Details for Patent: 10,722,471
Which drugs does patent 10,722,471 protect, and when does it expire?
Patent 10,722,471 protects ENTRESTO SPRINKLE and is included in one NDA.
This patent has thirty-one patent family members in twenty countries.
Summary for Patent: 10,722,471
| Title: | Galenic formulations of organic compounds | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | The present invention relates to a solid unit oral dosage form comprising sacubitril and valsartan in a 1:1 molar ratio, preferably in the form of the so-called angiotensin receptor neprilysin inhibitor (ARNI) LCZ696, which is a complex salt hydrate of sacubitril, valsartan, and sodium ions, appropriate for use in pediatrics or other patients where low and individual dosing is required or who encounter problems with swallowing e.g. as a result of a disease or because of age, to the manufacture of said solid dosage form and to invention embodiments relating to therapy using said dosage form. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Gesine Winzenburg, Bernd Trueby, Fabian CHEN, Surya Prakash Ayalasomayajula, Christopher Bush, Masha Berkhin | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Novartis AG | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US16/074,579 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; Composition; Dosage form; | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | US Patent 10,722,471: Sacubitril/Valsartan Minitablet Scope, Expiration, and Patent LandscapeUS Patent No. 10,722,471 protects a pediatric and low-dose oral dosage platform for sacubitril/valsartan. Its strongest protection is directed to a narrow combination of physical dimensions, dose, coating chemistry, excipient composition, and patient-use applications. The patent does not broadly claim every sacubitril/valsartan tablet, capsule, pellet, or pediatric formulation. The patent issued on July 28, 2020, from an application claiming priority to August 11, 2015. On that priority basis, the nominal 20-year patent term runs to August 11, 2036, subject to any patent-term adjustment, terminal disclaimer, or other USPTO term calculation. The patent is assigned to Novartis-related entities and is associated with the pediatric formulation strategy for Entresto, whose active pharmaceutical ingredient is sacubitril/valsartan sodium hemipentahydrate. [1] What does US Patent 10,722,471 protect?The independent product claim protects a coated minitablet meeting all of the following limitations:
A product must satisfy every limitation of claim 1 to infringe that claim literally. A formulation that contains sacubitril/valsartan but uses a different dosage form, a diameter outside the claimed range, a different coating polymer, or a polymer concentration outside the stated range would not literally meet claim 1. The dependent claims add narrower commercial embodiments, including:
How narrow is claim 1?Claim 1 is materially narrower than a conventional composition-of-matter claim. It is a formulation claim requiring the interaction of five technical parameters:
The claim is likely to be most relevant to pediatric or swallowing-impaired patients requiring individualized dosing. It is less likely to cover standard adult Entresto tablets, ordinary immediate-release tablets, sachets, conventional capsules filled with powder, or liquid formulations. The phrase “about 2 mg to about 5 mg” is potentially important in enforcement. The patent describes the amount by reference to the combined free-acid equivalents of sacubitril and valsartan, while dependent claim 4 identifies 3.125 mg. Product testing would need to establish the applicable assay basis and whether the accused product falls within the claimed range. What formulation details are protected?What polymer is claimed?Claims 6 and 7 identify a basic butylated methacrylate copolymer formed from:
Claim 7 narrows the polymer to a 1:2:1 monomer ratio. This corresponds to a basic methacrylate coating system commonly used for acid-soluble protective coatings. Claim 18 further requires dissolution only at pH 5 or lower. This combination creates a meaningful design-around issue. A competitor could potentially reduce infringement risk by using:
Whether such alternatives remain pharmaceutically acceptable and provide equivalent stability or taste-masking performance is a separate technical question. What excipients are protected?Claim 12 recites the core excipient classes:
Claim 13 narrows the composition to the following core ranges:
The claims create multiple infringement pathways. A product may infringe claim 1 without meeting claim 12 or 13. Conversely, a product that meets the narrow excipient ranges would still need to satisfy the independent minitablet, dose, coating, and polymer limitations. What are the principal claim vulnerabilities?The patent’s commercial value depends on whether the claimed combination was non-obvious over prior sacubitril/valsartan formulations, pediatric dosage technologies, and known methacrylate coating systems. Obviousness riskThe most likely validity challenge would combine:
The patent’s strongest response would be evidence that the claimed combination solved a formulation problem that was not predictable, such as poor content uniformity, dose accuracy at very low strengths, stability degradation, unacceptable taste, or difficulty manufacturing 1 mm to 4 mm minitablets. Written-description and enablement riskThe most vulnerable limitations may be the broad numerical ranges in claim 1, particularly:
A challenger could argue that the specification does not enable the full scope of those ranges without undue experimentation. That argument would depend on the number of working examples, formulation data, dissolution profiles, stability results, and manufacturing disclosure in the patent specification. Indefiniteness considerationsThe terms “about,” “controlled release,” “protective film-coating,” and “dissolves only at a pH of 5 or lower” may require construction in litigation. The specification and prosecution history would determine how those terms are measured. The phrase “only at a pH of 5 or lower” may create an analytical issue because dissolution depends on test conditions, agitation, temperature, coating thickness, and buffer composition. A clear validated dissolution method would strengthen enforcement. When does US Patent 10,722,471 expire?The patent claims priority to August 11, 2015. Assuming no terminal disclaimer and no unusual term adjustment, the baseline expiration date is August 11, 2036. The actual expiration date should be confirmed against the USPTO patent-term record before relying on it for a launch, transaction, or litigation position. The governing patent-term framework is 35 U.S.C. § 154, which generally provides a term of 20 years from the earliest effective nonprovisional filing date, subject to statutory adjustments. [2] The patent issued after the original sacubitril/valsartan composition-of-matter estate. That distinction matters. The earlier core compound and formulation patents may expire substantially earlier, while the minitablet patent can extend protection for the specific pediatric dosage technology into the mid-2030s. What is the Orange Book status of US Patent 10,722,471?The Orange Book status must be evaluated by product and dosage form. A patent is not automatically relevant to every FDA-approved sacubitril/valsartan product merely because it claims the same active ingredient. For Orange Book purposes, the key questions are:
The patent’s claims are primarily drug-product and method-of-use claims. They do not appear to be limited to a manufacturing process. If listed against a pediatric sacubitril/valsartan dosage form, an ANDA applicant seeking approval for a therapeutically equivalent product could need to address it through a Paragraph IV certification, unless the applicant waits until patent expiration or uses a non-infringing design. FDA’s Orange Book provides the controlling listed-patent record. [3] What Paragraph IV challenges and litigation affect this patent?A Paragraph IV challenge would likely target one or more of the following:
A Paragraph IV notice directed specifically to US 10,722,471 would create a potential Hatch-Waxman litigation pathway if the patent is listed for the reference product. A 30-month approval stay would depend on the timing of the notice, the listing, and the filing of an infringement action under the applicable FDA and patent statutes. [4] No specific Paragraph IV challenge, settlement agreement, or final court judgment concerning US 10,722,471 is established by the claim text supplied. The broader Entresto patent estate has generated generic-entry activity and patent disputes, but those proceedings must be distinguished from a challenge to this particular minitablet patent. Is biosimilar risk relevant to this patent?No. Sacubitril/valsartan is a chemically synthesized small-molecule combination, not a biologic. A competitor would generally use the ANDA pathway for a generic version rather than the biosimilar pathway under the Public Health Service Act. The principal regulatory risks are therefore:
A generic adult tablet sponsor would face a different risk profile from a sponsor developing a pediatric minitablet or sprinkle product. The latter is more likely to encounter US 10,722,471. How does this patent compare with the core Entresto patent estate?
US 10,722,471 is narrower than a composition patent but potentially longer-lived than early active-ingredient patents. Its value is concentrated in the pediatric and low-dose segment rather than the entire sacubitril/valsartan market. What generic launch scenarios exist?Adult tablet launchA generic adult tablet may avoid direct infringement if it does not use the claimed minitablet geometry, low dose, or basic methacrylate coating. Its principal exposure would arise from other listed Entresto patents. Pediatric minitablet or sprinkle launchThis is the highest-risk scenario. A product using 3.125 mg units, 1 mm to 3 mm minitablets, a 1:2:1 basic methacrylate copolymer, and the claimed excipient system could fall within multiple claims. Capsule-filled minitabletsClaims 14 and 15 extend protection to a dispenser combination and capsules containing one to 20 covered minitablets. Changing the outer capsule does not avoid infringement if the capsule contains minitablets that satisfy claim 1. Alternative polymer formulationReplacing the basic butylated methacrylate copolymer is the clearest design-around route. The alternative must still meet stability, taste, dissolution, and pediatric administration requirements. Liquid or powder formulationA liquid or powder product would generally fall outside the minitablet claims, although other patents, regulatory exclusivities, or method-of-use claims may remain relevant. What manufacturing and geographic barriers exist?The patent has its strongest practical impact in jurisdictions where equivalent family members are granted and enforceable. The United States is commercially important because FDA approval, Orange Book listings, and Hatch-Waxman litigation can delay ANDA entry. Manufacturing barriers include:
The patent does not by itself prevent manufacture of sacubitril/valsartan API or standard tablets. It targets a particular finished-dosage-form architecture. Are licensing deals disclosed for this patent?The patent record does not establish a separate licensing transaction for US 10,722,471. The commercial rights appear connected to the Novartis sacubitril/valsartan product franchise. Any third-party license, settlement license, or supply agreement would need to be assessed from SEC filings, court records, transaction documents, or the relevant patent-family records rather than inferred from the claims. How strong is the patent estate for pediatric sacubitril/valsartan?The patent is strongest when used as part of a layered estate:
Standing alone, US 10,722,471 is vulnerable to a formulation design-around. A competitor that changes the dosage form or coating polymer may avoid the most specific claims. As part of a broader pediatric product strategy, however, the patent can create meaningful launch friction because the claimed formulation corresponds closely to a practical low-dose administration format. Key Takeaways
FAQsDoes US 10,722,471 cover ordinary Entresto tablets?Not necessarily. Its independent claim requires a small coated minitablet, a low 2 mg to 5 mg dose, and a specified basic methacrylate coating. Conventional adult tablets may be outside its literal scope. Can a generic use a different methacrylate polymer?Potentially. A different polymer may avoid literal infringement of claims requiring the basic butylated methacrylate copolymer, but other patents and regulatory requirements may still apply. Does putting the minitablets inside a capsule avoid the patent?No. Claim 15 expressly covers capsules containing one to 20 covered minitablets. Is a pediatric sacubitril/valsartan liquid covered by this patent?A liquid would generally fall outside the minitablet claims. It could remain subject to separate patents, exclusivities, or method-of-use rights. What is the most important infringement test for a competing product?The critical test is whether the product contains every limitation of claim 1, especially the minitablet size, low-dose range, 1:1 active ratio, basic methacrylate coating, and 50% to 70% polymer concentration. References
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Drugs Protected by US Patent 10,722,471
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Novartis | ENTRESTO SPRINKLE | sacubitril; valsartan | CAPSULE, PELLETS;ORAL | 218591-001 | Apr 12, 2024 | RX | Yes | No | ⤷ Start Trial | ⤷ Start Trial | Y | TREATMENT OF HEART FAILURE WITH ORAL PELLETS | ⤷ Start Trial | |||
| Novartis | ENTRESTO SPRINKLE | sacubitril; valsartan | CAPSULE, PELLETS;ORAL | 218591-002 | Apr 12, 2024 | RX | Yes | Yes | ⤷ Start Trial | ⤷ Start Trial | Y | TREATMENT OF HEART FAILURE WITH ORAL PELLETS | ⤷ 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 10,722,471
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Australia | 2017215530 | ⤷ Start Trial | |||
| Australia | 2019280026 | ⤷ Start Trial | |||
| Canada | 3010778 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
