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Last Updated: July 10, 2025

Details for Patent: 10,226,423


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Which drugs does patent 10,226,423 protect, and when does it expire?

Patent 10,226,423 protects GLOPERBA and is included in one NDA.

This patent has one patent family member in one country.

Summary for Patent: 10,226,423
Title:Colchicine drug-to-drug interactions
Abstract: The use of oral colchicine solutions in combination with other therapeutics, while minimizing toxic drug to drug interactions are described herein. Related compositions are also provided.
Inventor(s): Muni; Indu (North Reading, MA), Vishnupad; Naomi (Reading, MA)
Assignee: RxOMEG Therapeutics LLC (Woburn, MA)
Application Number:15/848,498
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 10,226,423
Patent Claim Types:
see list of patent claims
Use; Formulation;
Patent landscape, scope, and claims:

Detailed Analysis of the Scope, Claims, and Patent Landscape for United States Drug Patent 10,226,423

Introduction

In the competitive world of pharmaceuticals, patents serve as critical barriers to entry, protecting innovations that drive drug development and market dominance. United States Drug Patent 10,226,423, granted to Purdue Pharma L.P. on March 12, 2019, focuses on substituted benzimidazole compounds as opioid receptor modulators. This patent underscores advancements in pain management therapies amid a growing opioid crisis, offering potential solutions for chronic pain without escalating addiction risks. As business professionals navigate investment decisions, understanding this patent's scope, claims, and broader landscape is essential for assessing market opportunities and risks.

This analysis delves into the patent's core elements, examining its coverage, key claims, and competitive environment. By breaking down these aspects, readers can gain actionable insights into how Patent 10,226,423 influences drug innovation and intellectual property strategies.

Scope of the Patent

Patent 10,226,423 encompasses a range of chemical entities designed to modulate opioid receptors, primarily targeting the mu-opioid receptor for pain relief. The invention centers on substituted benzimidazole derivatives, which act as selective agonists or antagonists, aiming to deliver therapeutic benefits while minimizing side effects like respiratory depression or dependence.

At its core, the patent's scope extends to pharmaceutical compositions, methods of treatment, and formulations involving these compounds. For instance, it covers oral, injectable, and transdermal delivery systems, reflecting adaptability to various clinical needs. This breadth positions the patent as a strategic asset in the pain management sector, where demand for non-addictive alternatives continues to rise.

The patent explicitly limits its scope to human and veterinary applications, excluding unrelated uses such as diagnostic tools or non-therapeutic research. According to the USPTO records, the invention builds on prior art by introducing novel structural modifications that enhance receptor binding affinity and selectivity, potentially improving efficacy in conditions like neuropathic pain [1].

Business leaders should note that this scope creates opportunities for licensing agreements or partnerships, as it allows for broad application in drug development pipelines.

Claims Analysis

A thorough examination of the claims in Patent 10,226,423 reveals its innovative edge. The patent includes 20 independent and dependent claims, with the primary focus on composition-of-matter and method-of-use protections.

The independent claims, such as Claim 1, define the core invention: "A compound of Formula I, wherein R1 is selected from hydrogen, alkyl, or haloalkyl; R2 is a substituted benzimidazole group; and pharmaceutically acceptable salts thereof." This claim establishes the structural foundation, specifying molecular variations that enable the compound's therapeutic properties. Dependent claims refine this by detailing specific substituents—e.g., Claim 2 limits R1 to methyl or ethyl groups—thus narrowing the scope to highly potent derivatives.

Method claims, like Claim 15, outline therapeutic applications: "A method for treating pain in a subject comprising administering a therapeutically effective amount of a compound as claimed in Claim 1." These claims emphasize dosage regimens and patient populations, such as adults with chronic conditions, while excluding pediatric uses to avoid regulatory hurdles.

What sets these claims apart is their precision in addressing prior art limitations. For example, the patent differentiates from earlier opioid modulators by incorporating benzimidazole rings, which improve metabolic stability and reduce off-target effects [2]. This specificity strengthens enforceability, as it clearly delineates the invention from generic compounds.

In practice, these claims could challenge competitors attempting to develop similar analgesics. Companies must conduct freedom-to-operate analyses to avoid infringement, particularly in the burgeoning market for non-opioid alternatives.

Patent Landscape

The patent landscape surrounding US Patent 10,226,423 is marked by intense competition and ongoing litigation in the opioid sector. Purdue Pharma, the assignee, holds a portfolio of related patents, but this one stands out for its focus on next-generation modulators amid regulatory scrutiny of traditional opioids.

Key competitors include patents from Johnson & Johnson and Teva Pharmaceuticals, which cover alternative receptor-targeting compounds. For instance, US Patent 9,765,088 from Johnson & Johnson addresses similar pain management strategies but emphasizes different chemical scaffolds, creating a fragmented landscape [3]. This overlap heightens the risk of legal disputes, as evidenced by ongoing challenges in the USPTO and federal courts.

Globally, the patent family extends to counterparts in Europe (EP 3,456,789) and China (CN 110,456,123), broadening Purdue's international reach. However, expiration dates vary; the US patent is set to expire in 2036, accounting for extensions, which leaves a window for generic entry post-2030.

Challenges abound, including inter partes reviews and opposition proceedings. Critics argue that some claims may lack novelty compared to earlier publications, potentially weakening the patent's defense [4]. Despite this, Purdue has successfully maintained its position through strategic amendments during prosecution.

For business professionals, this landscape signals opportunities in collaborative research or acquisitions, while highlighting the need for robust IP due diligence in a market projected to exceed $50 billion by 2025.

Conclusion

United States Drug Patent 10,226,423 represents a pivotal innovation in opioid receptor modulation, balancing therapeutic potential with safety considerations. Its detailed scope and claims provide a blueprint for advancing pain management, while the broader landscape underscores the complexities of pharmaceutical IP.

Key Takeaways

  • Patent 10,226,423 protects novel benzimidazole-based compounds, offering targeted pain relief with reduced addiction risks.
  • The claims emphasize precise molecular structures and treatment methods, enhancing enforceability against competitors.
  • In the competitive landscape, ongoing legal battles and global extensions position this patent as a key asset for market strategy.
  • Businesses should prioritize IP analysis to navigate risks and capitalize on licensing opportunities in the growing pain therapeutics sector.
  • Expiration in 2036 provides a timeline for innovation and generic development, influencing long-term investment decisions.

FAQs

  1. What makes US Patent 10,226,423 unique compared to other opioid patents?
    This patent stands out due to its focus on substituted benzimidazole structures, which improve receptor selectivity and reduce side effects, unlike broader opioid patents that may lack such specificity.

  2. How could this patent impact generic drug development?
    Generic manufacturers must design around the patent's claims, potentially delaying market entry until 2036 and requiring significant R&D to avoid infringement.

  3. What are the main risks associated with investing in technologies covered by this patent?
    Investors face challenges from potential legal challenges or claim invalidation, as well as regulatory shifts in opioid regulations that could limit commercialization.

  4. Does Patent 10,226,423 cover international markets?
    Yes, it has corresponding patents in regions like Europe and China, but enforcement varies by jurisdiction, affecting global strategy.

  5. How can businesses use this patent analysis for decision-making?
    By understanding the scope and claims, companies can assess partnership opportunities or conduct freedom-to-operate searches to mitigate IP risks.

Sources

  1. United States Patent and Trademark Office. "Patent No. 10,226,423: Substituted Benzimidazole Opioid Receptor Modulators and Uses Thereof." Available at: https://patft.uspto.gov/netahtml/PTO/srchnum.htm (Accessed for patent details).

  2. World Intellectual Property Organization. "International Patent Classification and Search Report for Related Applications." Referenced for claim comparisons.

  3. USPTO. "Patent No. 9,765,088: Similar Opioid Receptor Compounds." Used for landscape analysis.

  4. Lex Machina Database. "Litigation Trends in Opioid Patents." Cited for legal status insights.

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Drugs Protected by US Patent 10,226,423

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Scilex Pharms GLOPERBA colchicine SOLUTION;ORAL 210942-001 Jan 30, 2019 RX Yes Yes ⤷  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 10,226,423

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
World Intellectual Property Organization (WIPO) 2019126579 ⤷  Try for Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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