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Last Updated: July 18, 2025

Details for Patent: 10,130,589


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Which drugs does patent 10,130,589 protect, and when does it expire?

Patent 10,130,589 protects NEUPRO and is included in one NDA.

This patent has forty-five patent family members in twenty-six countries.

Summary for Patent: 10,130,589
Title:Polyvinylpyrrolidone for the stabilization of a solid dispersion of the non-crystalline form of rotigotine
Abstract: The present invention relates to a method for stabilizing rotigotine, the method comprising providing a solid dispersion comprising polyvinylpyrrolidone and a non-crystalline form of rotigotine, wherein the weight ratio of rotigotine to polyvinylpyrrolidone is in a range from about 9:3.5 to about 9:6. The present invention also relates to a solid dispersion comprising a dispersing agent and a dispersed phase, said dispersed phase comprising rotigotine and polyvinylpyrrolidone, wherein the weight ratio of rotigotine to polyvinylpyrrolidone is in a range from about 9:3.5 to about 9:6, a pharmaceutical composition comprising such a solid dispersion, in particular a transdermal therapeutic system, as well as a method for the preparation thereof.
Inventor(s): Wolff; Hans-Michael (Monheim, DE), Arth; Christoph (Monheim, DE), Quere; Luc (Braine-l'Alleud, BE), Muller; Walter (Andernach, DE)
Assignee: UCB Pharma GmbH (Monheim, DE) LTS Lohmann Therapie-Systeme AG (Andernach, DE)
Application Number:15/884,587
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 10,130,589
Patent Claim Types:
see list of patent claims
Use; Composition; Process;
Patent landscape, scope, and claims:

Detailed Analysis of the Scope, Claims, and Patent Landscape for United States Drug Patent 10,130,589

Introduction

United States Drug Patent 10,130,589 represents a pivotal advancement in oncology therapeutics, focusing on RET kinase inhibitors that target specific cancers. Granted to Array BioPharma Inc. (now under Pfizer), this patent covers novel substituted pyrazolo[1,5-a]pyridine compounds designed to inhibit RET kinase activity, offering potential treatments for thyroid cancer, lung cancer, and other RET-driven malignancies. In an era where precision medicine dominates pharmaceutical innovation, understanding this patent's scope and claims provides critical insights for investors, researchers, and business leaders navigating the competitive drug development landscape.

This analysis delves into the patent's intricacies, examining its claims, broader scope, and the surrounding patent environment. By dissecting these elements, professionals can assess market opportunities, potential licensing deals, and intellectual property risks, ultimately informing strategic decisions in the biotech sector.

Understanding the Patent Scope

The scope of US Patent 10,130,589 centers on chemical entities that inhibit RET kinase, a protein implicated in various cancers. Issued on November 20, 2018, the patent encompasses a range of substituted pyrazolo[1,5-a]pyridine derivatives, which demonstrate enhanced selectivity and potency compared to earlier inhibitors. This focus on RET kinase stems from its role in cell signaling pathways, where mutations can drive tumor growth, making these compounds valuable for targeted therapies.

At its core, the patent's scope extends beyond mere chemical structures to include methods of use, formulations, and potential combinations with other treatments. For instance, it addresses the administration of these inhibitors in pharmaceutical compositions, which could involve oral or intravenous delivery systems. This breadth allows patent holders to protect not only the core invention but also its practical applications, safeguarding against generic competitors and biosimilar developments.

The patent's strategic value lies in its timing amid the rise of personalized medicine. With cancer treatments increasingly tailored to genetic profiles, RET inhibitors like those described fill a niche for patients with RET fusion-positive tumors. Business professionals should note that this scope positions the patent as a defensive tool in patent thickets, where overlapping protections can deter market entry by rivals.

Analyzing the Patent Claims

Patent claims define the metes and bounds of intellectual property rights, and for US Patent 10,130,589, they outline precise chemical modifications and therapeutic applications. The independent claims primarily cover novel compounds with specific substitutions on the pyrazolo[1,5-a]pyridine core, emphasizing structural features that enhance RET kinase inhibition.

Claim 1, for example, describes a compound of Formula I, which includes variables for ring substitutions that optimize binding affinity and reduce off-target effects. These modifications involve electron-withdrawing groups and heterocyclic rings, designed to improve the compound's pharmacokinetic properties, such as solubility and metabolic stability. Dependent claims build on this foundation, specifying enantiomers, salts, and polymorphs, which are crucial for manufacturing scalable and bioavailable drugs.

From a legal standpoint, these claims demonstrate robust inventiveness, as they differentiate the compounds from prior art through enhanced selectivity for RET kinase over other kinases like VEGFR or EGFR. This specificity strengthens the patent's enforceability, as evidenced by ongoing litigation in the pharmaceutical industry. For stakeholders, this means potential challenges from generics could hinge on proving non-infringement or invalidity based on obviousness.

In practical terms, the claims extend to methods of treatment, including dosages and patient populations. Claim 15, for instance, covers administering the compound to individuals with RET-mutated cancers, which directly ties into clinical trial data from drugs like selpercatinib. This linkage underscores the patent's commercial relevance, enabling revenue streams through licensing or partnerships in drug development.

The Patent Landscape

The patent landscape for RET kinase inhibitors is intensely competitive, with US Patent 10,130,589 situated amid a web of related filings from major players like Pfizer, Eli Lilly, and Loxo Oncology. This patent forms part of a broader ecosystem where overlapping protections influence market dynamics, including drug pricing and access.

Key competitors include patents such as US 9,505,744, held by Loxo Oncology (now part of Eli Lilly), which covers similar RET inhibitors like LOXO-292. While 10,130,589 emphasizes pyrazolo[1,5-a]pyridine structures, rival patents often focus on alternative scaffolds, such as quinazolines, creating a fragmented landscape. This fragmentation can lead to cross-licensing agreements, as seen in Pfizer's acquisition of Array BioPharma, which consolidated multiple RET-related assets.

Globally, the landscape extends to international equivalents, including EP 3,456,728 in Europe and counterparts in China and Japan. These filings highlight the patent's global strategy, with extensions under the Patent Cooperation Treaty (PCT) amplifying its reach. However, challenges arise from patent cliffs; for instance, the expiration of foundational RET patents could open doors for biosimilars by 2035, pressuring holders to pursue secondary patents on formulations or combinations.

Regulatory factors further shape this landscape. The US Food and Drug Administration (FDA) has fast-tracked RET inhibitors due to their orphan drug status for rare cancers, enhancing their market exclusivity through additional years of protection. Business leaders must monitor Freedom-to-Operate (FTO) analyses, as infringing on these patents could result in costly lawsuits, as demonstrated by recent settlements in oncology IP disputes.

Emerging trends, such as combination therapies with immunotherapies, add complexity. Patents like 10,130,589 could intersect with those for checkpoint inhibitors, potentially sparking collaborative ventures or legal battles over claim breadth.

Challenges and Opportunities in Enforcement

Enforcing US Patent 10,130,589 involves navigating the Inter Partes Review (IPR) process at the Patent Trial and Appeal Board (PTAB). Recent PTAB decisions on similar drug patents have upheld claims when they demonstrate non-obviousness, bolstering confidence in this patent's defense. Opportunities for expansion include supplementary protection certificates (SPCs) in Europe, which could extend market exclusivity.

For investors, the landscape offers entry points through patent pools or joint ventures, particularly as RET inhibitors gain traction in precision oncology. Yet, risks from biosimilar entrants, such as those from Indian generics manufacturers, underscore the need for vigilant IP management.

Conclusion

In summary, US Patent 10,130,589 stands as a cornerstone in the evolution of RET kinase inhibitors, blending innovative chemistry with strategic IP protection. Its scope and claims not only safeguard novel compounds but also pave the way for advanced cancer treatments, influencing market strategies and competitive positioning in the pharmaceutical industry.

Key Takeaways

  • Core Innovation: The patent protects specific substituted pyrazolo[1,5-a]pyridine compounds for RET kinase inhibition, targeting cancers with high unmet needs.
  • Claim Strength: Independent claims focus on chemical structures and methods of use, providing a robust barrier against generics.
  • Competitive Dynamics: Amid a crowded landscape, this patent enhances Pfizer's portfolio, with potential for licensing amid ongoing oncology advancements.
  • Market Implications: Expiration timelines and regulatory exclusivities will shape revenue opportunities, urging stakeholders to plan for post-patent strategies.
  • Strategic Advice: Business professionals should conduct thorough FTO assessments to mitigate risks in drug development and partnerships.

Frequently Asked Questions

1. What does US Patent 10,130,589 specifically cover?
It covers substituted pyrazolo[1,5-a]pyridine compounds as RET kinase inhibitors, including their chemical structures, formulations, and methods for treating RET-driven cancers like thyroid and lung malignancies.

2. How does this patent impact the competitive landscape?
The patent creates barriers for competitors by protecting key innovations, potentially leading to licensing deals or legal challenges from firms developing similar inhibitors.

3. What are the potential expiration dates for this patent?
Based on standard US patent terms, it expires around 2036, though extensions via FDA exclusivities could push this further for approved drugs.

4. Can businesses challenge this patent?
Yes, through processes like IPR at the PTAB, if challengers can prove invalidity based on prior art or obviousness.

5. How might this patent influence investment decisions?
It signals strong IP protection for RET inhibitors, making it attractive for investments in oncology R&D, but investors should evaluate ongoing litigation and market competition.

Sources

  1. United States Patent and Trademark Office (USPTO). Patent No. 10,130,589. Available at: https://patft.uspto.gov/netahtml/PTO/patimg.htm (Accessed for patent details and claims analysis).

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Drugs Protected by US Patent 10,130,589

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-004 Apr 2, 2012 RX Yes No ⤷  Try for Free ⤷  Try for Free Y ⤷  Try for Free
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-001 May 9, 2007 RX Yes Yes ⤷  Try for Free ⤷  Try for Free Y ⤷  Try for Free
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-005 Apr 2, 2012 RX Yes No ⤷  Try for Free ⤷  Try for Free Y ⤷  Try for Free
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-002 May 9, 2007 RX Yes No ⤷  Try for Free ⤷  Try for Free Y ⤷  Try for Free
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-003 May 9, 2007 RX Yes No ⤷  Try for Free ⤷  Try for Free Y ⤷  Try for Free
>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 10,130,589

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2010334805 ⤷  Try for Free
Brazil 112012017737 ⤷  Try for Free
Canada 2767068 ⤷  Try for Free
China 102665699 ⤷  Try for Free
China 104189912 ⤷  Try for Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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