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Roger Masson is an engineer and lawyer who focuses his practice in the areas of intellectual property and environmental law helping individuals and large and small companies including inventors, chemical companies, and manufacturers. Mr. Masson is an avid home brewer and combines his related insights with his legal skills to help craft brewers.

His intellectual property experience encompasses patent, trade secret and trademark matters, including arbitration, litigation, opinion and prosecution work. Mr. Masson has written and successfully prosecuted patent applications in the United States, China, Europe and Japan relating to: food and chemical processing, food products, night vision, ophthalmic solutions, and restaurant equipment. His litigation experience includes patent litigation and arbitration, trade secret litigation, and trademark litigation concerning contact lenses, golf clubs, insurance, night vision equipment, specialty chemicals and telephony. Mr. Masson's opinion work includes freedom to practice, clearance, invalidity and design-around work involving artificial intelligence, fine chemicals, food products, nutraceuticals, industrial equipment and restaurant equipment.

Professional Background

Prior to joining Hinshaw & Culbertson LLP, Mr. Masson was an associate at an intellectual property boutique firm in Chicago.

Before beginning his legal career, Mr. Masson was a licensed professional engineer and held environmental and chemical engineering positions at two engineering firms.  In those roles, he managed cleanup at a state Superfund site, designed several cleanup systems, and obtained approval for production of two new chemicals from the U.S. Environmental Protection Agency. During his undergraduate studies, Mr. Masson gained technical engineering experience through two co-op programs with one of the largest manufacturers in the United States and one of the world's largest petroleum companies.

Representative Matters

A selection of Mr. Masson's representative matters includes:

  • Successfully prosecuted patents in the U.S. Patent and Trademark Office and the European Patent Office (EPO) for a solo inventor obtaining broad coverage in the material sciences. In the EPO, successfully overcame a unity of invention rejection allowing broad coverage to be achieved in a single patent.
  • Discovered massive spoliation of evidence in trade secrets civil litigation relating to fine chemicals, which resulted in defendant being criminally charged.  Ultimately the defendant plead guilty to four criminal counts of unauthorized possession of stolen trade secrets and agreed to a permanent injunction and a multimillion dollar judgment for the client.
  • Obtained a finding of breach of patent license and patent validity relating to optics in an International Chamber of Commerce arbitration between an American licensor and a French defense contractor. A decision on damages is pending.
  • Successfully defended a home brew store against a trademark owner's assertions of trademark infringement in two cease-and-desist letters.
  • Performed environmental due diligence for purchase of an American chemical company by a European company and provided guidance to purchaser for obtaining approval from Committee on Foreign Investment in the United States and the Directorate of Defense Trade Controls.
  • Successfully prosecuted patents for a natural food product for a Fortune 100 company. Highlights included defeating a post-grant opposition proceeding before the European Patent Office and overcoming a rejection by the Venezuelan patent office by writing arguments partially in Spanish referencing the specific wording of substantive Venezuelan patent law.
  • Successfully drafted and prosecuted patents for a user interface for restaurant equipment for a Fortune 150 company in the United States, Australia, Canada and Japan.

Presentations

  • "Brewery and Distillery Law in Illinois," National Business Institute, Naperville, Illinois, March 21, 2017.
  • "Advanced Intellectual Property Law," Patentable Subject Matter In and Out of the U.S., webcast, National Business Institute, December 2014.
  • "Advanced Intellectual Property Law," The Current State and Developments in Divided and Indirect Infringement Law, webcast, National Business Institute, December 2014.
  • "Advanced Intellectual Property Law," Roundup of 2014 Supreme Court Patent Cases Regarding Indefiniteness, Claim Construction, Award of Attorney Fees, Licensee Challenges and Their Fallout, webcast, National Business Institute, December 2014.

Education

J.D., DePaul University College of Law, 2004

  • Intellectual Property Law Society, Webmaster and Digest Editor, 2002–2003

B.S., Chemical Engineering, Northwestern University, 1991

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