Details for Patent: 10,465,195
Which drugs does patent 10,465,195 protect, and when does it expire?
Patent 10,465,195 protects OXLUMO and is included in one NDA.
This patent has thirty-two patent family members in twenty countries.
Summary for Patent: 10,465,195
| Title: | Methods and compositions for the specific inhibition of glycolate oxidase (HAO1) by double-stranded RNA | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | This invention relates to compounds, compositions, and methods useful for reducing Glycolate Oxidase (HAO1) target RNA and protein levels via use of dsRNAs, e.g., Dicer substrate siRNA (DsiRNA) agents. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Bob D. Brown, Henryk T. Dudek | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Novo Nordisk AS | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US16/297,316 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; Composition; | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | US Drug Patent 10,465,195: Scope, Claim Construction, Exclusivity, and HAO1 Patent LandscapeUS Patent No. 10,465,195 protects modified double-stranded nucleic acids directed to the HAO1 gene, including the siRNA active ingredient used in lumasiran, marketed as Oxlumo by Alnylam Pharmaceuticals. The patent covers the nucleic-acid structure, selected sequence relationships, chemical modifications, GalNAc conjugation, pharmaceutical compositions, and methods for treating primary hyperoxaluria type 1 (PH1) [1, 2]. The patent is composition-focused but includes method-of-use claims broad enough to reach administration of a qualifying HAO1-silencing dsNA to human PH1 patients. Its commercial relevance is highest for lumasiran products and follow-on HAO1 RNAi products using the claimed sequence architecture. What does US Patent 10,465,195 cover?The independent claims divide the patent into three protection categories:
Claim 1 is the principal composition claim. It requires:
The claim uses "comprising," an open transitional term. A qualifying dsNA may therefore contain additional nucleotides, chemical modifications, conjugates, or structural features unless another claim limitation excludes them. How should the core dsNA claim be construed?First-strand limitationsThe first strand must be 15-27 nucleotides long and must contain at least one modified nucleotide. Claim 15 narrows the first strand to SEQ ID NO: 1823. Claim 16 further limits the first strand to specified lengths from 21 through 27 nucleotides. The claim set therefore contains both:
Claim 16 contains a repeated "25" in the supplied text. That appears to be a drafting or transcription duplication and does not change the operative length range. Second-strand limitationsThe second strand must be 19-27 nucleotides long and complementary to SEQ ID NO: 1823 across at least 19 consecutive nucleotides. The second strand may include:
Claim 10 is commercially important because it moves beyond a purely functional complementarity limitation and identifies a defined sequence segment. A product with a second strand containing the specified 23-nucleotide sequence would face a more direct claim comparison than a product designed around a different HAO1-targeting sequence. What chemical modifications are protected?Claims 4, 20, and 21 cover ribose modifications. The principal protected modifications are:
Claim 19 creates a broad modification-density limitation. It covers dsNAs in which at least 10% to 95% or more of the nucleotides are modified. Because the claim recites multiple alternative thresholds, a molecule satisfying a higher threshold would also satisfy the lower thresholds. Claims 6, 7, 13, and 14 cover phosphorothioate linkages. The strongest terminal-protection embodiments place the linkage at the final internucleotide linkage at either the 3′ or 5′ terminus. These modifications can improve nuclease resistance and are relevant to analytical comparison of a generic or follow-on RNAi product. What overhang and duplex structures are protected?The patent claims several structural configurations:
The overhang and blunt-end limitations create alternative claim pathways. A molecule may be exposed to claims directed to an overhang configuration while avoiding a blunt-end dependent claim, or vice versa. The presence of an overhang does not automatically avoid claim 1 because claim 1 does not require a blunt or overhanging end. Does the patent cover GalNAc-conjugated lumasiran?Yes. Claim 22 requires the 3′ terminus of the first nucleic acid to be conjugated to a GalNAc moiety. This is the limitation most closely aligned with the hepatocyte-targeted delivery design used by lumasiran. GalNAc conjugation is commercially significant because Oxlumo is administered systemically but is designed to deliver the siRNA to hepatocytes through the asialoglycoprotein receptor pathway. A product that uses the claimed HAO1 sequence and a GalNAc conjugate could implicate claim 22 even if its carrier, dosage form, or manufacturing process differs from Alnylam's product [2]. The claim does not require a particular GalNAc valency, linker chemistry, attachment site beyond the recited terminus, or formulation excipient. Those issues would depend on the patent specification and prosecution history, not only the issued claims. What methods of use does US 10,465,195 protect?Claims 24-28 protect use of the claimed dsNA to reduce HAO1 mRNA in mammalian cells. The method claim progression is:
Claim 24 is broader than the PH1 treatment claims because it applies to mammalian cells without requiring a disease indication. Claims 26-28 are narrower but commercially more important because they track human therapeutic use. The claims do not expressly require a reduction in urinary oxalate, preservation of kidney function, a particular dose, a dosing interval, or a specific clinical endpoint. A competing product that uses the claimed dsNA to reduce HAO1 expression in a human PH1 patient could face method-of-use exposure even if its label uses different efficacy language. What is the FDA and Orange Book status of the patent?Oxlumo, the lumasiran product associated with the HAO1 RNAi program, received FDA approval in November 2020 for treatment of primary hyperoxaluria type 1 to reduce urinary oxalate levels in pediatric and adult patients [2]. US Patent No. 10,465,195 is relevant to the product's active siRNA and delivery architecture. The FDA Orange Book is the controlling source for whether the patent is listed against the approved drug, the listed use, and any pediatric exclusivity or patent-term information [3]. Exclusivity timeline
The patent's exact Orange Book expiry date should be taken from the current FDA listing because patent-term adjustment, patent-term extension, terminal disclaimers, and regulatory listing status can affect the operative date [3]. When does lumasiran lose exclusivity?Lumasiran's regulatory exclusivity and patent exclusivity are separate. The five-year NCE period restricts submission of an ANDA for a drug relying on the reference product's safety and efficacy data, subject to statutory exceptions. That period is distinct from the patent term. After NCE exclusivity expires, an ANDA applicant may submit a Paragraph IV certification against listed patents. The commercial loss-of-exclusivity date is therefore determined by the later of:
A generic applicant could file before patent expiry with a Paragraph IV certification. Filing does not itself establish an immediate launch right. Patent litigation can trigger a 30-month stay of approval if the statutory requirements are met. How strong is the patent estate for lumasiran?US 10,465,195 is strongest against products that reproduce the following combination:
Its protection is narrower against:
The patent is more than a sequence patent. It combines sequence, length, duplex architecture, chemical modification, terminal stabilization, conjugation, formulation, and therapeutic-use limitations. That layered structure increases the number of design-around variables but also gives the patent holder multiple infringement theories for products closely modeled on lumasiran. Which companies are challenging the patent?No Paragraph IV challenger, ANDA litigation judgment, or settlement agreement can be established from the claim text alone. Public regulatory and court records must be reviewed separately for current challenger identity, filing date, asserted claims, district court venue, and any 30-month stay. The relevant litigation questions are:
The patent record identifies the scope of the claims but does not by itself establish litigation status. What manufacturing and IP barriers affect a follow-on product?A competing lumasiran-like product would face both patent and technical barriers. Manufacturing barriersThe principal manufacturing issues include:
An ANDA applicant cannot rely solely on small-molecule bioequivalence concepts if the product's structure, conjugation, and manufacturing process raise complex-product issues. FDA may require extensive analytical and pharmacokinetic support under the applicable pathway. Patent design-around optionsPotential design-around strategies include:
How does US 10,465,195 compare with other HAO1 patent categories?
US 10,465,195 is most accurately categorized as a combined HAO1 sequence and chemically modified dsNA patent with GalNAc and therapeutic-use subclaims. It should be analyzed alongside, rather than in isolation from, Alnylam's sequence, conjugate, formulation, manufacturing, and dosing patent families. What are the main commercial risks for generic entry?The principal risks are:
The most important diligence issue is therefore the complete patent family and Orange Book listing, not the expiration date of US 10,465,195 alone. Key Takeaways
FAQsIs US 10,465,195 a lumasiran composition patent?Yes. Its claims cover HAO1-directed modified dsNAs, including structural features associated with lumasiran, but the patent claims are written to nucleic-acid characteristics rather than using the product name. Does the patent require GalNAc conjugation?No. Claim 1 does not require GalNAc. GalNAc conjugation is added by dependent claim 22, which provides narrower protection for a GalNAc-conjugated embodiment. Can a different HAO1 siRNA avoid US 10,465,195?Potentially, if it does not satisfy the claimed complementarity, sequence, length, modification, or other structural limitations. A different sequence may still implicate separate HAO1 or RNAi patent families. Does the patent cover all treatments for primary hyperoxaluria?No. The method claims require use of the claimed dsNA to reduce HAO1 mRNA. They do not independently cover unrelated drugs, antisense compounds, small molecules, or other PH1 therapies. Is patent expiration the same as lumasiran loss of exclusivity?No. Regulatory exclusivity, patent term, pediatric exclusivity, litigation stays, settlements, and additional listed patents can produce different dates for filing, approval, and commercial generic entry. References
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Drugs Protected by US Patent 10,465,195
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Alnylam Pharms Inc | OXLUMO | lumasiran sodium | SOLUTION;SUBCUTANEOUS | 214103-001 | Nov 23, 2020 | RX | Yes | Yes | 10,465,195 | ⤷ Start Trial | Y | Y | TREATMENT OF PRIMARY HYPEROXALURIA TYPE 1 (PH1) | ⤷ 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 10,465,195
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| European Patent Office | 3581654 | ⤷ Start Trial | LUC00218 | Luxembourg | ⤷ Start Trial |
| European Patent Office | 3581654 | ⤷ Start Trial | PA2021008 | Lithuania | ⤷ Start Trial |
| European Patent Office | 3581654 | ⤷ Start Trial | 301132 | Netherlands | ⤷ Start Trial |
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
