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