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[PHInventor]

Say I have invented an amazing new hairwashing device that allows you to wash your hair while driving. I am allowed claims for the hairwasher.

However, I am not allowed claims for the shampoo pellets that go into the hairwasher.  Prior art hairwashers give instructions to use dollops of regular shampoo, but the other hairwashers themselves simply do not perform well enough to warrant the development of specially-packaged convenient shampoo pellets.  The shampoo pellets are considered obvious improvements over existing technology (e.g., they are just like dishwasher pellets but with shampoo). And they easily fit into other hairwashers. My pellet claims are rejected.

I launch on the market.  My IP-protected hairwashers sell like hotcakes.  So do my non-protected shampoo pellets.  Within a few months, there are several competitors on the market selling shampoo pellets identical to mine, whereas 6 months ago there was not a single shampoo pellet seller on the market. 

Is there some way to protect the shampoo pellets, given that they are clearly filling a new need in the market and are hugely successful over the prior art?  Or was this simply a great idea, but not an invention?

[NJ Patent1]

PHinventor:  IMO probably no.  Even if you got an allowed claim (here in "shorthand") to a method of washing hair that included the step of "inserting the pelletts of claim ## into the hair-washing device of claim ##" (## = subject matter of respective claims), there would be little if any practical protectrion bcs - if I read the post correctly - the second-comer pellets can be used with other hair-washers (i.e. there are substantial non-infringing uses).  And you'd have to sue at least one of your own customers who used the second-comer pellets in order to establish an act of actual infringement as the required predicate act for allegation for inducement / contributory infringement.  Probably not a could business decision. 

There might also be some latent ant-trust issues.  But I have considered the issue for a while and just flag it for "further consideration".

You hinted at "secondary considerations" (commercial success) as a possible argument for the patentability of the pellets?  The success of the pellets may easily be due to the success of your hair-washer, not the composition of the pellets themselves.  Tough fight at the PTO. 

[PHInventor]

The success of the pellets may easily be due to the success of your hair-washer, not the composition of the pellets themselves.

Yes, you've nailed it exactly and clarified the real problem. Thank you.

It looks like I have reached the limit of my socially contracted monopoly.  I suppose that to truly benefit the consumer, it's up to me to create a non-obvious, unexpectedly better-performing shampoo pellet, but it would have to stand on its own merits.

[JimIvey]

First of all, the hypo reminded me of The Shaving Helmet.

Second, are you assuming that the shampoo pellets are, in fact, obvious as a condition of the hypo?  If so, I agree with the others so far.  However, I wouldn't immediately agree that shampoo pellets are obvious in view of dish washing soap pellets.

Of course, the famous Xerox anti-trust case would suggest away from any licensing agreement that would make purchasing all shampoo pellets from you a pre-condition(er?) of purchasing your helmet.

Regards.

[Patentstudent]

Just thinking out loud.
Can't you make your hairwasher such that the shampoo pellets must have a specific shape in order to fit in your hairwasher?
If that is possible, can't you protect the shape of the pellets by means of a design patent?

[PHInventor]

Just thinking out loud.
Can't you make your hairwasher such that the shampoo pellets must have a specific shape in order to fit in your hairwasher?
If that is possible, can't you protect the shape of the pellets by means of a design patent?

Hmm...good idea!  Right now it looks to be too high-cost / too low-yield to produce any sort of customized shape, so the pellets must simply be cylindrical. However, I could specify the length and the diameter of the cylinder, and the size could make it distinct from some other hairwashers. Would dimensions of a regular geometric shape be protectable as a design patent, or does that not fall under the category of an "ornamental design"?  (If it could be protected, which areas should be drawn, and which should be shaded?)

[PHInventor]

After some thought, I wanted to challenge this point:

The success of the pellets may easily be due to the success of your hair-washer, not the composition of the pellets themselves. 

What if it is just as legitimate to say that the success of the hair-washer is in turn dependent upon the successful introduction of the shampoo pellets?  Without the convenience of the pellets, no commuter would bother washing his/her hair in the car, even with my new hair-washer. And even though my new shampoo pellets are only modestly different from the old shampoo capsules, they are different enough to turn my hair-washer from something that works OK, to something that works amazingly well. 

Said another way: Given the prior existence of shampoo capsules, you can dismiss shampoo pellets as an obvious improvement, but the reason the prior art was not motivated to make this improvement was that no one predicted the strength of the synergy between the pellets and my new hair-washer.

Could the uncommon strength of synergy and commercial success of these paired products have any IP value in allowing a utility claim for the shampoo pellets?  BTW the synergy idea is not mine; I am shamelessly borrowing from a post that klaviernista had written in a prior topic under Obviousness.

[NJ Patent1]

PHInventor:  You raise an interesting chicken-or-egg twist and I can’t say that the argument is disingenuous.  What I can say - and I think most practitioners would agree - so-called “secondary indicia of nonobviousness” are usually an argument of last resort because they are seldom successful for a variety of reasons.  Personally, I’ve prevailed in a dozen or so chemical cases, and these involved unexpected results from a combination of elements / limitations that the Examiner alleged to be prima facie obvious.  This segues into your “synergy” argument.

Unexpected synergy is indeed an example of an unexpected result and, in a couple of cases, that’s what I argued and won on.  But in those cases, the “elements” were all in one claim.  If I haven’t gotten lost, we are discussing the patentability of the pellets independently of the patentable device, and you propose to argue that the pellets are not obvious based on commercial success, the commercial success being based on “synergy” between the device and the pellets.

Kudos for the creative argument, but I doubt it would fly.  The claim to the pellet per se must stand on its own two feet.  And IMO the commercial success of the pellet would have to be linked to something in the claim to the pellet. 

[PHInventor]

Unexpected synergy is indeed an example of an unexpected result....But in those cases, the “elements” were all in one claim.

Got it--makes sense.  So...what about a kit claim that combines the hairwasher and the pellets?  If the synergy argument holds, then the combined elements are an unexpected improvement over the hairwasher (assuming the hairwasher wins its own claim(s)).

I understand that inducement / contributory is not an easy road for protecting the pellets, but I assume a kit claim is better than nothing?

[NJ Patent1]

PHInventor:  Yes, that's a possible approach.  In fact, the patentability of the device might carry the kit claim.   But a kit claim would be of limited utility in this situation, so I didn't mention it.  The second-comer will be selling the pellets, not the kit.