Details for Patent: 10,532,047
Which drugs does patent 10,532,047 protect, and when does it expire?
Patent 10,532,047 protects REZLIDHIA and is included in one NDA.
This patent has twenty patent family members in seventeen countries.
Summary for Patent: 10,532,047
| Title: | Solid forms of ((S)-5-((1-(6-chloro-2-oxo-1,2-dihydroquinolin-3-yl)ethyl)amino)-1-methyl-6-oxo-1,6-dihydropyridine-2-carbonitrile | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | The present disclosure reports solid forms of ((S)-5-((1-(6-chloro-2-oxo-1,2-dihydroquinolin-3-yl)ethyl)amino)-1-methyl-6-oxo-1,6-dihydropyridine-2-carbonitrile. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | George P. Luke | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Forma Therapeutics Inc | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US16/414,716 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Compound; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | US Patent 10,532,047: Olutasidenib Solid-Form Scope, Exclusivity and Patent-Landscape AnalysisUS Patent 10,532,047 protects a specific crystalline solid form of olutasidenib, the active ingredient in Rezlidhia. The patent is not a broad composition-of-matter patent. Its enforceable scope is concentrated on olutasidenib material exhibiting defined XRPD, DSC, and DVS characteristics. The strongest practical coverage is directed to the crystalline form identified by XRPD peaks at 6.3°, 12.8°, 13.8°, 23.6°, and 27.8° 2θ, with a DSC endotherm near 256.6°C and low water uptake of approximately 0.25% w/w at 25°C and 90% relative humidity. [1] The patent can create a manufacturing and formulation barrier for a generic olutasidenib product if the proposed active pharmaceutical ingredient or finished dosage form uses the claimed crystalline form. It does not, on its face, prevent every olutasidenib product that uses a different polymorph, amorphous material, solvate, hydrate, salt, or other non-infringing solid form. What drug does US Patent 10,532,047 protect?US 10,532,047 protects a solid form of olutasidenib, also identified in the claims by its chemical name: “((S)-5-((1-(6-chloro-2-oxo-1,2-dihydroquinolin-3-yl)ethyl)amino)-1-methyl-6-oxo-1,6-dihydropyridine-2-carbonitrile.” Olutasidenib is an isocitrate dehydrogenase-1 inhibitor marketed by Rigel Pharmaceuticals as Rezlidhia. The FDA approved Rezlidhia in December 2022 for adults with relapsed or refractory acute myeloid leukemia with a susceptible IDH1 mutation. [2] The patent protects physical-state characteristics of the molecule rather than the molecule’s therapeutic mechanism or all medical uses. Patent identity and subject matter
How many claims does US 10,532,047 have?The patent has 20 claims in the claim set provided. Claims 1 through 13 focus on “Compound 1” and then identify the compound through solid-state characteristics. Claims 14 through 20 expressly identify olutasidenib. The claims are heavily nested. Claims 2 through 9 depend on claim 1, claims 11 through 13 depend on claim 10, and claims 15 through 20 create a second olutasidenib-specific chain. Claim architecture
What is the broadest claim in US Patent 10,532,047?Claim 14 is potentially the broadest olutasidenib-specific claim in the provided claim set. It covers a solid form of olutasidenib characterized by at least one of three properties:
This “at least one” structure is materially broader than the claims requiring simultaneous XRPD, DSC and DVS characteristics. A material could potentially fall within claim 14 based on only one qualifying analytical characteristic, assuming the claim survives construction and the accused material satisfies the applicable measurement parameters. Claim 10 is also significant because it is an independent claim directed to olutasidenib characterized by the DSC event. It specifies the DSC method, including an aluminum pan, nitrogen purge, a 10°C/minute ramp rate and a temperature range beginning at approximately room temperature. What XRPD pattern does the patent cover?The core XRPD signature is:
The expanded pattern adds peaks at 5.7°, 8.5°, 10.6°, 17.3°, 22.0° and 22.8°. Claim 5 also lists additional peaks extending through 38.1° 2θ. A key infringement issue is that XRPD peaks are not normally required to match with unlimited numerical precision. The claims use tolerances of ±0.2° 2θ and, in several claims, “same or substantially the same” peak positions. Differences caused by instrument calibration, sample preparation, preferred orientation, crystallite size, humidity, temperature or data-processing methods may become important in an infringement dispute. Technical scope of the XRPD limitationsThe XRPD claims can cover:
The claims do not expressly require a particular particle size, morphology, purity level, solvent content, excipient, capsule shell or manufacturing process. Does the patent cover olutasidenib generally?No. The claims provided do not cover every form of olutasidenib. A product may avoid literal infringement if it uses:
That distinction matters for generic strategy. A generic sponsor could pursue a solid-form design-around, but the alternative form would need to satisfy pharmaceutical development, stability, bioavailability, scale-up and regulatory requirements. A technically non-infringing form that cannot support a reliable capsule product has limited commercial value. When does US Patent 10,532,047 lose exclusivity?The patent issued on January 14, 2020. Its ordinary patent term is generally measured from the applicable nonprovisional or international filing date, subject to patent-term adjustment and any terminal disclaimer. The claims provided do not include the front-page bibliographic data needed to state an exact expiration date. The practical exclusivity date therefore depends on:
Patent term and FDA regulatory exclusivity are separate. FDA approval of Rezlidhia in 2022 created regulatory exclusivity periods independent of the patent term. [2] FDA exclusivityFor an approved small-molecule drug, relevant FDA exclusivities may include:
The applicable exclusivity status must be confirmed from FDA records. Patent expiry does not automatically establish generic launch eligibility if FDA exclusivity or other listed patents remain active. What is the Orange Book status of US 10,532,047?US 10,532,047 is potentially relevant to Orange Book protection for Rezlidhia because it claims a solid form of the active ingredient used in the approved drug. Orange Book listing, however, must be confirmed against the current FDA Approved Drug Products with Therapeutic Equivalence Evaluations database and the sponsor’s patent submission. An Orange Book-listed patent can require an ANDA applicant to:
A solid-form patent may be listed if it claims the drug substance, drug product, formulation, or an approved method of use. The claims supplied here are drug-substance solid-form claims. They are not conventional method-of-use claims and do not expressly recite a capsule formulation. What Paragraph IV challenges could target this patent?A Paragraph IV challenge could attack US 10,532,047 on several grounds: Non-infringementThe ANDA applicant could certify that its olutasidenib does not contain the patented form. This position would require analytical evidence showing that the proposed drug substance lacks the relevant XRPD peaks, DSC event or DVS behavior. AnticipationThe applicant could argue that the claimed solid form was disclosed in a single earlier publication, patent, regulatory filing or other qualifying prior-art reference. For a polymorph patent, anticipation generally requires disclosure of the claimed form and its defining characteristics, not merely disclosure of the molecular structure. ObviousnessThe applicant could argue that the claimed form would have been obvious to a skilled person seeking a stable, manufacturable or low-hygroscopic olutasidenib form. Relevant evidence could include:
Indefiniteness and written descriptionTerms such as “about,” “same or substantially the same,” and analytical limits may be challenged if the patent does not provide an objective boundary. The DSC claim may also raise questions concerning reproducibility across instruments, pans, purge conditions and heating rates. The patent’s detailed analytical parameters strengthen reproducibility for the DSC limitation. The XRPD claims remain dependent on sample and instrument conditions, which could be central to litigation. How strong is the patent estate for olutasidenib?US 10,532,047 appears technically focused but commercially meaningful. Its strength is higher against a generic that uses the same development form as the reference product and lower against a sponsor that develops a genuinely different polymorph or amorphous form.
The patent’s low water uptake limitation may also support a commercial narrative around stability and handling. That property does not by itself establish non-obviousness, but it can help connect the claimed form to manufacturing and product-quality advantages. What manufacturing barriers does the patent create?A generic manufacturer may need to establish control over:
Even if a generic sponsor selects a non-infringing solid form, manufacturing conditions can unintentionally produce the patented form as a minor component or conversion product. That creates a process-control risk. The sponsor would need validated solid-state specifications and stability data demonstrating that the alternative form remains outside the relevant claims throughout manufacture and storage. What generic launch scenarios exist?Scenario 1: Same-form launchThe generic uses the same crystalline form as Rezlidhia. This creates the highest infringement risk and is the most vulnerable path to a Paragraph IV suit. Scenario 2: Alternative polymorphThe generic uses a distinct polymorph. This reduces literal infringement risk but creates development and regulatory burdens. The alternative form must demonstrate acceptable stability, dissolution, bioequivalence and manufacturing reproducibility. Scenario 3: Amorphous or non-crystalline materialAn amorphous approach may avoid XRPD claims directed to the crystalline pattern. It may introduce physical-stability, hygroscopicity, dissolution and shelf-life risks. Scenario 4: Delayed launch after patent expiryA Paragraph III strategy avoids litigation but delays market entry until the relevant patent and regulatory exclusivities have expired. Scenario 5: Settlement-based entryA Paragraph IV filing could result in a settlement providing an agreed launch date before patent expiry. The commercial value of that route depends on the patent estate beyond US 10,532,047, FDA exclusivity and the number of competing ANDA applicants. Which companies are challenging olutasidenib exclusivity?No company-specific Paragraph IV challenger or settlement can be identified from the claim text alone. Public litigation, ANDA certification and settlement records must be matched to the current Orange Book listing and federal court docket data before attributing a challenge to a particular generic manufacturer. The competitive field is likely to include:
The absence of a known public challenger in the supplied material does not establish that no challenge exists. What licensing deals affect the patent?Forma Therapeutics developed olutasidenib, and Novo Nordisk acquired Forma in 2022. Rigel Pharmaceuticals later obtained rights to commercialize Rezlidhia in the United States. [3] The commercial rights arrangement is relevant to enforcement and product economics, but the claim text does not establish ownership of US 10,532,047, the patent’s assignment history, or the scope of any license. Patent ownership, Orange Book submission rights and litigation rights should be determined from USPTO assignment records, FDA listing information and the applicable transaction agreements. How does US 10,532,047 compare with a composition-of-matter patent?
US 10,532,047 should therefore be treated as a secondary patent barrier relative to a valid composition-of-matter patent, but it may still delay generic entry if the reference product’s crystalline form is copied or if no commercially viable alternative form exists. Key Takeaways
FAQsDoes US 10,532,047 cover the Rezlidhia capsule itself?The supplied claims do not expressly recite a capsule, capsule shell, excipient or finished dosage-form composition. They cover the olutasidenib solid form that may be used in the capsule. Can a generic avoid this patent by using a different polymorph?Potentially. A genuinely different polymorph may avoid the claimed XRPD pattern, DSC event or DVS characteristic. The alternative form must remain distinct during manufacture and storage. Is a DSC peak alone enough to infringe the patent?Claim 10 and claim 14 make the DSC limitation important. Whether a DSC event is sufficient depends on the asserted claim, the required analytical conditions and whether the accused material meets the claim’s “about” limitation. Does the patent protect olutasidenib treatment of IDH1-mutated AML?The supplied claims do not recite a therapeutic method, AML, IDH1 mutation status or patient-treatment step. They are solid-form claims. Can the patent block an olutasidenib API manufactured outside the United States?US patent infringement can arise from importing into the United States or selling, offering for sale, or using the patented product in the United States. Foreign manufacturing alone does not remove US exposure where the patented product enters the US market. References
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Drugs Protected by US Patent 10,532,047
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Rigel Pharms | REZLIDHIA | olutasidenib | CAPSULE;ORAL | 215814-001 | Dec 1, 2022 | RX | Yes | Yes | ⤷ Start Trial | ⤷ 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 10,532,047
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Cyprus | 1126012 | ⤷ Start Trial | |||
| Denmark | 3720442 | ⤷ Start Trial | |||
| European Patent Office | 3720442 | ⤷ Start Trial | |||
| European Patent Office | 4215197 | ⤷ Start Trial | |||
| Spain | 2941079 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
