Details for Patent: 10,583,130

Which drugs does patent 10,583,130 protect, and when does it expire?

Patent 10,583,130 protects ONGENTYS and is included in one NDA.

This patent has twenty-seven patent family members in fifteen countries.

Summary for Patent: 10,583,130

Title:	Pharmaceutical formulations compromising nitrocatechol derivatives and methods of making thereof
Abstract:	The present disclosure relates to compositions and pharmaceutical formulations comprising at least one active pharmaceutical ingredient chosen from nitrocatechol derivatives of formula I as defined herein and salts, esters, hydrates, solvates and derivatives thereof and methods of making said compositions and pharmaceutical formulations.
Inventor(s):	Teofilo Cardoso de VASCONCELOS, Ricardo Jorge dos Santos Lima, Rui Cerdeira De Campos Costa
Assignee:	Bial Portela and Cia SA
Application Number:	US16/050,602
Patent Claim Types: see list of patent claims	Use; Composition; Formulation; Dosage form;

US Patent 10,583,130: Claim Scope, Opicapone Patent Landscape, and Generic-Entry Risk

US Patent No. 10,583,130 is a formulation and method-of-treatment patent directed to granules containing an opicapone-related pyridine N-oxide compound. Its claims require a composition with a bulk density above 0.2 g/mL and, in narrower embodiments, above 0.3 g/mL. The patent does not claim opicapone as a standalone chemical entity. It claims administering a specified granulated composition to treat Parkinson's disease, parkinsonian disorders, or restless legs syndrome.

The principal commercial relevance is its potential overlap with opicapone products, including Ongentys, where the formulation contains the claimed N-oxide compound or where the patent holder characterizes that compound as the active or relevant drug substance. The patent's value depends on whether an approved or competing product contains the claimed N-oxide compound in granulated form at the specified density.

What does US Patent 10,583,130 cover?

The patent contains two independent method claims:

Independent claim	Core requirement	Practical scope
Claim 1	Administering a composition comprising granules of the specified pyridine 1-oxide compound, with bulk density above 0.2 g/mL	Broad method claim
Claim 8	Administering a pharmaceutical formulation containing that granulated composition, with bulk density above 0.2 g/mL	Formulation-focused method claim

Both independent claims require:

1. Treatment of Parkinson's disease, a parkinsonian disorder, or restless legs syndrome.
2. Administration to a patient.
3. Granules containing the specified pyridine 1-oxide compound.
4. Bulk density greater than 0.2 g/mL.

The claims are open-ended because they use "comprising." A competing formulation can contain additional excipients, active ingredients, impurities, or processing aids and still fall within the claims if all required elements are present.

The patent is therefore not limited to a particular tablet press, capsule shell, excipient system, particle-size distribution, or manufacturing process. The density and chemical-content limitations are the central technical boundaries.

What chemical compound is claimed?

The principal compound is:

2,5-dichloro-3-(5-(3,4-dihydroxy-5-nitrophenyl)-1,2,4-oxadiazol-3-yl)-4,6-dimethylpyridine 1-oxide.

A second compound appears in claims 3 through 6 and 13 through 16 and 21 through 24:

5-[3-(2,5-dichloro-4,6-dimethylpyridin-3-yl)-[1,2,4]oxadiazol-5-yl]-3-nitrobenzene-1,2-diol.

The second compound is the non-N-oxide pyridine compound generally identified with opicapone. The first compound is the corresponding pyridine N-oxide species or an opicapone-related N-oxide analogue.

The claim architecture makes the N-oxide compound the required principal component. Opicapone is optional under the dependent claims and is limited to a minor proportion or included in a combined-dose calculation.

How do the claims narrow from claim 1 to claim 24?

Claims 1 and 2: therapeutic use

Claim 1 covers treatment of three disease categories. Claim 2 narrows the indication to Parkinson's disease.

The claim does not specify:

• Disease severity.
• Prior levodopa use.
• Concomitant carbidopa or levodopa therapy.
• Dosing frequency.
• Treatment duration.
• Route of administration.
• Patient age.
• Clinical endpoint.

A product administered for Parkinson's disease would satisfy the disease limitation if the formulation and chemical limitations are also met.

Claims 3 through 7: composition and density limitations

Claim 3 adds the opicapone compound to the composition.

Claim 4 requires a ratio of the N-oxide compound to opicapone of approximately 99:1 to 95:5.

Claim 5 separately limits opicapone to no more than approximately 5% by weight relative to the N-oxide compound.

Claim 6 adds conventional pharmaceutical excipients, including:

• Fillers.
• Diluents.
• Binders.
• Disintegrants.
• Lubricants.
• Glidants.

Claim 7 raises the bulk-density requirement from greater than 0.2 g/mL to greater than 0.3 g/mL.

The range in claim 4 and the concentration ceiling in claim 5 are functionally aligned. A composition containing 1% to 5% opicapone relative to the N-oxide compound would generally fall within both limitations, subject to the applicable basis of calculation and analytical method.

Claims 8 through 24: pharmaceutical dosage forms and dose amounts

Claim 8 repeats the broad treatment concept but expressly requires a pharmaceutical formulation.

Claims 10, 11, 14, and 15 narrow the dosage form to tablets or capsules, and then to capsules.

Claims 12, 17, 18, 19, and 20 define dose amounts of the N-oxide compound:

Claim	N-oxide amount
12	At least 10 mg
17	At least 20 mg
18	At least 50 mg
19	About 25 mg
20	About 50 mg

Claims 13 and 16, 21 through 24 add opicapone and define combined amounts:

Claims	Combined N-oxide plus opicapone amount
16, 21	At least 10 mg or at least 20 mg, depending on the claim
22	At least 50 mg
23	About 25 mg
24	About 50 mg

The dose claims do not establish a complete dosing regimen. They refer to the total amount in the administered formulation or dosage form, but the exact interpretation may depend on the specification and prosecution history.

What is the strongest part of the patent?

The strongest practical protection is likely the combination of:

• The specified N-oxide compound.
• Granulated material.
• Bulk density above 0.2 g/mL.
• Administration for Parkinson's disease.
• Capsule or tablet dosage forms.
• Dose levels of 25 mg or 50 mg.

A generic or follow-on product would face greater exposure if its product-by-process documentation, development batch data, or reverse-engineered formulation showed all of those features.

The broadest claim, claim 1, does not require a capsule, tablet, particular dose, opicapone, or named excipient. It can reach a wide range of dosage forms if the product contains the required granules and exceeds the density threshold.

The principal vulnerability is that every independent claim requires the specific N-oxide compound and a measurable bulk-density limitation. A product containing only conventional opicapone, without the claimed N-oxide compound, would not meet the literal chemical limitation.

How important is the bulk-density limitation?

Bulk density is a material property that can change with:

• Granulation method.
• Particle-size distribution.
• Moisture content.
• Compaction.
• Milling.
• Storage conditions.
• Measurement protocol.

The difference between greater than 0.2 g/mL and greater than 0.3 g/mL is commercially meaningful. A formulation engineered below 0.2 g/mL would have a stronger non-infringement position, although that design may affect capsule fill, dose uniformity, flowability, and manufacturing economics.

A dispute would likely focus on:

1. Whether the tested material is the claimed "composition."
2. Whether bulk density is measured before or after blending.
3. Whether tapped density is being substituted for bulk density.
4. The moisture and conditioning state of the sample.
5. Whether the density must be measured on the granules alone or the complete formulation.
6. Whether the accused product contains the N-oxide compound as an intentional ingredient, impurity, degradation product, or manufacturing residue.

The patent does not expressly state in the claims whether the density measurement applies to the active-containing granules, the broader composition, or the final formulation. The specification and prosecution record would be important in litigation.

Does the patent claim opicapone itself?

No. The supplied claims do not claim opicapone as a standalone compound.

Opicapone appears as an optional additional compound in claims 3 through 6 and 13 through 16 and 21 through 24. In those claims, opicapone is present alongside the N-oxide compound and generally at no more than approximately 5% relative to the N-oxide compound.

This distinction matters for freedom-to-operate analysis:

Product configuration	Likely relevance to US 10,583,130
Pure opicapone formulation without the N-oxide compound	Lower risk under the supplied claims
N-oxide compound in non-granulated form	Potential non-infringement position, subject to claim construction
N-oxide compound in granules below 0.2 g/mL bulk density	Potential non-infringement position
N-oxide compound in granules above 0.2 g/mL	Direct claim concern
N-oxide compound plus 1% to 5% opicapone	Direct concern under claims 3 to 5
Capsule containing at least 25 mg or 50 mg of the N-oxide compound	Direct concern under claims 11, 19, and 20 if other limitations are met

What is the Orange Book status of US 10,583,130?

The Orange Book issue must be separated from patent enforceability. A patent may be valid and enforceable without being listed in the Orange Book. Conversely, Orange Book listing does not establish validity or infringement.

Ongentys is an FDA-approved opicapone product for use in combination with levodopa/carbidopa in patients with Parkinson's disease experiencing "off" episodes. FDA approved the product under NDA 212489 in 2020. The FDA labeling identifies opicapone as the active ingredient and describes capsule strengths of 25 mg and 50 mg. [2]

The supplied claims, however, are directed principally to a pyridine N-oxide compound rather than to opicapone alone. The commercial significance of US 10,583,130 therefore depends on:

• Whether the approved product contains the claimed N-oxide compound.
• Whether that compound is present as an active ingredient, impurity, metabolite, or process-related component.
• Whether the patent was submitted for listing against the relevant NDA.
• Whether FDA accepted the patent as claiming the approved drug, a formulation, or an approved method of use.

The official Orange Book patent listing, rather than the patent text alone, controls the regulatory listing analysis. [3]

When does US 10,583,130 lose exclusivity?

US Patent 10,583,130 was issued on March 10, 2020. Patent expiration is generally calculated from the earliest effective nonprovisional or international filing date, not from the issue date, subject to patent-term adjustment, terminal disclaimers, and other statutory corrections. [1, 4]

The patent number and claims alone do not establish a legally operative expiration date. The controlling date should be taken from the USPTO Patent Center record and the patent's front-page term information. Any commercial analysis should distinguish:

• Nominal expiration.
• Patent-term adjustment.
• Patent-term extension under 35 U.S.C. § 156.
• Regulatory exclusivity.
• Orange Book listing status.
• Litigation-based launch restrictions.

For opicapone, the relevant FDA exclusivity period is separate from patent term. NDA-based exclusivity does not extend the patent and patent term does not automatically create FDA exclusivity. [2, 3]

Are there Paragraph IV challenges or generic competitors?

A Paragraph IV challenge would be relevant only if a generic applicant filed an ANDA referencing an approved product and certified that a listed patent was invalid, unenforceable, or not infringed. The existence of a Paragraph IV certification does not itself establish market entry or patent weakness.

For US 10,583,130, the commercial risk analysis has two levels:

Product-level risk

A generic referencing opicapone would need to determine whether its product contains the claimed N-oxide compound. If the generic contains only opicapone, the patent's chemical limitation may not be met.

Formulation-level risk

If the generic's product contains the N-oxide compound and uses granulation with bulk density above 0.2 g/mL, the applicant could face a direct method-of-treatment infringement theory. A generic may attempt to avoid that risk through:

• A different impurity profile.
• A non-granulated manufacturing route.
• A lower-density intermediate.
• A different active form.
• A certification or carve-out strategy, depending on the listed use and patent status.

No biosimilar pathway applies because opicapone is a chemically synthesized small molecule. The relevant competitor pathway is the ANDA process, not a 351(k) biosimilar application.

What litigation affects the patent?

The supplied information does not establish a specific infringement action, Paragraph IV case, settlement, consent judgment, or license involving US 10,583,130. The patent's litigation status should be determined from PACER, USPTO Patent Center, and FDA Orange Book records.

The absence of a known litigation event would not eliminate risk. A patent owner can assert a method-of-treatment patent after a product launch, and a generic applicant can challenge the patent before commercial entry.

The most likely litigation issues would be:

1. Whether the accused product contains the N-oxide compound.
2. Whether the material is present in claimed granules.
3. Whether bulk density exceeds 0.2 g/mL.
4. Whether the method is practiced by prescribing, dispensing, or patient administration.
5. Whether the patent claims are enabled across the full disease and formulation scope.
6. Whether the claims are anticipated by earlier opicapone or N-oxide formulation disclosures.
7. Whether the claimed density limitation provides a patentable distinction over conventional granulation.

How strong is the patent estate for opicapone-related products?

US 10,583,130 should be treated as a secondary or formulation-specific asset, not as the core composition-of-matter patent for opicapone.

Estate category	Relevance to commercial protection
Opicapone composition-of-matter patents	Usually the strongest protection for the active molecule
Salt, polymorph, or solid-state patents	Important where the product uses a defined solid form
Formulation patents	Protect excipient systems, release profiles, density, or dosage forms
Method-of-use patents	Protect treatment indications and dosing regimens
Manufacturing patents	Can create supply-chain and process barriers
US 10,583,130	Targets a defined N-oxide-containing granulated composition and treatment method

The patent is stronger against a product that intentionally reproduces the claimed N-oxide-containing granule system. It is weaker against a pure-opicapone product that does not contain the N-oxide compound or does not meet the bulk-density limitation.

What generic launch scenarios exist?

Scenario 1: Pure opicapone generic

A generic containing opicapone without the claimed N-oxide compound may have a credible non-infringement position under the supplied claims. Other opicapone patents could still block launch.

Scenario 2: Same impurity or N-oxide profile

A generic manufactured using the same chemistry and granulation conditions could face a stronger infringement argument, especially if testing confirms a density above 0.2 g/mL.

Scenario 3: Formulation design-around

A competitor could target a different granulation process, density range, dosage form, or chemical profile. The commercial feasibility would depend on capsule fill, stability, dissolution, and bioequivalence.

Scenario 4: Paragraph IV litigation and settlement

A generic could challenge the patent while offering a later entry date. Any settlement would need review for its entry date, permitted formulation, authorized-generic provisions, and restrictions on N-oxide content.

Key Takeaways

• US 10,583,130 is a method-of-treatment and formulation patent.
• Its independent claims require granules containing a specific pyridine N-oxide compound.
• Bulk density must exceed 0.2 g/mL; selected dependent claims raise the threshold to above 0.3 g/mL.
• Opicapone is an optional secondary compound, generally limited to approximately 5% relative to the N-oxide compound.
• The patent does not claim pure opicapone as a standalone active ingredient.
• Capsules and 25 mg or 50 mg dose levels are expressly covered in dependent claims.
• The main design-around opportunities involve chemical composition, granulation, bulk density, and impurity control.
• The patent is relevant to small-molecule generic analysis, not biosimilar analysis.
• Orange Book listing, FDA exclusivity, patent expiration, and litigation status must be evaluated separately.
• The patent's commercial strength depends on whether the approved product or a competing product actually contains the claimed N-oxide compound in the claimed physical form.

FAQs

Is US 10,583,130 an opicapone composition patent?

No. Based on the supplied claims, it is directed to methods using an opicapone-related pyridine N-oxide compound, with opicapone appearing as an optional additional component.

Can a pure opicapone capsule infringe US 10,583,130?

Not under the literal supplied claims if the capsule lacks the claimed pyridine N-oxide compound. Other patents may still cover pure opicapone, its formulation, or its use.

Why does bulk density matter in this patent?

Bulk density is a claim-limiting physical property. A formulation containing the chemical compound may avoid literal infringement if the relevant granulated composition does not exceed the claimed density threshold.

Does the patent cover both tablets and capsules?

Yes. Dependent claim 10 covers tablets and capsules, while claim 11 narrows the formulation to capsules. Related claims 14 and 15 do the same for compositions containing opicapone.

Is a biosimilar challenge relevant to this patent?

No. Opicapone and the claimed compounds are small molecules. The relevant regulatory route for a competing product is generally an ANDA, not a biosimilar application.

References

1. United States Patent and Trademark Office. (2020). U.S. Patent No. 10,583,130.
2. U.S. Food and Drug Administration. (2020). Ongentys (opicapone) prescribing information.
3. U.S. Food and Drug Administration. (2024). Approved drug products with therapeutic equivalence evaluations: Orange Book.
4. United States Patent and Trademark Office. (2024). Manual of Patent Examining Procedure, Chapter 2700: Patent term.

Drugs Protected by US Patent 10,583,130

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
Amneal	ONGENTYS	opicapone	CAPSULE;ORAL	212489-001	Apr 24, 2020		RX	Yes	No	10,583,130					ADJUNCTIVE TREATMENT TO LEVODOPA/CARBIDOPA IN PATIENTS WITH PARKINSON’S DISEASE EXPERIENCING OFF EPISODES
Amneal	ONGENTYS	opicapone	CAPSULE;ORAL	212489-002	Apr 24, 2020		RX	Yes	Yes	10,583,130					ADJUNCTIVE TREATMENT TO LEVODOPA/CARBIDOPA IN PATIENTS WITH PARKINSON’S DISEASE EXPERIENCING OFF EPISODES

International Family Members for US Patent 10,583,130

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
Australia	2010231961
Brazil	PI1014865
Canada	2757411
China	102448444
China	105878242
Denmark	2413912