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Last Updated: March 26, 2026

Details for Patent: 10,307,417


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Which drugs does patent 10,307,417 protect, and when does it expire?

Patent 10,307,417 protects RELISTOR and is included in one NDA.

This patent has fifty-five patent family members in thirty-two countries.

Summary for Patent: 10,307,417
Title:Oral formulations and lipophilic salts of methylnaltrexone
Abstract:The present invention provides compositions comprising methylnaltrexone or a salt thereof, and compositions and formulations thereof, for oral administration.
Inventor(s):Syed M. Shah, Christopher Richard Diorio, Eric C. Ehrnsperger, Xu Meng, Kadum A. Al Shareffi, Jonathan Marc Cohen
Assignee: Wyeth LLC
Application Number:US16/219,681
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 10,307,417
Patent Claim Types:
see list of patent claims
Composition; Formulation; Compound; Device; Dosage form;
Patent landscape, scope, and claims:

Analysis of United States Patent 10,307,417: Tofacitinib Citrate Formulations

Patent 10,307,417, granted to Pfizer Inc. on June 4, 2019, covers specific crystalline forms of tofacitinib citrate, the active pharmaceutical ingredient in Xeljanz®. The patent addresses the challenges associated with amorphous tofacitinib citrate, including stability and manufacturing issues, by defining novel crystalline polymorphs with improved characteristics.

What is the Primary Subject of Patent 10,307,417?

The patent claims specific crystalline forms of tofacitinib citrate, designated as Form A and Form B. These forms are characterized by their X-ray powder diffraction (XRPD) patterns, differential scanning calorimetry (DSC) data, and other analytical metrics. The invention aims to provide crystalline tofacitinib citrate with enhanced stability and improved handling properties compared to amorphous forms.

What are the Key Claims of the Patent?

Patent 10,307,417 comprises multiple claims, with the independent claims focusing on:

  • Claim 1: A crystalline form of tofacitinib citrate characterized by an X-ray powder diffraction pattern having specific peaks at certain 2-theta values. This claim defines Form A.
  • Claim 11: A crystalline form of tofacitinib citrate characterized by an X-ray powder diffraction pattern having a different set of specific peaks at certain 2-theta values. This claim defines Form B.

Dependent claims further define these crystalline forms by specifying additional analytical data, such as DSC thermal events, infrared (IR) absorption bands, and Raman spectral data. For instance, dependent claims might detail specific temperature ranges for melting points or characteristic peak positions in IR or Raman spectra.

What Analytical Data Defines the Patented Crystalline Forms?

The patent relies on multiple analytical techniques to define and distinguish between the claimed crystalline forms.

What are the Defining XRPD Characteristics?

The X-ray powder diffraction (XRPD) patterns are central to defining the claimed crystalline forms.

  • Form A: The patent describes Form A as exhibiting characteristic XRPD peaks at approximately 4.6, 6.9, 10.8, 12.7, 14.4, 17.9, 18.7, 20.1, 21.4, 23.5, 24.2, and 26.8 (± 0.2) degrees 2-theta. [1]
  • Form B: Form B is defined by XRPD peaks at approximately 5.8, 8.7, 10.5, 12.1, 14.0, 15.9, 17.3, 18.8, 20.4, 23.5, 24.7, and 27.3 (± 0.2) degrees 2-theta. [1]

What are the DSC and Other Thermal Properties?

Differential scanning calorimetry (DSC) and thermogravimetric analysis (TGA) provide complementary data on the thermal behavior of the crystalline forms.

  • Form A: DSC data for Form A typically shows a characteristic endotherm with a peak onset temperature around 178°C, indicative of melting. [1]
  • Form B: Form B is characterized by a different thermal profile, with DSC data often showing a melting endotherm with a peak onset temperature around 167°C. [1]

Other analytical methods cited may include infrared spectroscopy (IR) and Raman spectroscopy, which detect specific vibrational modes unique to each crystalline structure.

What are the Advantages of the Patented Crystalline Forms?

The development of specific crystalline forms addresses limitations of amorphous tofacitinib citrate.

How do these Forms Improve Stability?

Amorphous forms of active pharmaceutical ingredients (APIs) are often less stable than their crystalline counterparts. They are prone to degradation due to moisture uptake and conversion to less stable or undesired polymorphic forms.

  • Reduced Hygroscopicity: Crystalline forms generally exhibit lower hygroscopicity (tendency to absorb moisture) compared to amorphous forms. This is crucial for API stability, as moisture can catalyze degradation reactions.
  • Enhanced Chemical Stability: The ordered structure of crystalline forms provides inherent chemical stability, protecting the API from decomposition.
  • Prevention of Polymorphic Transitions: The patent's focus on specific, stable crystalline forms aims to prevent uncontrolled polymorphic transitions during storage or manufacturing, which can alter drug product performance.

What are the Manufacturing Benefits?

The improved properties of Forms A and B translate into practical manufacturing advantages.

  • Improved Handling and Flowability: Crystalline solids typically possess better flow properties than amorphous powders, facilitating easier handling during tablet manufacturing processes such as blending, granulation, and compression.
  • Batch-to-Batch Consistency: Well-defined crystalline forms lead to more consistent physical properties across different manufacturing batches, ensuring reproducible drug product quality.
  • Process Robustness: The stability and predictable physical characteristics of these forms contribute to a more robust manufacturing process, reducing the risk of process deviations.

What is the Patent Landscape for Tofacitinib Citrate?

The patent landscape for tofacitinib citrate is complex, with multiple patents covering the API itself, its various salt forms, crystalline polymorphs, and methods of use.

Who Owns Key Patents Related to Tofacitinib Citrate?

Pfizer Inc. is the primary assignee for patents directly related to tofacitinib and its early development.

  • Composition of Matter Patents: The foundational patents covering the tofacitinib molecule itself have largely expired or are nearing expiration in major markets.
  • Polymorph Patents: Patents like 10,307,417 are critical for extending market exclusivity by covering specific, improved forms of the API.
  • Formulation Patents: Additional patents may cover specific dosage forms, such as extended-release tablets or combination therapies.

What are the Key Dates and Expirations?

Understanding patent expiration dates is crucial for market entry strategies.

  • Original Tofacitinib Patent: While specific early patents for tofacitinib itself are complex to track universally due to continuations and global filings, the core composition of matter patents generally began expiring in the early to mid-2020s in many key jurisdictions.
  • Patent 10,307,417 Expiration: Based on its grant date of June 4, 2019, and assuming standard patent term extensions (e.g., Hatch-Waxman adjustments in the US), the expiration of patent 10,307,417 would likely be in the latter half of 2029 or early 2030s, depending on any eligible extensions. [2]
  • Orange Book Listings: The U.S. Food and Drug Administration's (FDA) Orange Book lists patents that are relevant to approved drug products. Xeljanz® (tofacitinib citrate) has multiple patents listed, including those related to its polymorphic forms.

What are the Implications for Generic Competition?

The existence of patents covering specific crystalline forms of tofacitinib citrate creates barriers for generic manufacturers.

How do Polymorph Patents Impact Generic Entry?

Generic companies seeking to market a tofacitinib citrate product must demonstrate that their product does not infringe on existing patents.

  • Freedom to Operate (FTO) Analysis: A thorough FTO analysis is required to determine if a generic product, particularly one using a specific crystalline form, infringes on patent 10,307,417 or other relevant polymorph patents.
  • Developing Non-Infringing Forms: Generic manufacturers may need to develop or identify alternative crystalline forms of tofacitinib citrate that are not claimed by Pfizer's patents, or operate with an amorphous form if its production does not infringe on process patents and it exhibits sufficient stability.
  • Patent Litigation: Disputes over patent infringement are common in the pharmaceutical industry, and generic companies may face litigation if their product is perceived to infringe on valid patents.

What are the Regulatory Considerations?

Generic drug approval requires demonstrating bioequivalence and compliance with all relevant patent exclusivities.

  • ANDA Filings: Abbreviated New Drug Applications (ANDAs) filed by generic companies must address all listed patents in the U.S. FDA's Orange Book.
  • ANDA Paragraph IV Certifications: Generic applicants may file a Paragraph IV certification, asserting that the relevant patent(s) are invalid, unenforceable, or will not be infringed by the generic product. This often triggers patent litigation.

Key Takeaways

Patent 10,307,417 protects specific, stable crystalline forms of tofacitinib citrate (Forms A and B), characterized by distinct XRPD and DSC profiles. These forms offer advantages in stability and manufacturing over amorphous tofacitinib citrate. The patent's expiration, projected for the early 2030s, is a significant factor for generic manufacturers evaluating market entry strategies, necessitating careful freedom-to-operate analysis and potential development of non-infringing crystalline forms or alternative formulations.

FAQs

  1. What is the primary therapeutic use of tofacitinib citrate? Tofacitinib citrate is used to treat autoimmune diseases such as rheumatoid arthritis, psoriatic arthritis, and ulcerative colitis.

  2. Can a generic manufacturer produce amorphous tofacitinib citrate to avoid infringing patent 10,307,417? Producing an amorphous form could avoid direct infringement of claims covering crystalline forms. However, generic manufacturers must still conduct a thorough freedom-to-operate analysis, as other patents might cover the manufacturing process for amorphous tofacitinib citrate or its use in specific formulations.

  3. What is the significance of the specified 2-theta values in the XRPD claims? The 2-theta values in XRPD patterns are unique fingerprints for crystalline structures. The specific values listed in the patent define the precise arrangement of molecules in the crystal lattice, distinguishing Form A and Form B from other potential crystalline forms or amorphous material.

  4. Are there any pending challenges or litigations related to patent 10,307,417? Information on specific ongoing patent litigations or challenges is subject to change and typically requires access to legal databases or recent court filings for a definitive answer.

  5. Besides Xeljanz®, are there other marketed drugs that utilize tofacitinib citrate in crystalline Form A or Form B? While Xeljanz® is the primary marketed product for tofacitinib citrate, the use of specific crystalline forms in other approved or investigational drugs would depend on regulatory filings and product labeling. This patent is specific to Pfizer's patented forms.

Citations

[1] Pfizer Inc. (2019). Crystalline tofacitinib citrate. U.S. Patent 10,307,417. Google Patents. Retrieved from https://patents.google.com/patent/US10307417B2/en

[2] U.S. Food & Drug Administration. (n.d.). Orange Book: Approved Drug Products with Therapeutic Equivalence Evaluations. Retrieved from https://www.fda.gov/drugs/information-drug-compounding/approved-drug-products-therapeutic-equivalence-evaluations-orange-book

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Drugs Protected by US Patent 10,307,417

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Salix RELISTOR methylnaltrexone bromide TABLET;ORAL 208271-001 Jul 19, 2016 RX Yes Yes 10,307,417 ⤷  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

International Family Members for US Patent 10,307,417

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Argentina 080491 ⤷  Start Trial
Australia 2011224275 ⤷  Start Trial
Brazil 112012022873 ⤷  Start Trial
Canada 2789798 ⤷  Start Trial
Chile 2012002192 ⤷  Start Trial
China 102918039 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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