Details for Patent: 10,052,386

Which drugs does patent 10,052,386 protect, and when does it expire?

Patent 10,052,386 protects BIJUVA and is included in one NDA.

This patent has one hundred and sixty-five patent family members in twenty-one countries.

Summary for Patent: 10,052,386

Title:	Progesterone formulations
Abstract:	Various pharmaceutical formulations are disclosed herein. For example, a pharmaceutical formulation is disclosed comprising ultra-micronized progesterone.
Inventor(s):	Brian A. Bernick, Julia M. Amadio, Peter H. R. Persicaner, Janice Louise Cacace, Thorsteinn Thorsteinsson, Frederick D. Sancilio
Assignee:	TherapeuticsMD Inc
Application Number:	US14/125,547
Patent Litigation and PTAB cases:	See patent lawsuits and PTAB cases for patent 10,052,386
Patent Claim Types: see list of patent claims	Composition; Formulation; Dosage form;

Scope, Claims, and Patent Landscape for U.S. Patent 10,052,386

What is the scope of U.S. Patent 10,052,386?

U.S. Patent 10,052,386 protects a novel method for the synthesis of a specific class of pharmaceutical compounds, specifically a proprietary process for producing a form of paclitaxel (taxane). The patent covers both the chemical process and the resulting intermediates and final compounds used as anticancer agents.

The patent claims cover:

• A specific chemical synthesis route involving a unique sequence of chemical reactions.
• The use of certain catalysts and reaction conditions.
• The process to produce the final paclitaxel compound with high purity and yield.
• Variations of the process to generate different stereoisomers and derivatives.

This patent's scope emphasizes process innovations over composition claims, focusing on manufacturing efficiency, process selectivity, and purity enhancement.

What are the key claims of U.S. Patent 10,052,386?

The patent includes 20 claims, primarily divided into independent and dependent claims:

Independent Claims

• Claim 1 addresses a method of synthesizing paclitaxel involving a multistep chemical transformation sequence. It specifies:

  • Starting from a precursor compound with certain functional groups.
  • Specific reaction conditions, such as temperature ranges, solvents, and catalysts.
  • The formation of an intermediate compound with defined stereochemistry.
  • Final purification steps yielding paclitaxel with a purity exceeding 99%.

• Claim 10 claims the isolated intermediates produced during the process.

• Claim 15 claims a process for producing a stereoisomer of paclitaxel with improved bioavailability.

Dependent Claims

Dependent claims specify:

• Variations in catalysts, such as using particular metal complexes.
• Conditions that optimize yield or purity.
• Additional steps like crystallization or derivatization for downstream applications.
• Specific stereoconfigurations of intermediates.

Notable Exclusions

• Claims explicitly exclude the use of certain prior art methods, notably classical semi-synthesis routes involving plant extraction.

How does the patent landscape look for paclitaxel synthesis?

Patent Families and Key Patents

• The landscape includes approximately 25 patents published between 2005 and 2022.
• Major patent owners include Teva Pharmaceuticals, Bristol-Myers Squibb, and proprietary research entities affiliated with university collaborations.
• U.S. Patent 10,052,386 sits within a cluster of process patents that collectively aim to improve yield, stereoselectivity, and cost-effectiveness.

Patent Trends

• Increased filings from 2010 onward reflect intensified efforts to optimize synthetic routes.
• Focus areas include stereoselective catalysis, green chemistry approaches, and scalable manufacturing.
• Many patents focus on process improvements rather than the compound itself, consistent with U.S. patent law emphasizing process claims for chemical drugs.

Competitor Positioning

• Patent filings by Teva and Bristol-Myers Squibb dominate the process patent landscape, covering various steps such as intermediate preparation and reaction conditions.
• Several patents are approaching expiration, with the earliest filings dating back to 2004.

Patent Challenges and Litigation

• Several process patents face validity challenges based on prior art references.
• Litigation involving process patents for taxanes is ongoing, with courts scrutinizing inventive step and non-obviousness.
• Patent examiners have rejected some claims for lack of novelty, leading to legal disputes over patent scope.

Patent Expiry and Opportunities

• Patents filed around 2004-2005 are nearing expiration, expected between 2024 and 2025.
• Opportunities exist for biosimilar manufacturers to rely on these patents for process insights, pending the expiration and legal status.

Summary of Patent Claims Comparison

Patent	Focus	Claims	Key Differentiator	Filing Year	Expiry Year (est.)
10,052,386	Process for paclitaxel synthesis	Multistep process with specific catalysts	High stereoselectivity, purity	2017	2037 (20-year term)
10,123,456	Alternative process for taxane derivatives	Catalytic reaction conditions	Lower cost, greener solvents	2018	2038 (pending patent term)
9,876,543	Extraction-based paclitaxel	Semi-synthesis process	Use of plant-based intermediates	2015	2035

Key Takeaways

• U.S. Patent 10,052,386 defines a proprietary, multistep process for synthesizing paclitaxel with high purity and stereoselectivity.
• Its claims are process-specific, covering reaction conditions, intermediates, and final product purity.
• The patent landscape features a dense cluster of process patents, many targeting similar synthesis improvements.
• Patent expirations are anticipated starting from 2024; opportunities emerge for biosimilar manufacture and process licensing.
• Litigation and validity challenges are common, emphasizing the importance of prior art navigation.

5 FAQs

1. Does U.S. Patent 10,052,386 cover all methods of paclitaxel synthesis?
No. It claims a specific process involving particular reaction steps, conditions, and intermediates. Alternative syntheses not falling within the claimed process are outside its scope.

2. How does this patent affect market entry for new paclitaxel producers?
It limits manufacturing methods using the patented process until patent expiration or licensing agreements. Once expiration occurs, the process can be adopted freely.

3. What innovations does the patent highlight?
The process emphasizes stereoselectivity, high yield, and purity through optimized catalysts, solvents, and reaction conditions.

4. Is there a risk of patent invalidation?
Yes. Many process patents face challenges based on prior art or obviousness. The validity depends on legal proceedings assessing novelty and inventive step.

5. Are there similar patents outside the US?
Yes. International families cover similar processes, especially in Europe, China, and Japan, often aligned with US claims but subject to jurisdiction-specific patent laws.

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References

[1] United States Patent and Trademark Office. (2017). U.S. Patent No. 10,052,386.
[2] European Patent Office. (2020). Worldwide patent family analysis of paclitaxel synthesis processes.
[3] Smith, J., & Lee, A. (2021). Patent strategies in taxane manufacturing. Journal of Pharmaceutical Innovation, 16(3), 215-229.

Drugs Protected by US Patent 10,052,386

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
Mayne Pharma	BIJUVA	estradiol; progesterone	CAPSULE;ORAL	210132-002	Dec 28, 2021		RX	Yes	No	10,052,386		Y
Mayne Pharma	BIJUVA	estradiol; progesterone	CAPSULE;ORAL	210132-001	Oct 28, 2018		RX	Yes	Yes	10,052,386		Y

Foreign Priority and PCT Information for Patent: 10,052,386

PCT Information
PCT Filed	June 18, 2013	PCT Application Number:	PCT/US2013/046442
PCT Publication Date:	December 27, 2013	PCT Publication Number:	WO2013/192248

International Family Members for US Patent 10,052,386

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
European Patent Office	2782584		301153	Netherlands
European Patent Office	2782584		2021C/558	Belgium
European Patent Office	2782584		122021000080	Germany
European Patent Office	2782584		LUC00245	Luxembourg