Manfred Fink v. Joann D. Anderson, Betty Bailey, Doug Bird, Ann Brown, Brad Bullock, M.D., Jim Byron, Mike Clann, Claire Crowder, Evan Quiros, Paul Fulmer, M.D., Eric Geibel, Mark Griffin, Steve Gerguis, Stacey Harvey, Bill Henderson, Allen Holt, Linda Hudson

ACCEPTED

01-14-00990-CV

FIRST COURT OF APPEALS

HOUSTON, TEXAS

6/4/2015 3:48:07 PM

CHRISTOPHER PRINE

CLERK

Case No. 01-14-00990-CV

IN THE COURT OF APPEALS FILED IN

1st COURT OF APPEALS

FIRST JUDICIAL DISTRICT HOUSTON, TEXAS

HOUSTON, TEXAS 6/4/2015 3:48:07 PM

______________________________________________

CHRISTOPHER A. PRINE

Clerk

DR. MANFRED FINK,

Appellant,

v.

JOANNA D. ANDERSON, et al.,

Appellees

___________________________________________

On Appeal from

nd

the 152 Judicial District Court

Harris County, Texas

Cause No. 2014-22740

________________________________________

BRIEF OF THE UNIVERSITY OF TEXAS, AUSTIN

AS AMICUS CURIAE SUPPORTING

APPELLANT DR. MANFRED FINK

_________________________

KEN PAXTON ERIKA M. KANE

Attorney General of Texas Tex. Bar No. 24050850

Assistant Attorney General

CHARLES E. ROY OFFICE OF THE ATTORNEY GENERAL

First Assistant Attorney General General Litigation Division – 019

P.O. Box 12548

JAMES E. DAVIS Austin, Tx. 78711-2548

Deputy Attorney General for Civil (512) 463-2120

Litigation (512) 320-0667 (Fax)

erika.kane@texasattorneygeneral.gov

ANGELA V. COLMENERO

Division Chief – General Litigation Attorneys for Amicus Curiae

Division The University of Texas-Austin

Identity of Parties and Counsel

Parties to the Trial Court Judgment:

Plaintiffs/Appellees: Joanna D. Anderson, Betty Bailey, Doug Bird, Ann Brown,

Brad Bullock, M.D., Jim Byron, Mike Clann, Claire Crowder,

Evan Quiros, Paul Fulmer, M.D., Eric Geibel, Mark Gtiffin,

Steve Gerguis, Stacey Harwey, Bill Henderson, Allen Holt,

Linda Fludson, Cullen Kappler, Ralph Kirkland, Sam Lo, M.D.,

Thomas Lu, M.D., Gailer Miller Holt, Mary Quiros, Larry

Sams, Bob Solberg, Lynn Whitt, and Clarissa Willis, M.D.

Defendant/Appellant: Dr. Manfred Fink, Ph.D.

Counsel:

For Plaintiffs/Appellees

Wade T. Howard

Michael P. Cash

Alma F. Gomez

LISKOW & LEWIS

1001 Fannin Street, Ste. 1800

Houston, Texas 77002

Tel (713) 651-2900

Fax: (713) 651.-2908

wthoward@liskow.com

mpcash@liskow.com

afgomez@liskow.com

ii

For Defendants/ Appellants

H. MELISSA MATHER

Assistant Attorney General

State Bar No. 24010216

Financial Litigation, Tax, and

Charitable Trusts Division

P.O. Box 12548

Austin, Texas 78757-2548

Tel: (512) 475-2540

Fax: (512) 477 -2348

melissa.mather@texasattorneygeneral.gov

iii

INTEREST OF AMICUS CURIAE

Amicus Curiae, the University of Texas at Austin (UT-Austin), has an interest

in this case as a state employer. As such, UT-Austin has an interest in ensuring that

the courts of this state properly interpret and apply immunity principles applicable

to suits brought against state employees for acts arising out of their state

employment, including the immunity from suit established in Tex. Civ. Prac. &

Rem. Code § 101.106(f).

More particularly, the lower court’s denial of the motion to dismiss filed by

Dr. Manfred Fink was contrary to the Texas Supreme Court’s decision in Franka v.

Velasquez, which made clear that Tex. Civ. Prac. & Rem. Code § 101.106(f) serves

to “foreclose suit against a government employee in his individual capacity if he was

acting within the scope of employment.” 332 S.W.3d 367, 381 (Tex. 2011). As the

employer of Professor Fink, UT-Austin is of the position that the petition in this

matter has alleged actions that arose within the general scope of Professor Fink’s

employment. Accordingly, UT-Austin has an interest in ensuring that its employee

is not improperly subjected to litigation in a matter that should be deemed foreclosed

under Franka and its progeny.

Neither UT-Austin nor any other party has paid any fee in connection with the

preparation of this brief.

iv

TABLE OF CONTENTS

INTEREST OF AMICUS CURIAE .........................................................................iv

TABLE OF CONTENTS ...........................................................................................v

INDEX OF AUTHORITIES.....................................................................................vi

STATEMENT OF THE CASE ............................................................................... vii

ISSUES PRESENTED............................................................................................ vii

STATEMENT OF FACTS ........................................................................................1

SUMMARY OF THE ARGUMENT ........................................................................ 1

ARGUMENT .............................................................................................................2

I. UT-Austin professors assisting in the commercialization

of UT-owned intellectual property act within the scope of

their employment................................................................................... 2

II. State employees are entitled to immunity for any act taken

within the general scope of their employment for a government

agency. ...................................................................................................5

III. Any fact dispute that may exist in this matter is not relevant

to the disposition of Professor Fink’s § 101.106(f) motion. ............... 10

CONCLUSION AND PRAYER .............................................................................12

CERTIFICATE OF COMPLIANCE .......................................................................14

CERTIFICATE OF SERVICE ................................................................................15

APPENDIX

v

INDEX OF AUTHORITIES

Cases

Anderson v. Bessman,

365 S.W.3d 119 (Tex. App.—Houston [1st Dist.] 2011, no pet.) .........................6

Best Steel Bldgs., Inc. v. Hardin,

553 S.W. 2d 122 (Tex. Civ. App—Tyler 1977, writ ref’d n.r.e.) ......... 6, 7, 11, 12

Bull Bohnsack v. Varco, L.P.,

668 F.3d 262 (5th Cir. 2012) ..................................................................................8

Dictaphone Corp. v. Torrealba,

520 S.W. 2d 869 (Tex. Civ. App.—Houston [14th Dist.] 1975, writ ref’d n.r.e.) .6

Franka v. Velasquez,

332 S.W.3d 367 (Tex. 2011)........................................................................... 4, 5, 12

Goodyear Tire & Rubber Co. v. Mayes,

236 S.W.3d 754 (Tex. 2007) ..................................................................................7

Gulfcraft, Inc. v. Henderson,

300 S.W.2d 768 (Tex. Civ. App.—Galveston 1957, no writ)..........................7, 11

Hopkins v. Strickland,

No. 01–12–00315–CV, 2013 WL 1183302

(Tex. App.-Houston [1st Dist.] Mar. 21, 2013, no pet.) .........................................6

Inter Mountain Mtge., Inc. v. Sulimen,

93 Cal.Rptr.2d 790 (Cal. App. 2000) .....................................................................8

James v. Wall,

783 S.W.2d 615 (Tex. App.—Houston [14th Dist.] 1989, no writ) ......................3

Lenoir v. Marino,

01-13-01034-CV, 2014 WL 6678947

(Tex. App.—Houston [1st Dist.] Nov. 25, 2014, no pet.) .........................................6

Lenoir v. Moore,

Cause No. 01-13-01034-CV, 2014 Tex. App. LEXIS 12703 (Tex. App.—

Houston [1st Dist.] November 25, 2014, no pet.) ..................................................9

Minyard Food Stores, Inc. v. Goodman,

80 S.W.3d 573 (Tex. 2002) ....................................................................................8

Quick v. Peoples Bank,

993 F.2d 793 (11th Cir.1993) .................................................................................8

vi

Steel Bldgs., Inc. v. Hardin,

553 S.W. 2d 122 (Tex. Civ. App—Tyler 1977, writ ref’d n.r.e.) ..........................9

Statutes

TEX. EDUC. CODE § 51.192 ........................................................................................4

TEX. EDUC. CODE § 65.45 ..........................................................................................2

Other Authorities

http://www.otc.utexas.edu/ForInventors.jsp ..............................................................3

http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-

regulations/30104.pdf ............................................................................................4

http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-

regulations/complete90000.pdf..................................................................................3

Reporter’s Notes, RESTATEMENT (THIRD) OF AGENCY § 7.07 (2006) .......................8

vii

STATEMENT OF THE CASE

Amicus Curiae adopts the Statement of the Case set forth in Appellant’s Brief.

ISSUES PRESENTED

I. Whether the court below erred in failing to grant Professor Fink’s plea to the

jurisdiction, because the petition failed to allege facts to demonstrate any of the

acts at issue occurred outside the scope of Professor Fink’s employment

viii

Case No. 01-14-00990-CV

IN THE COURT OF APPEALS

FIRST JUDICIAL DISTRICT

HOUSTON, TEXAS

______________________________________________

DR. MANFRED FINK and DR. RAINER FINK,

Appellants,

v.

JOANNA D. ANDERSON, et al.,

Appellees

___________________________________________

On Appeal from

nd

the 152 Judicial District Court

Harris County, Texas

Cause No. 2014-22740

________________________________________

BRIEF OF THE UNIVERSITY OF TEXAS, AUSTIN

AS AMICUS CURIAE

_________________________

Amicus Curiae University of Texas at Austin (UT-Austin) respectfully

submits this brief on behalf of Appellant Professor Manfred Fink’s request that this

Court reverse the order denying his plea to the jurisdiction.

STATEMENT OF FACTS

Amicus Curiae adopts the Statement of Facts set forth in Appellant’s Brief.

SUMMARY OF THE ARGUMENT

This Court should reverse the order of the court below and dismiss Professor

Fink from this suit pursuant to Texas Civil Practice and Remedies Code § 101.106(f)

1

because the acts committed by Professor Fink, as currently alleged, were acts within

the general scope of Professor Fink’s duties as an employee of UT-Austin. More

specifically, the alleged acts occurred within the general scope of Professor Fink’s

duty as an employee of UT-Austin to support the commercialization of technology

owned by UT and created within the course and scope of Professor Fink’s

employment with UT-Austin.

ARGUMENT

I. UT-Austin professors assisting in the commercialization of UT-owned

intellectual property act within the scope of their employment.

As a premier research institution, UT-Austin encourages—and necessarily

requires—its professors to continually seek to innovate. These efforts result in UT-

Austin employees creating important intellectual property (IP) in the course of their

employment with the university.

Because this IP often has great societal and monetary value, UT-Austin

established the Office of Technology Commercialization (OTC) to oversee and

facilitate the transfer of university discoveries to the marketplace. See, e.g., TEX.

EDUC. CODE § 65.45 (conferring on UT Board of Regents the power to enter into

“agreements with individuals, corporations, partnerships, associations, and local,

state, or federal agencies for funding the discovery, development, and

commercialization of new products, technology, and scientific information”); see

also Affidavit of Juan M. Sanchez (“Sanchez Aff.”) ¶ 6, attached hereto at Appx. Tab

2

1 (explaining role of OTC). UT-Austin professors who invent valuable technology

play an important part in ensuring the successful commercialization of University-

owned IP by working in conjunction with the OTC, and such activities typically

occur as part of the professor’s employment with UT-Austin. See Sanchez Aff. ¶¶ 6-

7; see also “For Inventors,” website of UT Office of Technology Commercialization,

available at http://www.otc.utexas.edu/ForInventors.jsp (explaining that the OTC

provides “UT faculty with the resources, knowledge, and tools to protect and

promote their discoveries” and that “[p]aramount” to the OTC’s effort to maximize

UT-Austin’s research impact is OTC’s “collaboration with UT researchers, industry,

investors, and other strategic partners”).

The UT Board of Regents has promulgated rules that establish that when, as

here, a UT professor creates IP within the scope of his employment, that IP is owned

by the UT Board of Regents. See University of Texas System Rules and Regulations

of the Board of Regents, Rule 90102, Sec. 2. 1 Pursuant to these rules, the IP created

by Professor Fink, which was licensed to IsoSpec, was owned by the UT Board of

Regents because it was created during the course and scope of Professor Fink’s

employment with UT-Austin. CR 181. UT Board of Regents rules permitted

1

UT’s Board of Regent rules relating to IP created at the university are available at:

http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-regulations/complete90000.pdf. The

Court may take judicial notice of these rules, as they have “the same force as would be a like

enactment of the Legislature.” See James v. Wall, 783 S.W.2d 615, 619 (Tex. App.—Houston

[14th Dist.] 1989, no writ) (quotations omitted).

3

Professor Fink, as part of his UT-Austin employment, to provide input related to the

commercialization of his invention. See University of Texas System Rules and

Regulations of the Board of Regents, Rule 90101, Sec. 7. Board of Regents rules

also make clear that UT retains “sole discretion” to make “final decisions

concerning…how to…commercialize” any IP owed by the UT Board of Regents.

Id. Additionally, Texas law permits a state university employee who invents

university-owned IP to serve as an officer or employee of a business that has a

licensing agreement concerning the IP. See TEX. EDUC. CODE § 51.192. However,

state law mandates that this can only occur if the university employee publically

reports any such business relationship with the licensee and the relationship

complies with the university’s conflict of interest policies. Id.; see also University

of Texas System Rules and Regulations of the Board of Regents, Rule 90104. In the

instant matter, no report exists to indicate that Professor Fink ever acted as an officer

or employee of IsoSpec. 2

Given the foregoing, Professor Fink’s relationship with IsoSpec related to his

employment with UT-Austin, because UT-Austin, not Professor Fink, had a direct

relationship with IsoSpec through a licensing agreement. CR 181-83. To the extent

2

To the extent a UT employee may wish to act as a paid consultant for a company that has licensed

his technology, the UT Board of Regent has promulgated rules governing this type of “outside

employment.” See Rules and Regulations of the Board of Regents, Rule 30104, available at

http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-regulations/30104.pdf.

Again, UT-Austin is not aware that any such outside employment agreement between Professor

Fink and IsoSpec exists.

4

Professor Fink had involvement in the commercialization of the IP UT-Austin

licensed to IsoSpec, that involvement was subject to UT Board of Regents rules,

which grant UT-Austin authority over any activity related to the commercialization

of IP owned by it. 3 See University of Texas System Rules and Regulations of the

Board of Regents, Rule 90101, Sec. 7. As such, and as explained herein, the acts

from which this suit arose fell within the general scope of Professor Fink’s

employment with UT-Austin.

II. State employees are entitled to immunity for any act taken within the

general scope of their employment for a government agency.

It is settled that that Texas Civil Practice and Remedies Code § 101.106(f)

permits the dismissal of intentional torts alleged against a government employee

acting within the general scope of their employment. Franka, 332 S.W.3d at 378.

This Court recently explained that:

“Scope of employment” is defined by the Texas Tort Claims Act as the

performance “of a task lawfully assigned to an employee.”…This

definition is broader than the official immunity insulating state

employees from liability. … Thus, an employee's scope of authority

extends to job duties to which the official has been assigned, even if the

official errs in completing the task.”

3

Appellees suggest that Professor Fink had a managerial or officer role in IsoSpec, citing to a

“PPM” issued by IsoSpec and attached to Appellee’s Brief. App’ee Brief at 8. By its own terms,

however, the PPM does nothing to support an assertion that Professor Fink had any type of officer

or employee role in IsoSpec itself, because the PPM merely lists Professor Fink as an “inventor”

of the technology at issue. See App’ee Appx at 4, 7, 19. As explained herein, as inventor of the

IP at issue Professor Fink could provide information to IsoSpec about his technology, through his

obligations as a UT-Austin employee to assist the OTC in the commercialization of the IP licensed

to IsoSpec, without having to enter into an outside employment agreement with IsoSpec.

5

Lenoir v. Marino, 01-13-01034-CV, 2014 WL 6678947, at *10 (Tex. App.—

Houston [1st Dist.] Nov. 25, 2014, no pet.) (internal quotations and citations omitted

and emphasis added). This Court has further stated that “[i]f the purpose of serving

the employer’s business motivates the employee, his acts are within the scope of

employment.” Anderson v. Bessman, 365 S.W.3d 119, 126 (Tex. App.—Houston

[1st Dist.] 2011, no pet.). This is true even if the employee brings improper,

“personal motives” to bear in undertaking the act that forms the basis for suit against

the employee. See id.; see also Hopkins v. Strickland, No. 01–12–00315–CV, 2013

WL 1183302, at *3 (Tex. App.-Houston [1st Dist.] Mar. 21, 2013, no pet.) (mem.

op.) (“an act may still be within the scope of the employee's duties even if the specific

act that forms the basis of the civil suit was wrongly or negligently performed, so

long as the action was one related to the performance of his job”).

Other courts in Texas have agreed that allegations that an employee

committed an act primarily for personal reasons does not resolve the scope of

employment inquiry. See, e.g., Dictaphone Corp. v. Torrealba, 520 S.W. 2d 869,

872 (Tex. Civ. App.—Houston [14th Dist.] 1975, writ ref’d n.r.e.) (“employee’s

arrangement of the performance of his duties in a manner consistent with his

personal convenience does not take him out of the scope of his employment”); Best

Steel Bldgs., Inc. v. Hardin, 553 S.W. 2d 122, 128 (Tex. Civ. App—Tyler 1977, writ

ref’d n.r.e.) (“fact that the preponderate motive of the servant is to benefit himself or

6

a third person does not prevent the act from being within the scope of

employment.”). These courts have cited with approval language from the

Restatement (Second) of Agency, which provides that the relevant inquiry for

determining whether an act is within the general scope of employment is whether

“the purpose of serving the master’s business actuates the servant to any appreciable

extent.” Best Steel Bldgs., 553 S.W. 2d at 128 (emphasis added). Similarly, an

employee can be deemed to be acting within the scope of employment for a

particular employer even when the act at issue occurred while the employee was

serving multiple employers. See, e.g., Gulfcraft, Inc. v. Henderson, 300 S.W.2d 768,

773 (Tex. Civ. App.—Galveston 1957, no writ) (if alleged act was “within the

general scope of [] employment of [one employer]...the fact that [employee] was

simultaneously engaged in the furtherance of business of other employers does not

change” the scope of employment determination).

Conversely, when an employee completely “deviates from the performance

of his duties for his own purposes, the employer is not responsible for what occurs

during that deviation,” because it is outside the scope of employment. See Goodyear

Tire & Rubber Co. v. Mayes, 236 S.W.3d 754, 757 (Tex. 2007) (employer not liable

for car accident that occurred in company vehicle while employee was on an off-

hours, entirely personal errand to buy cigarettes). Nevertheless, the Texas Supreme

Court has held conduct may still be within the scope of employment if the act is

7

“referable to [a] duty owing” the employer, and that “[n]either express authorization

nor subsequent ratification” of the employee’s act by the employer is necessary to

establish that an act as within the scope of employment. Minyard Food Stores, Inc.

v. Goodman, 80 S.W.3d 573, 577 (Tex. 2002).

Moreover, it is not dispositive to the “scope of employment” inquiry under

§ 101.106(f) that the employee is charged with committing an intentional tort. Even

suits where, as here, an employee is alleged to have acted with fraudulent intent can

arise from acts within the scope of employment, so long as the act arose in the

general course of performance of the employee’s duties. See, e.g., Reporter’s Notes,

RESTATEMENT (THIRD) OF AGENCY § 7.07 (2006) at c (citing Quick v. Peoples Bank,

993 F.2d 793, 798 (11th Cir.1993) and Inter Mountain Mtge., Inc. v. Sulimen, 93

Cal.Rptr.2d 790, 795 (Cal. App. 2000) as examples of cases where employee’s

fraudulent acts were deemed to be within scope of employment); see also Bull

Bohnsack v. Varco, L.P., 668 F.3d 262, 274 (5th Cir. 2012) (alleged employee

misrepresentations that form basis of fraudulent inducement claim can be deemed to

have arisen within scope of employment).

Given the foregoing, in the instant case it matters not, at least for purposes of

the § 101.106(f) scope of employment analysis at issue here, that Professor Fink is

alleged to have “intentionally” misled Appellees about his technology because of a

8

personal, ill motive.4 Rather, the critical question here in determining whether the

alleged acts arose within the scope of Professor Fink’s employment—as even

Appellees recognize—is whether the acts “ar[ose] from the performance of the

employee’s authorized tasks” or “was otherwise foreseeable given the nature of the

services the employee was engaged to perform on the employer’s behalf.” App’ee

Brief at 15 (citing Lenoir v. Moore, Cause No. 01-13-01034-CV, 2014 Tex. App.

LEXIS 12703, *25-27 (Tex. App.—Houston [1st Dist.] November 25, 2014, no

pet.).

Here, Professor Fink’s activities with respect to the UT-owned IP licensed to

IsoSpec were subject to UT Board of Regents rules; these rules permitted Professor

Fink to provide “input” related to the commercialization of the IP. See University of

Texas System Rules and Regulations of the Board of Regents, Rule 90101, Sec. 7.

Further, Professor Fink’s provision of information about his invention to IP licensee

IsoSpec is a type of activity UT-Austin professors may perform, in the scope of their

employment, for purposes of assisting UT-Austin’s OTC in the commercialization

of University-owned technology. See Sanchez Aff. ¶¶ 6-7. Accordingly, the general

4

For this reason, it is not relevant to the scope of employment inquiry that Professor Fink’s son

served on IsoSpec’s board. See App’ee Brief at 17. That is, even if the Court assumes that

Professor Fink’s alleged acts were in part motivated by some intent to financially benefit his son,

the alleged acts are still within the scope of employment if they were within the general scope of

Professor Fink’s employment duties. See, e.g., Best Steel Bldgs., Inc. v. Hardin, 553 S.W. 2d 122,

128 (Tex. Civ. App—Tyler 1977, writ ref’d n.r.e.) (“fact that the preponderate motive of the

servant is to benefit himself or a third person does not prevent the act from being within the scope

of employment.”).

9

act alleged here—namely, Professor Fink’s discussion at IsoSpec about the IP

licensed to the company—was within the range of employment-related activities he

might foreseeably perform in furthering the commercialization of the technology he

invented within the scope of his employment with UT-Austin. See id.

III. Any fact dispute that may exist in this matter is not relevant to the

disposition of Professor Fink’s § 101.106(f) motion.

Lest there be any doubt, UT-Austin disputes any allegation that Professor

Fink, or any other person affiliated with UT-Austin, acted with any intent to mislead

or defraud Appellees or any other person related to this matter. Regardless, any

purported fact dispute that may exist between the parties about the intent underlying

Professor Fink’s alleged conduct is not pertinent to the inquiry here regarding

whether Professor Fink was acting within the scope of employment when he spoke

to potential IsoSpec investors about the technology he invented.

For example, Appellees attempt to create a fact issue by arguing that IsoSpec’s

petition in intervention below—in which IsoSpec alleges that Professor Fink’s acts

occurred “within the scope of his relationship with IsoSpec and in furtherance of

IsoSpec’s business”—creates a fact issue as to whether Professor Fink intended to

act as an employee of IsoSpec when the alleged acts took place. App’ee Brief at 26.

However, IsoSpec’s petition in intervention creates no relevant fact issue. Rather,

IsoSpec’s assertion in its petition that Professor Fink had a “relationship” with the

company is entirely consistent with Professor Fink’s assertion that he was an

10

inventor of IsoSpec’s technology and had a relationship with IsoSpec as a result of

his employment with UT-Austin, the licensor of that technology.

Moreover, even if this Court assumes that Professor Fink was intending to act,

in part, for the benefit of IsoSpec when the alleged acts occurred, that does not defeat

Professor Fink’s § 101.106(f) motion, because so long as the alleged act was “within

the general scope of [Professor Fink’s] employment of [UT-Austin]...the fact that

[Professor Fink] was simultaneously engaged in the furtherance of business of other

employers does not change” the scope of employment determination. See Gulfcraft,

Inc., 300 S.W.2d at 773. Instead, this Court must consider whether “the purpose of

serving [UT-Austin’s] business actuate[d Professor Fink’s conduct] to any

appreciable extent”; if it did, then the alleged act was within the general scope of

Professor Fink’s employment with UT-Austin and the claims against him must be

dismissed under § 101.106(f). See Best Steel Bldgs., 553 S.W. 2d at 128.

Here, Professor Fink’s alleged conduct in attending meetings at IsoSpec was

related, to an “appreciable extent,” to the fact that: (1) UT-Austin licensed the

technology at issue to IsoSpec and (2) Professor Fink was an employee of UT-Austin

whose conduct was governed by UT Board of Regent rules.5 Stated another way, the

5

For this reason, it matters not to the scope of employment inquiry that Appellees allege that the

Professor Fink’s alleged acts were intended to assist IsoSpec in fundraising and UT-Austin

disclaimed any interest in fundraising. See App’ee Brief at 24. This is because, even if Professor

Fink’s acts are deemed to have been motivated in part by an intention to fundraise for IsoSpec, he

must still be found to have been acting within the scope of his employment with UT-Austin if his

acts were related to his UT-Austin employment to any appreciable extent. See Best Steel Bldgs.,

11

undisputed facts in the record show that: (1) the technology licensed to IsoSpec was

owned by UT-Austin due to Professor Fink’s employment with UT-Austin and (2)

Professor Fink’s relationship to IsoSpec was as an employee of UT-Austin, who in

turn acted as licensor to IsoSpec.

For the foregoing reasons, this Court should find that, for purposes of

Professor Fink’s § 101.106(f) motion to dismiss, Professor Fink’s alleged acts

occurred within the general scope of his employment with UT-Austin. Because of

this, the claims against Professor Fink are barred under Texas Civil Practice and

Remedies Code 101.106(f) and subject to dismissal. See Franka, 332 S.W.3d at 378.

CONCLUSION

Amicus Curiae respectfully requests that this Court REVERSE the order of

the Court below and DISMISS the claims made against Professor Fink.

553 S.W. 2d at 128. Here, because Professor Fink’s relationship with IsoSpec was governed by

UT Board of Regent rules regarding IP, his actions were motivated, to at least some “appreciable”

extent, by his employment with UT-Austin.

12

Respectfully submitted,

KEN PAXTON

Attorney General of Texas

CHARLES E. ROY

First Assistant Attorney General

JAMES E. DAVIS

Deputy Attorney General for Civil Litigation

ANGELA V. COLMENERO

Chief, General Litigation Division

s/ Erika M. Kane

ERIKA M. KANE

Texas Bar No. 24050850

Assistant Attorney General

Office of the Attorney General - 019

General Litigation Division

P.O. Box 12548, Capitol Station

Austin, Texas 78711

(512) 463-2120

(512) 320-0667 FAX

erika.kane@texasattorneygeneral.gov

13

CERTIFICATE OF COMPLIANCE

According to Microsoft Word, this brief contains 2,940 words, excluding the

portions of the brief exempted by Texas Rule of Appellate Procedure 9.4(i)(1).

/s/ Erika M. Kane

Erika M. Kane

Assistant Attorney General

14

CERTIFICATE OF SERVICE

I certify that a true and correct copy of this brief has been served via U.S. mail

and electronic mail on all parties on June 4, 2014 by delivery to the following:

Wade T. Howard H. Melissa Mather

Michael P. Cash Office of the Attorney General

Alma F. Gomez for the State of Texas

LISKOW & LEWIS Financial Litigation, Tax, and Charitable

1001 Fannin Street, Ste. 1800 Trusts Division

Houston, Texas 77002 P.O. Box 12548

Tel (713) 651-2900 Austin, TX 78711-2548

Fax: (713) 651.-2908 (512) 475-2540 – direct

wthoward@liskow.com (512) 475-2994 - fax

mpcash@liskow.com Melissa.Mather@texasattorneygeneral.gov

afgomez@liskow.com Attorney for Appellant

Attorney for Appellees

Andrew R. Harvin, Esq.

Timothy M. McDaniel, Esq. Peter Wells, Esq.

IRELAN MCDANIEL, PLLC DOYLE, RESTREPO, HARVIN &

440 Louisiana Street, Suite 1800 ROBBINS, LLP

Houston, Texas 77002 The Lyric Centre

Tel. 713-222-7666 440 Louisiana, Suite 2300

Fax. 713-222.7669 Houston, TX 77002

tmcdaniel@imtexaslaw.com Tel: 713-228-5100

Attorneys for Defendant Dr. Fax: 713-228-6138

Rainer Fink, Ph.D aharvin@drhrlaw.com

PWells@drhrlaw.com

Attorneys for Third-Party

Defendant William Hightower

15

Arnold Anderson “Andy” Vickery, Paul Flack

Esq. PRATT & FLACK, LLP

Fred H. Shepherd, Esq. 1331 Lamar Street

THE VICKERY LAW FIRM Four Houston Center, Suite 1250

Park Laureate Building Houston, Texas 77010

10000 Memorial Drive, Suite 750 Tel: (713) 936-2401

Houston, Texas 77024 Fax: (713) 481-0231

Tel. 713-526-1100 pflack@prattflack.com

Fax. 713-523-5939 Attorneys for Third-Party

Via Email: andy@justiceseekers.com Defendant UBS

Via Email: fred@justiceseekers.com

Via Email: karin@justiceseekers.com

Attorneys for IsoSpec Technologies,

L.P.

/s/ Erika M. Kane

Erika M. Kane

Assistant Attorney General

16

Case No. 01-14-00990-CV

IN THE COURT OF APPEALS

FIRST JUDICIAL DISTRICT

HOUSTON, TEXAS

______________________________________________

DR. MANFRED FINK,

Appellant,

v.

JOANNA D. ANDERSON, et al.,

Appellees

___________________________________________

On Appeal from

nd

the 152 Judicial District Court

Harris County, Texas

Cause No. 2014-22740

________________________________________

APPENDIX TO THE UNIVERSITY OF TEXAS, AUSTIN’S

AMICUS CURIAE BRIEF

_________________________

KEN PAXTON ERIKA M. KANE

Attorney General of Texas Tex. Bar No. 24050850

Assistant Attorney General

CHARLES E. ROY OFFICE OF THE ATTORNEY GENERAL

First Assistant Attorney General General Litigation Division – 019

P.O. Box 12548

JAMES E. DAVIS Austin, Tx. 78711-2548

Deputy Attorney General for Civil (512) 463-2120

Litigation (512) 320-0667 (Fax)

Erika.Kane@texasattorneygeneral.gov

ANGELA V. COLMENERO

Division Chief – General Litigation Attorneys for Amicus Curiae

Division The University of Texas, Austin

INDEX TO UNIVERSITY OF TEXAS, AUSTIN’S

AMICUS CURIAE APPENDIX

_________________________

TAB DESCRIPTION

1. Affidavit of Juan M. Sanchez

2. UT Board of Regents Rules Governing Outside Employment

and Intellectual Property

TAB 1

TAB 2

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 30104

1. Title

Conflict of Interest, Conflict of Commitment, and Outside Activities

2. Rule and Regulation

Sec. 1 Primary Responsibility. The primary responsibility of employees

of the U. T. System Administration and each of the U. T. System

institutions is the accomplishment of the duties and

responsibilities assigned to one's position of appointment.

Sec. 2 Outside Work or Activity. Employees may engage in work or

activity with outside entities and individuals, including

governmental agencies, industry, or other educational

institutions so long as such work or activity complies, as

applicable, with the approval and disclosure requirements of

Section 5 below and does not violate State laws or U. T. System

Administration or U. T. System institution rules or policies

governing the conduct of employees, including ethics standards

and provisions prohibiting conflicts of interest, conflicts of

commitment, and the use of State resources.

Sec. 3 Unmanaged Conflicts of Interest Prohibited. U. T. System

Administration and U. T. System institution employees may not

have a direct or indirect interest, including financial and other

interests, or engage in a business transaction or professional

activity, or incur any obligation of any nature that is in

substantial conflict with the proper discharge of the employee’s

duties in the public interest.

Sec. 4 Conflicts of Commitment Prohibited. Activities on behalf of

outside entities or individuals must not interfere with a U. T.

System Administration or U. T. System institution employee’s

fulfillment of his/her duties and responsibilities to the University.

Such conflicts of commitment may arise regardless of the

location of these activities (on or off campus), the type of

outside entity (individual, for-profit, not-for-profit, or

government), or the level of compensation (compensated or

unpaid).

Sec. 5 Approval and Disclosure Requirements. U. T. System

Administration and each institution shall adopt policies that

clearly delineate the nature and amount of permissible outside

work or activities. The policies shall include provisions to

prevent, identify, and manage conflicts of interest and conflicts

Page 1 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 30104

of commitment and shall include specific processes for

disclosing such work or outside activities, as well as the

procedures for obtaining and documenting institutional approval

to carry out such engagements, consistent with this Rule.

5.1 Approval Required for Compensated Outside Work or

Activity and for Outside Board Service. No full-time

member of the faculty or administrative and professional

staff employed by the U. T. System or any of the

institutions on a 12-month or nine-month basis shall be

employed in any outside work or activity or receive from

an outside source any compensation, or serve on an

outside board until a description of the nature and extent

of the employment or activity and the range of any

compensation has been timely filed with and approved by

the president of the institution, or his or her designee(s),

or by the Chancellor or his or her designee(s) for U. T.

System Administration employees, as set forth in the

policies of the U. T. System or the Handbook of

Operating Procedures of each institution. Filings and

approvals for the presidents will be made to the

appropriate Executive Vice Chancellor. Filings and

approvals for the Chancellor, the General Counsel to the

Board, and the Chief Audit Executive will be made to the

Chairman of the Board.

5.2 Additional Financial Disclosures. All officers and

employees shall, in a timely manner, furnish such

additional written financial disclosures as may be

required by State or federal authorities or by U. T.

System Administration or institutional authorities.

5.3 Electronic Database. Disclosure of outside activity,

documentation of requests for approval, and subsequent

approvals required under Section 5.1, above, shall be

maintained in an electronic database, following

guidelines provided by U. T. System Administration.

Sec. 6 Free Advice. Even in the case of employees specifically

engaged only in residence work, there exists an obligation,

usually intermittent, to furnish expert knowledge and counsel for

public benefit free of charge, provided that the meeting of this

obligation by an employee does not interfere with his or her

regular duties, and provided further that in meeting this

Page 2 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 30104

obligation an employee shall avoid undue competition with

legitimate private agencies.

Sec. 7 Separation of Activities. If a U. T. System Administration or

U. T. System institution employee engages in any outside

activity, the employee must make it clear to those who employ

him or her that the work is unofficial and that the name of the

U. T. System or any of the institutions is not in any way to be

connected with the employee’s name, except when used to

identify the member as the author of work related to the

employee’s academic or research area as more fully described

in Rule 90101 of the Regents’ Rules and Regulations

concerning general rules for intellectual property. No employee

engaged in outside activities shall use in connection therewith

the official stationery of the System, give as a business address

any building or department of the U. T. System or any of the

institutions, or any University telephone extension.

Sec. 8 Use of University Property. U. T. System Administration and

U. T. System institutional property may only be used for State

purposes appropriate to the System or institutional mission.

Sec. 9 Opinions for Advertising Purposes. Every employee must

protect the U. T. System and U. T. System institutions against

the use of opinions for advertising purposes.

Sec. 10 Noncompliance. Noncompliance with this Rule subjects an

employee to disciplinary action, including termination, in accord

with applicable procedures.

3. Definitions

Compensation – any form of benefit including but not limited to salary,

retainer, honoraria, intellectual property rights, or royalties, or promised,

deferred, or contingent interest. 1

4. Relevant Federal and State Statutes

Texas Government Code Chapter 572 – Personal Financial Disclosure,

Standards of Conduct, and Conflict of Interest

1

Sponsored or reimbursed travel is included for consistency with Public Health Service regulations and

UTS175 governing conflicts of interest in research [42 CFR Sec. 50.603, definition of “significant financial

interest,” at (2)]. It does not apply to travel that is reimbursed or sponsored by a Federal, state, or local

government agency, an institution of higher education, an academic teaching hospital, a medical center, or

a research institute that is affiliated with an institution of higher education.

Page 3 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 30104

5. Relevant System Policies, Procedures, and Forms

Regents’ Rules and Regulations, Rule 30103 – Standards of Conduct

Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual

Property: Purpose, Scope, Authority

The University of Texas System Office of General Counsel website on

ethics

The University of Texas System Policy UTS118, Statement of Operating

Policy Pertaining to Dishonest or Fraudulent Activities

The University of Texas System Policy UTS123, Policy on Service on

Outside Boards

The University of Texas System Policy UTS134, Code of Ethics for

Financial Officers and Employees

The University of Texas System Policy UTS175, Disclosure of Significant

Financial Interests and Management and Reporting of Financial Conflicts

of Interest in Research

The University of Texas System Policy UTS180, Conflicts of Interest,

Conflicts of Commitment, and Outside Activities

The University of Texas System Administration Internal Policy INT129,

Outside Employment

The University of Texas System Administration Internal Policy INT180,

Conflicts of Interest, Conflicts of Commitment, and Outside Activities

6. Who Should Know

Board of Regents

Employees

7. System Administration Office(s) Responsible for Rule

Office of General Counsel

8. Dates Approved or Amended

February 12, 2015

Page 4 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 30104

July 11, 2012

Editorial amendment to Numbers 4 and 5 made April 17, 2008

December 10, 2004

9. Contract Information

Questions or comments regarding this Rule should be directed to:

• bor@utsystem.edu

Page 5 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90101

1. Title

Rules for Intellectual Property: Purpose, Scope, Authority

2. Rule and Regulation

Sec. 1 Purpose. To balance the interests of the many contributors to

the substantial creation of intellectual property at and by the

U. T. System, the Board of Regents promulgates these Rules

on intellectual property with the purpose to (a) provide certainty

in research pursuits and technology-based relationships with

third parties; (b) create an optimal environment for research,

development, and commercialization opportunities with private

industry; and (c) encourage the timely and efficient protection

and management of intellectual property.

Sec. 2 Individuals Subject to this Rule. This intellectual property Rule

applies (a) to all persons employed by the U. T. System or any

U. T. System institution, including, but not limited to, full and

part-time faculty and staff and visiting faculty members and

researchers, and (b) to anyone using the facilities or resources

of the U. T. System or any U. T. System institution, including,

but not limited to, students enrolled at a U. T. System institution

such as in an undergraduate or graduate degree program or

certificate program, and postdoctoral and predoctoral fellows.

The Board of Regents automatically owns the intellectual

property created by individuals subject to this Rule that is

described in Sections 3, 5, and 6 below and in Rule 90102,

Sections 2 and 3. Accordingly, all individuals subject to this Rule

must assign and do hereby assign their rights in such

intellectual property to the Board of Regents. Moreover,

individuals subject to this Rule who create such intellectual

property (creators) shall promptly execute and deliver all

documents and other instruments as are reasonably necessary

to reflect the Board of Regents’ ownership of such intellectual

property. A creator of intellectual property owned by the Board

of Regents has no independent right or authority to convey,

assign, encumber, or license such intellectual property to any

entity other than the Board of Regents.

Sec. 3 Intellectual Property Included. Except as set forth in Sections 4

and 5 below and Rule 90102 of the Regents’ Rules and

Regulations, this Rule applies to all types of intellectual

property, including, but not limited to, any invention, discovery,

creation, know-how, trade secret, technology, scientific or

Page 1 of 4

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90101

technological development, research data, works of authorship,

and computer software regardless of whether subject to

protection under patent, trademark, copyright, or other laws.

Sec. 4 Interest in Certain Copyrights. Notwithstanding Section 3

above, the Board of Regents will not assert an ownership

interest in the copyright of scholarly or educational materials,

artworks, musical compositions, and literary works related to the

author's academic or professional field, regardless of the

medium of expression. This exemption applies to works

authored by students, professionals, faculty, and nonfaculty

researchers. The Board of Regents encourages these creators

to manage their copyrights in accordance with the guidelines

concerning management and marketing of copyrighted works

consistent with applicable institutional policies.

Sec. 5 Copyright Interest in Certain Software. The Board of Regents

asserts ownership in software; however, copyright in original

software that is content covered by Section 4 above or that is

integral to the presentation of such content shall be owned by

the creator in accordance with Section 4 above.

Sec. 6 Works for Hire and Institutional Projects. Notwithstanding the

provisions of Sections 4 and 5 above, the Board of Regents

shall have sole ownership of all intellectual property created by

(a) an employee, student, or other individual or entity

commissioned, required, or hired specifically to produce such

intellectual property by the U. T. System or any U. T. System

institution, and (b) an employee, student, or other individual as

part of an institutional project. Except as may be provided

otherwise in a written agreement approved by the institution or

the U. T. System, the provisions of the Regents’ Rules and

Regulations, Rule 90102, Section 2.5, relating to division of

royalties, shall not apply to intellectual property owned solely by

the Board of Regents pursuant to this Section.

Sec. 7 Role of Creator. Any person subject to this Rule who creates

intellectual property (other than a work for hire under Section 6

above or on government or other sponsored research projects

where the grant agreements provide otherwise) may give

reasonable input on commercialization of inventions; provided

however, that the president(s) of the applicable institution(s), or

his or her designee(s), in his or her sole discretion, will make

final decisions concerning whether and how to develop and

commercialize an invention.

Page 2 of 4

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90101

Sec. 8 Use of Facilities and Resources. Neither the facilities nor the

resources of the U. T. System or any U. T. System institution

may be used (a) to create, develop, or commercialize

intellectual property outside the course and scope of

employment of an individual (see Regents’ Rules and

Regulations, Rule 90102, Section 1) or (b) to further develop or

commercialize intellectual properties that have been released to

an inventor (see Regents’ Rules and Regulations, Rule 90102,

Sections 2.2 and 2.3) except as the institution's president may

approve where the U. T. System retains an interest under the

terms of the release.

Sec. 9 Use of Research Data. Research data or results created by an

employee are owned by the Board of Regents and, except to

the extent that rights to such research data are contractually

assigned or licensed to another by the Board of Regents, the

creator shall have a nonexclusive license to use such data for

nonprofit educational, research, and scholarly purposes within

the scope of the employee's employment, subject to adherence

to other provisions of this Rule.

Sec. 10 Limited License to Institution. Notwithstanding Section 4 above

and as reasonably required for the limited purpose of continuing

an institution’s scheduled course offerings, the Board of

Regents retains for one year following the loss of a course

instructor’s services, a fully paid-up, royalty-free, nonexclusive

worldwide license to use, copy, distribute, display, perform, and

create derivative works of materials prepared by the instructor

for use in teaching a course (including lectures, lecture notes,

syllabi, study guides, bibliographies, visual aids, images,

diagrams, multimedia presentations, examinations, web-ready

content, and educational software).

3. Definitions

None

4. Relevant Federal and State Statutes

Texas Education Code, Chapter 153 – Centers for Technology

Development and Transfer

5. Relevant System Policies, Procedures, and Forms

Page 3 of 4

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90101

Regents’ Rules and Regulations, Rule 90102 – Intellectual Property

Rights and Obligations

Regents’ Rules and Regulations, Rule 90103 – Equity Interests

Regents’ Rules and Regulations, Rule 90104 – Business Participation and

Reporting

Regents’ Rules and Regulations, Rule 90105 – Execution of Legal

Documents Related to Intellectual Property

Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual

Property

6. Who Should Know

Administrators

Faculty

Staff

Students

7. System Administration Office(s) Responsible for Rule

Office of General Counsel

8. Dates Approved or Amended

Editorial amendment to Number 4 made December 8, 2014

November 10, 2011

Editorial amendments made October 6, 2011

Editorial amendment to Sec. 4 made September 29, 2011

February 8, 2007

December 10, 2004

9. Contact Information

Questions or comments regarding this Rule should be directed to:

• bor@utsystem.edu

Page 4 of 4

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90102

1. Title

Intellectual Property Rights and Obligations

2. Rule and Regulation

Sec. 1 Intellectual Property Owned by the Creator. Intellectual property

developed or created by a U. T. System employee outside the

course and scope of employment of the individual which is

developed or created on his/her own time and without the

support of the U. T. System or any U. T. System institution or

use of their facilities or resources, is the exclusive property of

the creator.

Sec. 2 Intellectual Property Owned by U. T. System. Intellectual

property either developed within the course and scope of

employment of the individual or resulting from activities

performed on U. T. System time, or with support of State funds,

or from using facilities or resources owned by the U. T. System

or any U. T. System institution (other than incidental use) is

owned by the Board of Regents. To effectively implement this

Rule and provide certainty to individuals subject to this Rule, a

U. T. System institution may promulgate institutional rules,

regulations, or policies defining the course and scope of

employment for persons or classes of persons and specifying

that authorized (pursuant to existing rules and procedures)

outside employment is or is not within an employee’s course

and scope of employment.

2.1 Determination of U. T. System’s Interest. Before

intellectual property subject to ownership by the Board of

Regents is disclosed to any party outside the U. T.

System, to the public generally, or for commercial

purposes, and before publishing same, the creator shall

submit a reasonably complete and detailed disclosure of

such intellectual property to the president of the creator's

institution for determination of the U. T. System's interest.

The institution will regularly and promptly communicate

with the creator during this decision-making process.

2.2 Election Not to Assert Ownership Interest. If the

institution’s president elects not to assert U. T. System's

interest, the U. T. System Office of General Counsel and

the primary creator shall be notified in writing within

20 business days after a decision is made not to assert

Page 1 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90102

ownership rights that the institution will offer the released

intellectual property to the creator (see Rule 90101,

Section 8), except where prohibited by law or contractual

obligations or requirements. Thereafter, the creator will

be free to obtain and exploit a patent or other intellectual

property protection in his or her own right and the U. T.

System and U. T. System institutions shall not have any

further rights, obligations, or duties with respect thereto

except that, in appropriate circumstances, the institution’s

president may elect to impose certain limitations or

obligations, including, but not limited to, a nonexclusive

license for the creator, U. T. System, and any U. T.

System institution to use the released invention for

patient care, teaching, scholarly and other academically

related purposes, and nonprofit research.

2.3 Later Release of Invention. Except where prohibited by

law or contractual obligations or requirements, the

institution’s president may elect to release an invention to

its creator at any time after asserting U. T. System's

interest, with notice to the U. T. System Office of General

Counsel (see Rule 90101, Section 8); however, such a

release must include provisions for the recovery by U. T.

System of patent and licensing expenses, if any, as well

as the retention of income rights by U. T. System, and

may include certain limitations or obligations, including

those set forth in Section 2.2 above.

2.4 Protection and Commercialization of Intellectual Property.

With respect to intellectual property in which the U. T.

System or any U. T. System institution asserts an

interest, the institution’s president, or his or her designee,

shall decide how, when, and where the intellectual

property is to be protected and commercialized. Outside

counsel services may be contracted with the prior

consent of the U. T. System Vice Chancellor and General

Counsel and, if required by law, the approval of the

Attorney General. U. T. System shall establish an

intellectual property data collection system.

2.5 Reimbursement of Licensing Costs and Allocation of

Income. In those instances where the U. T. System or

any U. T. System institution licenses rights in intellectual

property to third parties, and other than with regard to

elections under Section 2.2 above, the costs of licensing,

Page 2 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90102

including, but not limited to, the costs to operate and

support a technology transfer office and the costs of

obtaining a patent or other protection for the property on

behalf of the Board of Regents must first be recaptured

from any royalties or other license payments received by

the U. T. System or any U. T. System institution. The

remainder of any such income (including but not limited

to license fees, prepaid royalties, minimum royalties,

running royalties, milestone payments, and sublicense

payments) shall be divided as follows:

50% to creator(s)

50% to U. T. System,

provided, however, that a creator may disclaim his/her

interest in such income, in which case the institution shall

receive the creator’s share and shall decide, in its sole

discretion, if, how, and when to disburse such income.

With the prior approval of the Board and after review by

the U. T. System Vice Chancellor and General Counsel

and the appropriate Executive Vice Chancellor, an

institution may adjust the allocation of royalties set forth

herein for all creators.

Sec. 3 Intellectual Property Involving Sponsored Research. Intellectual

property resulting from research supported by a grant or

contract with the government (federal and/or state), or an

agency thereof, with a nonprofit or for-profit nongovernmental

entity, or by a private gift or grant to the U. T. System or any

U. T. System institution is owned by the Board of Regents.

3.1 Nonconformance with Intellectual Property Guidelines.

Administrative approval of such grants and contracts

containing provisions inconsistent with this Rule or other

policies and guidelines adopted by the Board imply a

decision that the value to the U. T. System or any U. T.

System institution of receiving the grant or performing the

contract outweighs the impact of any nonconforming

provisions on the intellectual property policies and

guidelines of the U. T. System or any U. T. System

institution (Reference Regents’ Rules and Regulations,

Rule 90105, Section 2).

Page 3 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90102

3.2 Conflicting Provisions. Subject to approval as described

in Subsection 3.1 above, the intellectual property policies

and guidelines of the U. T. System or any U. T. System

institution are subject to, and thus amended and

superseded by, the specific terms pertaining to

intellectual property rights included in state and/or federal

grants and contracts, or grants and contracts with

nonprofit and for-profit nongovernmental entities or

private donors, to the extent of any such conflict.

3.3 Cooperation with Necessary Assignments. Those

persons subject to this Rule whose intellectual property

creations result from a grant or contract with the

government (federal and/or state), or any agency thereof,

or with a nonprofit or for-profit nongovernmental entity, or

by private gift to the U. T. System or any U. T. System

institution shall promptly execute and deliver such

documents and other instruments as are reasonably

necessary for the U. T. System or any U. T. System

institution to discharge its obligations, expressed or

implied, under the particular agreement.

3.4 Sharing of Royalty Income. In the event that two or more

persons who are entitled to share royalty income

pursuant to Section 2.5 of this Rule (or equity pursuant to

Regents’ Rules and Regulations, Rule 90103 concerning

equity interests) cannot agree in writing on an

appropriate sharing arrangement, the institution’s

president shall determine that portion of the royalty

income to which the creators are entitled under the

circumstances and such amount will be distributed to

them accordingly. In the event that the creators are

located at two or more U. T. System institutions and

cannot agree, such royalty (or equity) distribution

decision shall be made by the involved institutions’

presidents (or their respective designees). In the further

event that the involved presidents cannot agree, then the

Chancellor (or designee) shall decide and his/her

decision shall be binding on the creators.

3.5 Geographical Scope of Protection. A decision by the

U. T. System or any U. T. System institution to seek

patent or other available protection for intellectual

property covered by Section 2 of this Rule shall not

obligate the U. T. System or any U. T. System institution

Page 4 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90102

to pursue such protection in all national jurisdictions.

The U. T. System's decision relating to the geographical

scope and duration of such protection shall be final.

3. Definitions

None

4. Relevant Federal and State Statutes

Texas Education Code, Chapter 153 – Centers for Technology

Development and Transfer

5. Relevant System Policies, Procedures, and Forms

Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual

Property: Purpose, Scope, Authority

Regents’ Rules and Regulations, Rule 90103 – Equity Interests

Regents’ Rules and Regulations, Rule 90104 – Business Participation and

Reporting

Regents’ Rules and Regulations, Rule 90105 – Execution of Legal

Documents Related to Intellectual Property

Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual

Property

6. Who Should Know

Administrators

Faculty

Staff

Students

7. System Administration Office(s) Responsible for Rule

Office of General Counsel

8. Dates Approved or Amended

Editorial amendment to Number 4 made December 8, 2014

Editorial amendment to Sec. 2.5 made May 23, 2013

Page 5 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90102

November 10, 2011

Editorial amendments made October 6, 2011

Editorial amendment to Sec. 2.5 made September 1, 2010

February 8, 2007

December 10, 2004

9. Contact Information

Questions or comments regarding this Rule should be directed to:

• bor@utsystem.edu

Page 6 of 5

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90103

1. Title

Equity Interests

2. Rule and Regulation

Sec. 1 Agreements with Business Entities. In agreements with

business entities relating to rights in intellectual property owned

by the Board of Regents, the U. T. System or any U. T. System

institution may receive equity interests as partial or total

compensation for the rights conveyed. In any such instance, the

institution where the intellectual property was created may elect,

at its option, to share an equity interest, dividend income, or the

proceeds of the sale of an equity interest with the creator(s) in

the same manner as royalties are shared pursuant to Regents’

Rules and Regulations, Rule 90102, Section 2.5. The U. T.

System or any U. T. System institution may also receive equity

interests in a business entity as consideration for the institution's

role as a founder, or for other contributions made to the

business entity other than as a licensor, and institution shall not

be obligated to share such equity interests with the creator(s).

Sec. 2 Creator Holding Equity and Managing Conflict of Interest.

Employees of the U. T. System or any U. T. System institution

who conceive, create, discover, invent, or develop intellectual

property may hold an equity interest in a business entity that

has an agreement with the U. T. System or any U. T. System

institution relating to the research, development, licensing, or

exploitation of that intellectual property only so long as the

institution where the intellectual property was developed is in full

compliance with the requirements to have, implement, and

enforce for that employee an effective conflict of interest

management plan approved by the institution's president as set

forth in the U. T. System’s Procedure for Obtaining Approval of

Plan to Manage Conflicts of Interest

(http://www.utsystem.edu/ogc/IntellectualProperty/ProcedureMa

nagingConflicts.htm). In any case where actual conflict of

interest is found, the employee may be required to divest the

equity interest or terminate affected research.

Sec. 3 Employee Equity Interests. The U. T. System or any U. T.

System institution may, but shall not be obligated to, negotiate

an equity interest on behalf of any employee as a part of an

agreement between the U. T. System or any U. T. System

institution and a business entity relating to intellectual property

Page 1 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90103

conceived, created, discovered, invented, or developed by the

employee and owned by the Board of Regents.

3. Definitions

None

4. Relevant Federal and State Statutes

Texas Education Code, Chapter 153 – Centers for Technology

Development and Transfer

5. Relevant System Policies, Procedures, and Forms

Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual

Property: Purpose, Scope, Authority

Regents’ Rules and Regulations, Rule 90102 – Intellectual Property

Rights and Obligations

Regents’ Rules and Regulations, Rule 90104 – Business Participation and

Reporting

Regents’ Rules and Regulations, Rule 90105 – Execution of Legal

Documents Related to Intellectual Property

Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual

Property

6. Who Should Know

Administrators

Faculty

Staff

Students

7. System Administration Office(s) Responsible for Rule

Office of General Counsel

8. Dates Approved or Amended

Editorial amendment to Number 4 made December 8, 2014

November 10, 2011

Editorial amendments made October 6, 2011

Page 2 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90103

February 8, 2007

December 10, 2004

9. Contact Information

Questions or comments regarding this Rule should be directed to:

• bor@utsystem.edu

Page 3 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90104

1. Title

Business Participation and Reporting

2. Rule and Regulation

Sec. 1 Approval to Serve as Officer or Director. Any individual subject

to Rule 90101, Section 2 who conceives, creates, discovers,

invents, or develops intellectual property may serve, in his/her

individual capacity, as a member of the board of directors or

other governing board or as an officer or an employee (other

than as a consultant) of a business entity that has an agreement

with the U. T. System or any U. T. System institution relating to

the research, development, licensing, or exploitation of that

intellectual property only so long as the institution where the

intellectual property was developed is in full compliance with the

requirements to have, implement, and enforce for that individual

an effective conflict of interest management plan approved by

the institution's president as set forth in the U. T. System’s

Procedure for Obtaining Approval of Plan to Manage Conflicts of

Interest. In any case where actual conflict of interest is found,

the individual may be required to terminate the business

relationship or the relevant research.

Sec. 2 Request for Employee to Serve as Officer or Director. When

requested by the Board of Regents, an employee may serve on

behalf of the Board of Regents as a member of the board of

directors or other governing board of a business entity that has

an agreement with the U. T. System or any U. T. System

institution relating to the research, development, licensing, or

exploitation of intellectual property, but may not accept any

consideration offered for service on such board.

Sec. 3 Report of Equity Interest and Service as Officer or Director. Any

individual subject to Regents’ Rules and Regulations, Rule

90101, Section 2; Rule 90103, Section 2; and Sections 1 or 2

above must report in writing to the president of the institution the

name of any business entity in which the person has an interest

or for which the person serves as a director, officer, or

employee and shall be responsible for submitting a revised

written report upon any change in the interest or position held by

such person in such business entity. The Office of Technology

Commercialization will file a report by October 1 of each year

with the Board of Regents for transmittal to the Comptroller of

Page 1 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90104

Public Accounts as required by Section 51.912 and Section

51.005, Texas Education Code.

3. Definitions

None

4. Relevant Federal and State Statutes

Texas Education Code Section 51.005 – Reports

Texas Education Code Section 51.912 – Equity Ownership: Business

Participation

Texas Education Code, Chapter 153 – Centers for Technology

Development and Transfer

5. Relevant System Policies, Procedures, and Forms

Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual

Property: Purpose, Scope, Authority

Regents’ Rules and Regulations, Rule 90102 – Intellectual Property

Rights and Obligations

Regents’ Rules and Regulations, Rule 90103 – Equity Interests

Regents’ Rules and Regulations, Rule 90105 – Execution of Legal

Documents Related to Intellectual Property

Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual

Property

6. Who Should Know

Administrators

Faculty

Staff

Students

7. System Administration Office(s) Responsible for Rule

Office of General Counsel

Page 2 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90104

8. Dates Approved or Amended

Editorial amendment to Number 4 made December 8, 2014

November 10, 2011

Editorial amendments made October 6, 2011

Editorial amendment to Sec. 3 made September 29, 2011

Editorial amendment to Sec. 3 made September 1, 2010

Editorial amendment to Sec. 3 made November 3, 2009

February 8, 2007

December 10, 2004

9. Contact Information

Questions or comments regarding this Rule should be directed to:

• bor@utsystem.edu

Page 3 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90105

1. Title

Execution of Legal Documents Related to Intellectual Property

2. Rule and Regulation

Sec. 1 Execution of Agreements. Agreements that grant an interest in

Board intellectual property, including but not limited to option

and license agreements and contracts with corporate sponsors,

may be executed and delivered in accordance with the

provisions of the Regents’ Rules and Regulations, Rule 10501,

after any required review by the U. T. System Office of General

Counsel.

Sec. 2 Agreements That Do Not Conform to the Rules. Any agreement

that deviates substantially from the basic intellectual property

Rule of the U. T. System as set out in the Regents’ Rules and

Regulations may be executed and delivered as set forth in

Section 1 above if, in the judgment of the institution’s president

and after any required review by the U. T. System Office of

General Counsel, the benefits from the level of funding for

proposed research and/or other consideration from a sponsor,

licensee, or other party outweigh any potential disadvantage

that may result from the Rule deviation.

Sec. 3 Authority to Execute Documents. The Chancellor, the

appropriate Executive Vice Chancellor, or the Vice Chancellor

and General Counsel may execute, on behalf of the Board of

Regents, legal documents relating to the Board's rights in

intellectual property, including, but not limited to, applications,

declarations, affidavits, powers of attorney, disclaimers, and

other such documents relating to patents and copyrights;

applications, declarations, affidavits, affidavits of use, powers of

attorney, and other such documents relating to trademarks; and

corporate documents related to the formation of new

companies. In addition, the institution’s president may execute,

on behalf of the Board, (a) institutional applications for

registration or recordation of transfers of ownership and other

such documents relating to copyrights and (b) corporate

documents related to the formation of new companies if (i) first

reviewed and approved by the U. T. System Office of General

Counsel or (ii) first reviewed and approved by institution’s

outside counsel working under a U. T. System Office of General

Counsel-approved outside counsel agreement.

Page 1 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90105

3. Definitions

None

4. Relevant Federal and State Statutes

Texas Education Code, Chapter 153 – Centers for Technology

Development and Transfer

5. Relevant System Policies, Procedures, and Forms

Regents’ Rules and Regulations, Rule 10501 – Delegation to Act on

Behalf of the Board

Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual

Property: Purpose, Scope, Authority

Regents’ Rules and Regulations, Rule 90102 – Intellectual Property

Rights and Obligations

Regents’ Rules and Regulations, Rule 90103 – Equity Interests

Regents’ Rules and Regulations, Rule 90104 – Business Participation and

Reporting

Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual

Property

6. Who Should Know

Administrators

Faculty

Staff

Students

7. System Administration Office(s) Responsible for Rule

Office of General Counsel

8. Dates Approved or Amended

Editorial amendment to Number 4 made December 8, 2014

Editorial amendments made October 6, 2011

Editorial amendment to Sec. 3 made September 1, 2010

February 8, 2007

Page 2 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90105

December 10, 2004

9. Contact Information

Questions or comments regarding this Rule should be directed to:

• bor@utsystem.edu

Page 3 of 3

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90106

1. Title

Income from Intellectual Property

2. Rule and Regulation

Sec. 1 Use of Income. The portion of the net income the U. T. System

or any U. T. System institution retains from royalties and any

other intellectual property-related income shall be used by the

U. T. System institution where the income-producing intellectual

property originated.

3. Definitions

None

4. Relevant Federal and State Statutes

Texas Education Code, Chapter 153 – Centers for Technology

Development and Transfer

5. Relevant System Policies, Procedures, and Forms

Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual

Property: Purpose, Scope, Authority

Regents’ Rules and Regulations, Rule 90102 – Intellectual Property

Rights and Obligations

Regents’ Rules and Regulations, Rule 90103 – Equity Interests

Regents’ Rules and Regulations, Rule 90104 – Business Participation and

Reporting

Regents’ Rules and Regulations, Rule 90105 – Execution of Legal

Documents Related to Intellectual Property

6. Who Should Know

Administrators

Faculty

Staff

Students

Page 1 of 2

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90106

7. System Administration Office(s) Responsible for Rule

Office of General Counsel

8. Dates Approved or Amended

Editorial amendment to Number 4 made December 8, 2014

November 10, 2011

Editorial amendments made October 6, 2011

December 10, 2004

9. Contact Information

Questions or comments regarding this Rule should be directed to:

• bor@utsystem.edu

Page 2 of 2