Roger Masson is an engineer and lawyer who is passionate about innovation and guiding companies, large and small, through regulatory mazes so they can innovate and thrive. He focuses his practice in intellectual property and craft brewery and distillery law.
Mr. Masson handles patent, trade secret and trademark matters, including arbitration, litigation, opinion and prosecution work.
Patent Prosecution: Mr. Masson has written and successfully prosecuted patent applications — in the United States, China, Europe and Japan — relating to dispensing, food and chemical processing, food products, night vision, ophthalmic solutions, and restaurant equipment.
Intellectual Property Dispute Resolution: Mr. Masson represents clients in patent litigation and arbitration, trade secret litigation, and trademark litigation concerning contact lenses, golf clubs, insurance, night vision equipment, specialty chemicals and telephony.
Intellectual Property Opinions: Mr. Masson advises clients about artificial intelligence, fine chemicals, food products, nutraceuticals and restaurant equipment.
Craft Brewery and Distillery Law
Even after 20 years of home brewing and tasting craft beers, Mr. Masson is still excited about craft brewing because craft brewers are still creating, experimenting and taking risks with their beers. He and his colleagues in the firm can assist breweries and distilleries with all their legal needs, including: founding a business, licensing, branding, distributing, contracting, advertising and managing employees.
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.
A selection of Mr. Masson's representative matters includes:
As second chair, achieved a multimillion dollar award for breach of a patent license relating to optics in a complex International Chamber of Commerce arbitration seated in London between an American licensor client and a French defense contractor.
- Discovered massive spoliation of evidence in trade secrets civil litigation relating to fine chemicals. This discovery culminated in defendant pleading guilty to four criminal counts of unauthorized possession of stolen trade secrets and agreeing to a permanent injunction and a multimillion dollar judgment for our client.
- Successfully defended a home brew store against a trademark owner's assertions of infringement in two cease-and-desist letters.
- Performed environmental due diligence for purchase of an American chemical company by a European purchaser 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 in the United States and in 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.
- Successfully prosecuted patents for a natural food product for a Fortune 100 company. Highlights included defeating a post-grant opposition proceeding before the EPO 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, China and Japan.
- "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.
- "The 'Trump Effect' on IP," Intellectual Property Magazine, February 1, 2017.
- U.S. Supreme Court Substantially Devalues Design Patent Damages on Multicomponent Products: What Design Patent Holders Need to KnowDecember 21, 2016Intellectual Property Update
- September 2, 2015Intellectual Property Update
- June 24, 2014Intellectual Property Update
- May 9, 2014Intellectual Property Update
- April 30, 2014Intellectual Property Update
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
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Western District of Michigan
- U.S. Patent and Trademark Office