) Where the plaintiff asserts that an order for security would stifle his claim, the burden is on him to demonstrate that it is more likely than not that funds are not available from any source (whether from him, through commercial borrowing or from other backers) to provide security.

(4) The court has unfettered discretion to order such amount of security as it thinks just taking into account all the circumstances of the case and adopting a “broad-brush” approach instead of a line by line evaluation of the bill of costs.

18.  With these principles in mind, I turn to consider the Security Summons.

19.  To show that P is ordinarily resident out of jurisdiction, Ds rely on the address given by P in the Writ of Summons and his own evidence in the his affirmation in opposition that P’s permanent address is in Iran though he is temporarily residing in Mainland China. Apparently, P is currently in employment in Shenzhen under a 3-year contract expiring on 3 November 2027.

20.  P argues that, because of his 3-year employment contract, he cannot be residing in Mainland China merely on a temporary basis. P may probably be mistaken in thinking that this jurisdiction includes Mainland China. P tacitly admits that he resides in Mainland China not just on a temporary basis. I am satisfied that P is ordinarily resident out of jurisdiction and the jurisdiction under O.23 r.1(1)(a) of the RHC is prima facie triggered.

21.  P refers to a copy of D1’s staff handbook setting out D1’s policy on ownership of intellectual property (“the Policy”) which is exhibited to the affirmation filed by Ds. P claims that he has a 35% share in a patent which is in the control of D1. He says that in the unlikely event that he is ordered to pay costs to Ds, Ds should be able to recover their costs from the value of his share in the patent.

22.  P’s assertion is misleading. Clause 9 of the Policy governs the distribution of net revenue received by D1 upon commercialization of any patents owned by D1. Clause 9.1 provides that the inventor(s) of the patent gets 35% of such net revenue. The department of the inventor(s) gets 10% and D1 gets the remaining 55%. The patent remains the property of D1 and P has no share in the patent. The patent cannot be his asset.

23.  Given the fact that P is ordinarily resident out of jurisdiction without any fixed assets in Hong Kong, this court is inclined towards granting an order for security for costs.

24.  I have perused the Statement of Claim. The claim of P is not properly pleaded with sufficient particulars. Apparently, P relies on three broad complaints, namely, breach of patent law, breach of copyright law and breach of contract.

25.  The Statement of Claim is not easily comprehensible. My understanding of his claim after reading P’s affirmation and written submission is as follows.

26.  P was previously employed by D1 as a research staff in the Department of Civil and Environmental Engineering until September 2022. He claims to be the main researcher and the first inventor of a patent entitled “Modular Rail Particle Damper for Noise and Vibration Reduction in Railways” (“the Invention”).

27.  The Invention was subsequently submitted to the 48^th Geneva International Exhibition of Inventions (“the Exhibition”) in April 2023 and was awarded a bronze medal. However P’s name was not mentioned as the main researcher or inventor in the exhibition hall or the award certificate (“the Award Certificate”).

28.  P’s case is that the Invention was patented in China on 28 April 2021 under certificate numbers 4900663 and 15623830. P is the main inventor of these patents and there is no reference to D2 to D4 in these patents.

29.  Thus, P says that it is a breach of the patent law by Ds’ presentation of the Invention without proper attribution to P.

30.  P further asserts that the Invention and its related research proposals and articles published by him are protected under copyright law and D1’s failure to name him in the Exhibition and on the Award Certificate is a breach of copyright law.

31.  Lastly, P complains that D1 should have made financial gains out of the bronze medal. As the inventor of the Invention, P claims to be entitled to 40% (instead of 35%) of the net revenue from the commercialization of the Invention in the Exhibition pursuant to the contract between P and D1. D1 is in breach of the contract in that it failed to inform him of its participation in the Exhibition and to disclose to him the financial benefits gained.

32.  P claims to have suffered both emotional and financial damage, missed career opportunities and immigration opportunities and damage to his academic reputation.

33.  P claims against Ds for damages, payment of the financial benefits they have received and written apologies, etc.

34.  Ds explain that the patents are two PRC utility patents (“the PRC Patents”). As P himself points out, these patents were actually registered in Mainland China.

35.  Ds’ evidence is that D2, D3 and D4, under the employment of D1, continued to work on the Invention after the departure of P and the one submitted to the Exhibition was the improved version of the Invention.

36.  In any event, P does not explain, and I fail to see, how he could enforce his rights of the PRC Patents, if any, under any provisions in the Patents Ordinance, Cap 514 and how he could commence an action for patent infringement of the PRC Patents in Hong Kong.

37.  P’s copyright claim fares no better. It is hopelessly vague and seriously under-particularized. P adduces no evidence to support his copyright claim. According to his own allegation, the copyright infringement, if any, took place in Switzerland. P does not start to explain how his alleged copyright infringement claim is actionable in Hong Kong despite the double actionability rule.

38.  It is very fair for Mr Ling to explain to this court the moral right of an author under the Copyright Ordinance, Cap 528 and the exclusion of an employee from enjoying such right. I do not think that it is necessary to go so far to formulate a possible albeit unpleaded copyright claim for P and assess its merit. As it now stands, for present purposes, it suffices for me to point out that P’s claim in copyright infringement is far from viable let alone having a high degree of probability of success.

39.  Lastly, I am not impressed by the contractual claim of P. P fails to plead properly his alleged contractual entitlement under the Policy. His assertion that D1 received financial gain arising from the bronze medal is based on his speculation and surmise only. In any event, the email of the Geneva Inventions Team dated 8 November 2024 confirms that the bronze medal did not bring D1 any financial award. P says nothing about this email.

40.  In the premises, I am unable to accept that P can demonstrate that he has a high degree of probability of success. Quite on the contrary, his claim appears to be fraught with difficulties.

41.  In his affirmation, P made a bare assertion that he does not have financial resources to pay the security demanded by Ds and he would be pressurized into abandoning his claim if security is ordered.

42.  The burden is on P to show his impecuniosity. P, however, has not adduced any evidence of his actual financial condition. As rightly pointed out by Mr Ling, P has also failed to disclose what efforts he has made to raise funds to raise the security demanded by Ds. On the evidence, P fails to convince this court of his inability to pay security for costs.

43.  Hence, P’s allegation that his claim will be stifled if security is ordered must be rejected on the evidence.

44.  As to the quantum of security, Ds have provided to this court their skeleton bill of costs. Security for costs is not meant to be an indemnity and I believe the appropriate amount of the security up to the close of pleadings should be HK$200,000 bearing in mind the complexity of P’s pleaded case (or lack of it).

Conclusion and orders

45.  Applying the established principles to the present case, I am amply convinced that I should exercise my discretion to order P to pay security for costs to give some protection to Ds in case of their victory. I, thus, accede to Ds’ application by the Security Summons and order that P do on or before 16 February 2026 by 4:00 p.m. pay into court a sum of HK$200,000 as security for Ds’ costs up to the close of pleadings. In the event P defaults in making payment in accordance with this order, upon written notice given by Ds to the Register, P’s action herein shall be forthwith demised and P do pay each of Ds its/his costs of this action, to be taxed if not agreed.

46.  For the reasons given, I further order that the Striking-Out Summons be dismissed.

47.  There is no reason why costs should not follow the event. I make an order nisi that P do pay Ds their costs of and occasioned by the Security Summons and the Striking Out Summons, to be taxed if not agreed.