Details for Patent: 10,076,514
Which drugs does patent 10,076,514 protect, and when does it expire?
Patent 10,076,514 protects GALAFOLD and is included in one NDA.
This patent has eighteen patent family members in six countries.
Summary for Patent: 10,076,514
| Title: | Methods of treating fabry disease in patients having the G9331A mutation in the GLA gene | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | Provided are methods of treating a patient diagnosed with Fabry disease and methods of enhancing α-galactosidase A in a patient diagnosed with or suspected of having Fabry disease. Certain methods comprise administering to a patient a therapeutically effective dose of a pharmacological chaperone for α-galactosidase A, wherein the patient has a splice site mutation in intron 4 of the nucleic acid sequence encoding α-galactosidase A. Also described are uses of pharmacological chaperones for the treatment of Fabry disease and compositions for use in the treatment of Fabry disease. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Elfrida Benjamin | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Bpcr LP , Amicus Therapeutics Inc | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US15/459,149 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent Litigation and PTAB cases: | See patent lawsuits and PTAB cases for patent 10,076,514 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; Delivery; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 10,076,514: Fabry Disease Treatment Claims, Scope, and Patent LandscapeU.S. Patent No. 10,076,514 protects a genotype-directed method of treating Fabry disease with 1-deoxygalactonojirimycin, also known as migalastat, or a salt. The independent claims are limited to patients carrying the G9331A mutation in the alpha-galactosidase gene relative to SEQ ID NO: 1. The patent does not broadly cover all Fabry patients, all alpha-galactosidase mutations, or all migalastat dosing regimens. The commercially important embodiment is oral administration of approximately 150 mg of migalastat hydrochloride every other day. That dose corresponds to the FDA-approved Galafold regimen of 123 mg migalastat, equivalent to 150 mg of migalastat hydrochloride. The patent therefore overlaps directly with the approved product for patients whose mutations fall within the claimed G9331A genotype. What does U.S. Patent 10,076,514 cover?The patent covers treating a Fabry patient with migalastat or a salt when the patient has the specified G9331A mutation in the nucleic acid sequence encoding alpha-galactosidase.
Claim 1 is the principal infringement claim. Claims 2 through 5 add dose, salt, and administration-route limitations. Claim 6 independently recites the human, oral, and dosing limitations. Claim 7 is narrower than claim 6 because it specifies approximately 150 mg of migalastat hydrochloride rather than an equivalent dose of another salt or free-base formulation. What is the key limitation in the patent claims?The key limitation is the patient's G9331A mutation. A product or treatment can fall outside the claims if:
The claims do not cover all mutations known to be amenable to migalastat. They cover one specifically identified mutation. A competitor treating patients with another amenable mutation would require a separate infringement analysis against other patents. The mutation limitation is also relevant to induced-infringement risk. A manufacturer generally does not administer the drug directly to patients. Its exposure would depend on activities such as labeling, patient-identification programs, dosing instructions, reimbursement support, or other conduct that encourages the claimed treatment. How does the patent relate to Galafold and migalastat?Galafold is the U.S. trade name for migalastat hydrochloride. The FDA approved Galafold in August 2018 for adults with Fabry disease who have an amenable mutation in the alpha-galactosidase A gene. The approved dosage is one 123 mg migalastat capsule orally every other day, corresponding to 150 mg of migalastat hydrochloride on a salt-weight basis.[1] The patent claims use the chemical name 1-deoxygalactonojirimycin. That compound is migalastat. The claims also cover salts, with specific recitation of the hydrochloride salt.
The overlap is strongest for an oral generic or other competing product labeled for patients with the claimed mutation and dosed every other day. What therapeutic mechanism does the patent protect?Migalastat is a pharmacological chaperone. It binds certain mutant forms of alpha-galactosidase A and can improve trafficking of the enzyme to the lysosome. The mechanism differs from enzyme replacement therapy, which supplies recombinant alpha-galactosidase directly. The patent is therefore a method-of-treatment patent based on a genotype-response relationship. Its commercial value depends on whether the G9331A variant is classified as amenable to migalastat under the FDA-approved test and labeling framework. The claims do not require a particular clinical endpoint, biomarker threshold, or reduction in globotriaosylceramide. They require treatment of a diagnosed Fabry patient with the specified mutation using the claimed compound and, for narrower claims, the claimed dose and route. When does U.S. Patent 10,076,514 expire?The patent issued on September 18, 2018. Its patent family has a 2014 priority date, and the nominal 20-year patent-term endpoint is in 2034, subject to the actual U.S. nonprovisional filing date, any patent-term adjustment, terminal disclaimer, and other USPTO term calculations.[2]
The relevant date for generic-entry planning is the official expiration date shown in USPTO patent records and, if listed for Galafold, the FDA Orange Book. A patent's 2018 issue date is not its expiration date. Is U.S. Patent 10,076,514 an Orange Book patent?The patent is a method-of-use patent potentially relevant to Galafold because the claims correspond to an FDA-labeled genotype-directed use and the approved every-other-day regimen. Orange Book relevance depends on the patent's listing, use code, and the scope of the approved labeling at the time of listing.[3] An Orange Book-listed method patent can create a Paragraph IV certification issue for an abbreviated new drug application if the generic applicant seeks approval for a use covered by the listed patent. A generic applicant may instead use a section viii statement and omit the patented use, but that strategy is viable only if the proposed labeling excludes the protected indication or patient population. The commercial risk is highest where a proposed generic label:
What Paragraph IV challenges could affect Galafold?A Paragraph IV certification would assert that a listed patent is invalid, unenforceable, or not infringed. For this patent, a generic challenger would likely focus on claim construction, written description, enablement, obviousness, and the boundaries of the G9331A limitation. Potential challenge theories include:
A Paragraph IV notice would ordinarily trigger the Hatch-Waxman litigation framework if the patent were listed and the NDA holder or patent owner filed suit within the statutory period. The available claim set gives the patent owner fallback positions: a broad mutation-specific method claim, a dose-range claim, a salt claim, and a precise oral dosing claim. What patent litigation affects U.S. Patent 10,076,514?The principal litigation risk is an ANDA dispute involving a generic version of Galafold. The patent's claim structure is suited to a product-specific dispute because the commercial regimen is expressly recited in claims 4, 6, and 7. A litigation assessment should distinguish among:
No settlement terms should be inferred merely from the existence of this patent. Any launch date, license, or non-entry agreement would depend on the actual litigation docket and settlement filings. How strong is the patent estate for migalastat?The patent estate is stronger commercially than claim 1 alone suggests because the approved product, dose, route, and mutation-directed label align with multiple claim limitations. Its weaknesses are the narrow genotype limitation and the fact that the core active ingredient and general mechanism may be addressed by other patents rather than this patent.
The patent should be analyzed together with composition, formulation, polymorph, manufacturing, and other method-of-use patents in the Galafold family. A generic may avoid one patent while remaining blocked by another. What other patents and technologies compete with migalastat?Fabry disease treatment has three main technology categories:
Migalastat does not face biosimilar substitution in the same way as Fabrazyme because it is a small molecule. A future competitor would generally pursue an ANDA or another small-molecule pathway, not a biosimilar application. Gene therapies create a different competitive threat and are more likely to rely on biologic patent estates and regulatory exclusivity. What generic launch scenarios exist?Scenario 1: Full-label generic launchA generic applicant includes G9331A and the approved every-other-day regimen. This creates the clearest infringement and Paragraph IV exposure under claims 1, 4, 6, and 7. Scenario 2: Section viii carve-outThe applicant omits the patented genotype or method from its labeling. This may reduce infringement risk, but the carve-out must be operationally credible. Promotional materials, patient-support programs, or prescribing information cannot restore the omitted use indirectly. Scenario 3: Post-expiration launchThe applicant waits until expiration of the relevant Orange Book patents. This eliminates patent litigation risk for the expired claims but does not eliminate regulatory, manufacturing, or other patent barriers. Scenario 4: Settlement or licenseThe generic may agree to a later entry date or obtain a license. The commercial value of such an agreement depends on the remaining patent term, the scope of licensed uses, and whether the agreement includes supply or authorized-generic provisions. What manufacturing and geographic IP barriers remain?The asserted claims are treatment claims, not manufacturing claims. A competitor that makes migalastat outside the United States may avoid U.S. method-of-treatment infringement for the manufacturing activity, but U.S. importation, sale, labeling, and use can implicate separate patent rights. Geographic considerations include:
A freedom-to-operate review should separate U.S. method claims from compound, formulation, process, and foreign national-phase rights. What is the commercial exposure from this patent?The patent's exposure is concentrated in the U.S. Galafold market and in the subset of Fabry patients carrying G9331A. Because the claims track a specific approved regimen, the patent can support meaningful protection even though it does not cover the entire Fabry population. Revenue exposure depends on:
The patent is therefore best characterized as a targeted lifecycle and indication patent, not a standalone composition patent. Key Takeaways
FAQsDoes Patent 10,076,514 cover all patients with Fabry disease?No. The claims require the specific G9331A mutation relative to SEQ ID NO: 1. Does the patent cover migalastat free base?Claim 1 covers 1-deoxygalactonojirimycin or a salt. Claims 3, 4, 6, and 7 focus more specifically on migalastat hydrochloride and equivalent dosing. Can a generic launch for a different Fabry mutation avoid this patent?Potentially. A treatment directed solely to a different mutation would not satisfy the express G9331A limitation, although other patents could still apply. Is Galafold subject to biosimilar competition?No. Galafold contains migalastat, a small molecule. The relevant pathway for a competing chemically equivalent product is generally the ANDA pathway, not biosimilar approval. Does the 150 mg dose mean 150 mg of active migalastat?The patent claims 150 mg of migalastat hydrochloride. The FDA Galafold label expresses the dose as 123 mg of migalastat, equivalent to 150 mg of the hydrochloride salt.[1] References
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Drugs Protected by US Patent 10,076,514
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Amicus Therap Us | GALAFOLD | migalastat hydrochloride | CAPSULE;ORAL | 208623-001 | Aug 10, 2018 | RX | Yes | Yes | ⤷ Start Trial | ⤷ Start Trial | THE TREATMENT OF FABRY PATIENTS | ⤷ 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 |
International Family Members for US Patent 10,076,514
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| China | 109069494 | ⤷ Start Trial | |||
| China | 114159436 | ⤷ Start Trial | |||
| European Patent Office | 3432882 | ⤷ Start Trial | |||
| Japan | 2019510030 | ⤷ Start Trial | |||
| Japan | 2022130589 | ⤷ Start Trial | |||
| Japan | 2024122992 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
