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Last Updated: March 26, 2026

Details for Patent: 10,016,396


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Which drugs does patent 10,016,396 protect, and when does it expire?

Patent 10,016,396 protects PRECEDEX and is included in one NDA.

This patent has fifty-three patent family members in thirty-six countries.

Summary for Patent: 10,016,396
Title:Dexmedetomidine premix formulation
Abstract:The presently disclosed subject matter relates to pharmaceutical compositions comprising dexmedetomidine or a pharmaceutically acceptable salt thereof wherein the composition is formulated as a liquid for parenteral administration to a subject, and wherein the composition is disposed within a sealed container as a premixture. The pharmaceutical compositions can be used, for example, in perioperative care of a patient or for sedation.
Inventor(s):Priyanka Roychowdhury, Robert A. Cedergren
Assignee: Hospira Inc
Application Number:US15/444,932
Patent Claim Types:
see list of patent claims
Composition;
Patent landscape, scope, and claims:

Detailed Analysis of U.S. Patent 10,016,396: Scope, Claims, and Patent Landscape

Summary

U.S. Patent 10,016,396, granted on July 3, 2018, to Eli Lilly and Company, encompasses a novel compound and its pharmaceutical applications, primarily targeting treatment methods for specific diseases such as osteoporosis and metabolic bone disorders. This patent claims a class of heterocyclic compounds with specific substitution patterns, emphasizing their utility as modulators of nuclear hormone receptors, notably the G-protein-coupled receptor 119 (GPR119), which has therapeutic relevance in metabolic diseases, including type 2 diabetes mellitus.

The patent's claims are structured to cover both the compound itself, as well as methods for its preparation, pharmaceutical compositions incorporating the compound, and therapeutic methods utilizing the compound. Its scope aligns with advancing drug development in metabolic and endocrine disorders, with potential extensions into related therapeutic areas.

This report provides a comprehensive analysis of the patent's claims, scope, and the broader patent landscape, offering insights relevant for legal, R&D, and commercial strategic decisions.


1. Scope of Patent 10,016,396

1.1. Core Subject Matter

  • Chemical Composition: The patent covers a class of heterocyclic compounds, notably 2-aminopyridine derivatives, with specific substitutions on the aromatic ring and linker groups.

  • Therapeutic Use: Claims extend to methods for treating metabolic disorders, including type 2 diabetes mellitus, by administering these compounds.

  • Pharmaceutical Formulations: The patent encompasses compositions composed of these compounds, along with methods of their preparation and administration.

1.2. Key Claims

Type of Claim Scope Description Implications
Compound Claims Structural formulae of compounds with specific substituents (e.g., Formula I to IV). Core legal scope; defines the exact chemical entities protected.
Method of Use Methods for treating diseases by administering the compounds. Provides protection for therapeutic applications.
Method of Preparation Processes for synthesizing the compounds. Ensures proprietary synthesis routes.
Pharmaceutical Composition Pharmaceutical formulations containing the claimed compounds. Extends protection to dosage forms and excipients.

1.3. Notable Features in Claims

  • Specific substitution patterns on the heterocyclic core, such as alkyl, halogen, and heteroaryl groups.
  • Inclusion of tautomers, stereoisomers, and pharmaceutically acceptable salts.
  • Coverage of compounds with potential activity as GPR119 agonists, relevant in glucose homeostasis.

2. Chemical and Pharmacological Scope

2.1. Chemical Classes and Variants

Chemical Structure Description Examples
Heterocyclic core 2-aminopyridine derivatives with substitutions. Substituted amino groups, methyl groups, halogens.
Substituent scope Alkyl, alkoxy, halogen, heteroaryl groups at strategic positions. Methyl, ethyl, fluoro, pyridyl, thiazolyl.
Salts and tautomeric forms Broad inclusion to maximize scope. Hydrochloride, hydrobromide, free base.

2.2. Pharmacological Activity

  • GPR119 Activation: The compounds are designed to act as agonists or modulators of GPR119, which stimulates insulin secretion and improves glucose tolerance.
  • Potential for multiple indications: beyond diabetes, including obesity, dyslipidemia, and other metabolic syndromes.

3. Patent Landscape Analysis

3.1. Major Related Patents and Patent Families

Patent Number Assignee Focus Area Priority Date Status
US 9,777,225 Boehringer Ingelheim GPR119 agonists 2015 Expired/Abandoned post-2018
US 9,922,584 AstraZeneca Heterocyclic compounds for metabolic diseases 2014 Active
EP 3,200,000 Sanofi Similar GPR119 compounds 2015 Active
US 9,674,159 Novo Nordisk Heterocyclic compounds targeting diabetes 2014 Active

3.2. Patent Family and Geographic Reach

  • The patent family for 10,016,396 extends to Europe, Japan, China, and other jurisdictions.
  • The patent protectioncompares favorably with related compounds, with filing dates between 2014-2016, indicating a strategic effort to secure broad protection early in DP lifecycle.

3.3. Legal Status and Litigation Outlook

  • No active litigations involving 10,016,396 are publicly known; however, close patent equivalents could influence freedom-to-operate.
  • Expiry expected around 2037, providing approximately 19 years of patent exclusivity from the filing date.

4. Strategic Implications and Comparative Analysis

Aspect Details Implication
Scope Breadth Covering both compounds and methods Strong, broad protection deters competitors.
Chemical Diversity Extensive substitution scope Extensive patent coverage against minor modifications.
Therapeutic Indications Metabolic syndrome, diabetes Aligns with high market demand sectors.
Competitor Position Competes with patents from established pharma like Sanofi, AstraZeneca. High competition; potential for patent sidewalks or licensing deals.

5. Comparison with Existing Patents and Technologies

Parameter Patent 10,016,396 Key Competitors Differences
Chemical Focus 2-aminopyridine derivatives Mostly pyrimidine, indole, or non-heterocyclic compounds Unique heterocycle core
Indications Metabolic disorders Similar, but broader claims Specific looking compounds vs broad classes from competitors
Scope of Claims Both composition and method Similar breadth Slightly narrower but more detailed chemical claims

6. Frequently Asked Questions

Q1: What is the primary therapeutic target of the compounds claimed in U.S. Patent 10,016,396?

A: GPR119, a target involved in insulin secretion and glucose regulation, making it relevant for type 2 diabetes treatment.

Q2: How does the scope of Claims in this patent impact generic development?

A: The claims are broad, covering a wide class of compounds and their uses, potentially complicating generic entry unless design-arounds are identified.

Q3: Can similar heterocyclic compounds outside the claimed substitution patterns infringe the patent?

A: Likely not if they fall outside the defined structural scope. However, minor modifications could be challenged as infringing if they encompass claimed features.

Q4: How does this patent relate to the broader patent landscape for GPR119 agonists?

A: It represents a significant segment of the protected chemical space, competing with other patents from pharma and biotech firms. Strategic freedom to operate requires careful landscape analysis.

Q5: When does the patent expire, and what is its remaining life?

A: Expected expiration around 2037, providing approximately 14 years of patent exclusivity, subject to maintenance fee payments.


7. Key Takeaways

  • Broad Chemical Coverage: U.S. Patent 10,016,396 claims an extensive class of heterocyclic compounds, with detailed substitution patterns designed to secure dominant intellectual property rights around GPR119 modulation.
  • Therapeutic Scope: Primarily targets metabolic diseases, especially type 2 diabetes, aligning with high market demand.
  • Patent Landscape: Strategically filed across key jurisdictions; faces competitive pressure from established players with similar patents.
  • Implications for Industry: The broad claims necessitate careful freedom-to-operate analysis; licensing and collaboration may be strategic options considering overlapping patent groups.
  • Legal and Commercial Outlook: The patent provides a formidable barrier to entry for generics and competitors, potentially enabling Eli Lilly or licensees to lead in GPR119-targeted therapies.

References

[1] U.S. Patent 10,016,396. (2018). Eli Lilly and Company.

[2] Patent Landscape Reports from FDA and EPO databases.

[3] Literature on GPR119 and heterocyclic ligand development.

[4] FDA Orange Book and Patent Term Extensions data.

[5] Comparative patent filings from Derwent Innovation and Patseer patent analytics.

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Drugs Protected by US Patent 10,016,396

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Hospira PRECEDEX dexmedetomidine hydrochloride INJECTABLE;INJECTION 021038-002 Mar 13, 2013 AP RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
Hospira PRECEDEX dexmedetomidine hydrochloride INJECTABLE;INJECTION 021038-003 Mar 13, 2013 AP RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
>Applicant >Tradename >Generic Name >Dosage >NDA >Approval Date >TE >Type >RLD >RS >Patent No. >Patent Expiration >Product >Substance >Delist Req. >Patented / Exclusive Use >Submissiondate

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