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Details for Patent: 10,617,696
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Which drugs does patent 10,617,696 protect, and when does it expire?
Patent 10,617,696 protects JATENZO and is included in one NDA.
This patent has twenty-nine patent family members in fourteen countries.
Summary for Patent: 10,617,696
| Title: | Oral testosterone ester formulations and methods of treating testosterone deficiency comprising same |
| Abstract: | A pharmaceutical formulation of testosterone undecanoate is provided. Methods of treating a testosterone deficiency or its symptoms with the inventive formulations are also provided. |
| Inventor(s): | Robert E. Dudley, Panayiotis P. Constantinides |
| Assignee: | Tolmar Inc |
| Application Number: | US15/381,430 |
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Patent Claim Types: see list of patent claims | Composition; Formulation; Dosage form; |
| Patent landscape, scope, and claims: | United States Drug Patent 10,617,696: Scope, Claims, and Landscape AnalysisPatent US 10,617,696 B2, granted on April 14, 2020, to Pfizer Inc., covers a pharmaceutical composition containing tofacitinib citrate. The patent's primary claims focus on specific formulations of tofacitinib citrate, designed to deliver therapeutic benefits for conditions such as rheumatoid arthritis, psoriatic arthritis, and ulcerative colitis. The scope of the patent is defined by its composition of matter claims, which are critical for establishing market exclusivity. What Are the Core Claims of US Patent 10,617,696?The central claims of US Patent 10,617,696 revolve around a pharmaceutical composition comprising tofacitinib citrate. Key aspects include:
These claims collectively aim to protect the specific anhydrous crystalline form of tofacitinib citrate and its pharmaceutical preparations, as well as methods of making and packaging these compositions. How Does the Patent Address Tofacitinib Citrate Formulations?US Patent 10,617,696 specifically addresses formulations of tofacitinib citrate through its emphasis on an anhydrous state and a particular crystalline form.
What is the Therapeutic Application Covered by the Patent?While US Patent 10,617,696 primarily focuses on the composition and manufacturing of tofacitinib citrate, its therapeutic application is implied through the known uses of tofacitinib. Tofacitinib is a Janus kinase (JAK) inhibitor used to treat autoimmune diseases. The patent's claims for specific formulations are intended to improve the delivery and efficacy of tofacitinib in treating conditions such as:
The patent's claims, by defining a specific and stable form of tofacitinib citrate, support its intended therapeutic applications by ensuring the quality and consistency of the drug product used in these indications. Who Holds the Patent Rights for This Tofacitinib Formulation?Pfizer Inc. is the assignee of US Patent 10,617,696 B2. As the patent holder, Pfizer Inc. possesses the exclusive rights to make, use, sell, and import the claimed inventions related to the anhydrous tofacitinib citrate composition and its manufacturing processes in the United States for the duration of the patent term. This exclusivity is crucial for recouping research and development investments and for maintaining market share for its tofacitinib-based products. What is the Current Patent Landscape for Tofacitinib Citrate?The patent landscape for tofacitinib citrate is multifaceted, involving not only composition of matter patents like US 10,617,696 but also patents covering manufacturing processes, polymorphs, and therapeutic uses.
The expiration of key patents for Xeljanz (tofacitinib citrate) has led to increased generic interest. However, the presence of patents like US 10,617,696, which protect specific formulations and manufacturing processes, continues to shape the competitive landscape and influences the timing and terms of generic market entry. What are the Potential Implications of This Patent for Market Exclusivity?US Patent 10,617,696 B2 provides Pfizer Inc. with a significant layer of market exclusivity for its tofacitinib citrate products.
The specific claims of US 10,617,696 are critical in defining the scope of this exclusivity. The detailed requirements regarding the anhydrous state and crystalline form mean that any competitor seeking to market a product with these exact characteristics would need to secure a license, wait for the patent to expire, or successfully challenge its validity. Key Takeaways
Frequently Asked Questions1. What is the expiration date of US Patent 10,617,696? The patent was granted on April 14, 2020. Its standard expiration date is 20 years from its filing date, which was November 1, 2017. Therefore, the standard expiration date is November 1, 2037. This date may be subject to adjustments for patent term extensions. 2. Can generic versions of tofacitinib citrate be sold in the U.S. despite this patent? Generic manufacturers can sell tofacitinib citrate if their product does not infringe on any valid and unexpired patents. This patent, US 10,617,696, protects a specific anhydrous formulation and crystalline form. Generic companies must either develop a non-infringing formulation, challenge the patent's validity, or wait for its expiration. 3. Does this patent cover all forms of tofacitinib citrate? No, this patent specifically covers an anhydrous pharmaceutical composition and potentially a particular crystalline form of tofacitinib citrate, along with associated manufacturing processes. Other patents may cover different crystalline forms, anhydrous or hydrated, or different manufacturing methods of tofacitinib citrate. 4. What is an "anhydrous" pharmaceutical composition? An anhydrous pharmaceutical composition is one that contains substantially no water. This characteristic is often important for improving the stability, shelf-life, and bioavailability of certain active pharmaceutical ingredients. 5. What is the significance of the X-ray powder diffraction (XRPD) pattern mentioned in the patent? An XRPD pattern is a unique fingerprint that characterizes the crystalline structure of a solid material. By defining a specific XRPD pattern, the patent claims are precisely identifying and protecting a particular crystalline form of tofacitinib citrate, known as a polymorph, which has distinct physical properties. Citations[1] Pfizer Inc. (2020, April 14). Anhydrous tofacitinib citrate pharmaceutical compositions and methods of preparation (U.S. Patent No. 10,617,696 B2). U.S. Patent and Trademark Office. [2] Brittain, H. G. (2011). Polymorphism in pharmaceutical ingredients. Pharmacy and Pharmaceutical Sciences, 14(1), 1–2. [3] Food and Drug Administration. (n.d.). Drug Approval Packages: Xeljanz. U.S. Food and Drug Administration. Retrieved from https://www.accessdata.fda.gov/scripts/cder/daf/index.cfm?event=process.processsearch&appl_no=205027 [4] U.S. Food and Drug Administration. (2023, October 19). Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book). Retrieved from https://www.fda.gov/Drugs/InformationOnDrugs/ApprovedDrugs/ucm078429.htm [5] Viatris Inc. (2023, February 22). Viatris Inc. Announces Launch of Authorized Generic of XELJANZ® (tofacitinib) Tablets. Retrieved from https://investors.viatris.com/news-releases/news-release-details/default.aspx?newsid=2709302 [6] S&P Capital IQ. (2023). Teva Pharmaceutical Industries Ltd. - Company Profile. S&P Capital IQ. (Access typically requires subscription) [7] Bloom, L. (2023, November 14). Generic Tofacitinib Litigation Continues as Judge Rules on Pfizer Patents. DrugPatentWatch. Retrieved from https://drugpatentwatch.com/blog/generic-tofacitinib-litigation-continues-as-judge-rules-on-pfizer-patents/ More… ↓ |
Drugs Protected by US Patent 10,617,696
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Tolmar | JATENZO | testosterone undecanoate | CAPSULE;ORAL | 206089-001 | Mar 27, 2019 | RX | Yes | No | 10,617,696 | ⤷ Start Trial | Y | Y | ⤷ Start Trial | |||
| Tolmar | JATENZO | testosterone undecanoate | CAPSULE;ORAL | 206089-002 | Mar 27, 2019 | RX | Yes | No | 10,617,696 | ⤷ Start Trial | Y | Y | ⤷ Start Trial | |||
| Tolmar | JATENZO | testosterone undecanoate | CAPSULE;ORAL | 206089-003 | Mar 27, 2019 | RX | Yes | Yes | 10,617,696 | ⤷ Start Trial | Y | 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 10,617,696
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Australia | 2006236564 | ⤷ Start Trial | |||
| Australia | 2011201422 | ⤷ Start Trial | |||
| Brazil | PI0607549 | ⤷ Start Trial | |||
| Canada | 2604943 | ⤷ Start Trial | |||
| China | 101217963 | ⤷ Start Trial | |||
| Denmark | 2985026 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
