Details for Patent: 10,786,501
Which drugs does patent 10,786,501 protect, and when does it expire?
Patent 10,786,501 protects ORGOVYX and is included in one NDA.
This patent has eighty-one patent family members in twenty-seven countries.
Summary for Patent: 10,786,501
| Title: | Treatment of prostate cancer | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | Methods for treating prostate cancer, including advanced prostate cancer, in a subject in need thereof, include administering once-daily to the subject, at least 80 mg of N-(4-(1-(2,6-difluorobenzyl)-5-((dimethylamino)methyl)-3-(6-methoxy-3-pyridazinyl)-2,4-dioxo-1,2,3,4-tetrahydrothieno[2,3-d]pyrimidin-6-yl)phenyl)-N′-methoxyurea, or a corresponding amount of a pharmaceutically acceptable salt thereof. Another method includes: administering once-daily to the subject in need thereof, an oral load dose formulation having from 240 mg to 480 mg of N-(4-(1-(2,6-difluorobenzyl)-5-((dimethylamino)methyl)-3-(6-methoxy-3-pyridazinyl)-2,4-dioxo-1,2,3,4-tetrahydrothieno[2,3-d]pyrimidin-6-yl)phenyl)-N′-methoxyurea, or a corresponding amount of a pharmaceutically acceptable salt thereof; and thereafter administering once-daily to the subject, an oral maintenance dose formulation having 80 mg to 160 mg of N-(4-(1-(2,6-difluorobenzyl)-5-((dimethylamino)methyl)-3-(6-methoxy-3-pyridazinyl)-2,4-dioxo-1,2,3,4-tetrahydrothieno[2,3-d]pyrimidin-6-yl)phenyl)-N′-methoxyurea, or a corresponding amount of a pharmaceutically acceptable salt thereof. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Vijaykumar Reddy RAJASEKHAR, Brendan Mark JOHNSON, David B. MacLean, Lynn Seely, Paul N. MUDD, Jr. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Takeda Pharmaceutical Co Ltd , Sumitomo Pharma Co Ltd | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US16/563,161 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent Litigation and PTAB cases: | See patent lawsuits and PTAB cases for patent 10,786,501 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; Formulation; | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 10,786,501: Relugolix Dosing Claims, Scope, Expiration, and Patent LandscapeU.S. Patent No. 10,786,501 protects a specific oral relugolix regimen for prostate cancer and hormone suppression: a 360 mg once-daily loading dose followed by 120 mg once-daily maintenance dosing for at least 24 weeks. The claims also require a sustained follicle-stimulating hormone, or FSH, level of approximately 2.4 mIU/mL or less. The patent does not claim relugolix itself, a general prostate-cancer treatment, or every relugolix dose. Its commercial value is tied to the FDA-approved Orgovyx regimen and the difficulty of designing a substitutive prostate-cancer product without practicing the claimed method. What drug and treatment regimen does U.S. Patent 10,786,501 cover?The patent covers relugolix, the active ingredient in Orgovyx. The chemical name recited in the claims is: N-(4-(1-(2,6-difluorobenzyl)-5-((dimethylamino)methyl)-3-(6-methoxy-3-pyridazinyl)-2,4-dioxo-1,2,3,4-tetrahydrothieno[2,3-d]pyrimidin-6-yl)phenyl)-N'-methoxyurea. The core regimen requires:
Relugolix is a nonpeptide gonadotropin-releasing hormone, or GnRH, receptor antagonist. It suppresses luteinizing hormone and testosterone without the initial testosterone flare associated with GnRH agonists. FDA approved Orgovyx for the treatment of adults with advanced prostate cancer on December 18, 2020 (FDA, 2020). How do claims 1 through 10 divide the patent scope?Claims 1 and 6 are the independent claimsClaim 1 is a prostate-cancer treatment method. It requires the 360 mg loading dose, the 120 mg maintenance dose, the 24-week minimum maintenance period, and the FSH result. Claim 6 is broader in disease framing but more demanding in pharmacokinetic detail. It covers suppression of one or more sex hormones in a subject with hormone-dependent prostate cancer. It requires:
The practical distinction is important. A product may satisfy claim 1 without satisfying claim 6 if the required AUC increase is not demonstrated. Conversely, claim 6 is not limited to the broader phrase “treating prostate cancer”; it is framed around suppression of sex hormones. Claims 2 and 7 require profound castrationClaims 2 and 7 depend on claims 1 and 6, respectively. They require that profound castration be achieved. The phrase narrows the claims to a specified depth of androgen suppression, although the quoted claim text does not define an independent testosterone threshold. Claims 3 and 8 require rapid and sustained castrationClaims 3 and 8 require profound castration within 24 to 48 hours after administration begins and maintenance through the end of treatment. These claims are narrower than claims 1 and 6. A generic or follow-on product could face a different infringement position if it produces the same biochemical endpoint but does not achieve the claimed timing, although infringement would depend on the approved labeling, actual use, clinical evidence, and the court’s construction of the claim terms. Claims 4 and 9 contain a comparative clinical limitationClaims 4 and 9 require that time to castration resistance be longer than in a subject receiving GnRH agonist therapy. This limitation raises proof issues. A patent owner would generally need to establish the relevant comparator, patient population, treatment duration, and clinical endpoint. The claim is not limited to a numerical extension, but the comparative result must be supported by evidence linked to the accused regimen. Claims 5 and 10 cover use with enzalutamideClaims 5 and 10 add administration of enzalutamide. These claims are narrower combination-treatment claims. They may have value against a relugolix product labeled for use with androgen-receptor pathway inhibitors, but they do not independently cover enzalutamide or a relugolix-enzalutamide composition. What is the legal scope of U.S. Patent 10,786,501?The patent is a method-of-use patent, not a compound patent. A potential infringer must practice the required steps with the claimed drug and dose sequence. The principal scope is therefore tied to labeled or foreseeable clinical use. A literal infringement analysis would focus on whether the accused product or treatment protocol includes:
The phrase “or a corresponding amount of a pharmaceutically acceptable salt thereof” extends the claims beyond a particular salt form. It prevents a design-around based solely on converting relugolix into a pharmaceutically acceptable salt, assuming the administered amount corresponds to the claimed active moiety. The claims do not expressly require a particular tablet excipient, tablet strength, brand, manufacturing process, packaging configuration, or release profile. They also do not claim every possible maintenance dose or every use of relugolix in prostate cancer. What formulations are protected by Patent 10,786,501?The patent protects dosage forms that deliver the specified relugolix amounts in the claimed sequence. It does not, based on the quoted claims, require a particular formulation technology. The practical formulation limitations are:
Orgovyx is supplied as 120 mg tablets, with a recommended 360 mg loading dose on day one followed by 120 mg once daily. The commercial product therefore tracks the central dosing limitations of the patent (FDA, 2020). When does U.S. Patent 10,786,501 expire?The patent has a priority date associated with the relugolix clinical-development and dosing disclosures and has a nominal patent-term endpoint in the mid-2030s. Public patent and Orange Book records should be used to confirm the operative expiration date, including any patent-term adjustment or terminal disclaimer. The principal commercial estimate is November 9, 2036, based on the relevant priority and international filing chronology. The exact enforceable endpoint should be taken from the USPTO patent record and the FDA Orange Book listing rather than inferred solely from the grant date (USPTO, 2020; FDA, 2025). The patent was granted in 2020. Its expected expiration is materially later than FDA’s five-year new chemical entity exclusivity for Orgovyx, which ran from the December 2020 approval date through December 2025. Patent protection, rather than NCE exclusivity, is the primary long-term barrier for this regimen. What is the FDA and Orange Book status of Orgovyx?FDA approved Orgovyx, containing relugolix, for adults with advanced prostate cancer. The approved label specifies a 360 mg oral loading dose on the first day followed by 120 mg orally once daily (FDA, 2020). The relevant regulatory protections are distinct:
The FDA Orange Book lists patents that the NDA holder identifies as covering the drug, its formulation, or approved methods of use. A generic applicant must address listed patents through a Paragraph I, II, III, or IV certification, or a section viii statement for a method-of-use patent where permitted (FDA, 2025). What Paragraph IV risks apply to relugolix generics?A generic applicant seeking approval before expiration of a listed patent may file a Paragraph IV certification alleging that the patent is invalid, unenforceable, or will not be infringed. The NDA holder may then file a patent-infringement action within 45 days, triggering a statutory stay of ANDA approval of up to 30 months under the Hatch-Waxman Act. For Patent 10,786,501, likely dispute issues include:
A section viii statement could be relevant if a generic applicant seeks approval for indications or dosing instructions that do not correspond to the patented method. Its viability depends on whether the label can omit the patented use without encouraging the patented regimen. Which companies are connected to the relugolix patent estate?Myovant Sciences developed relugolix and commercialized Orgovyx in collaboration with Pfizer. Sumitomo Pharma acquired Myovant and became the corporate parent of the relugolix business. Pfizer has commercial rights in the United States under the collaboration arrangement.
Ownership, assignment, and licensing rights can differ by patent and jurisdiction. A transaction review should examine the USPTO assignment database and the operative collaboration agreements rather than relying only on the product label. How strong is the patent estate for relugolix?The estate has several layers: Compound protectionThe core chemical patents protect relugolix and related GnRH-antagonist compounds. These patents are more difficult to avoid through dose changes because they cover the active molecule or chemical class. Method-of-use protectionPatent 10,786,501 protects the clinically important prostate-cancer dosing sequence. Its commercial strength comes from alignment with the FDA-approved regimen. Formulation protectionSeparate patents may cover relugolix pharmaceutical compositions, tablet formulations, stability, or dosage forms. Those patents require claim-by-claim review because a generic may avoid a particular excipient or manufacturing limitation while still practicing the dosing patent. Combination protectionThe quoted claims include relugolix with enzalutamide. Separate combination or androgen-deprivation patents may cover other prostate-cancer treatment combinations. Manufacturing and process protectionProcess patents can create additional barriers if they cover a commercially efficient route, crystalline form, impurity profile, or scalable production method. Process protection is usually less direct than an approved-use patent because an ANDA applicant may use a noninfringing manufacturing route. Overall, Patent 10,786,501 is strong against a product whose label copies Orgovyx’s approved regimen. It is weaker against a product with a genuinely different loading strategy, maintenance dose, indication carve-out, or clinical protocol, although the doctrine of equivalents and induced-infringement theories remain relevant. What generic launch scenarios exist for Orgovyx?
The most commercially important challenge would target the 360 mg loading dose followed by 120 mg daily maintenance dosing because that sequence is central to the approved product and to claims 1 and 6. How does Patent 10,786,501 compare with GnRH agonist protection?GnRH agonists such as leuprolide use a different pharmacologic mechanism and often require depot injection. Patent 10,786,501 protects an oral GnRH-antagonist regimen with rapid hormone suppression and no initial testosterone flare characteristic of GnRH agonist treatment.
What litigation and settlement issues should investors monitor?The principal monitoring points are:
Publicly available patent records establish the patent and its claims. They do not, by themselves, establish the existence or terms of a confidential generic settlement. Settlement economics must be verified through court filings, SEC disclosures, or a redacted agreement. Key Takeaways
FAQsDoes Patent 10,786,501 cover a 120 mg relugolix tablet by itself?No. The quoted claims require the complete loading-and-maintenance sequence. A 120 mg tablet used outside the claimed regimen may not practice the claims, although other patents may apply. Can a generic avoid the patent by using a 240 mg loading dose?Potentially, but the regulatory and infringement analysis would depend on the approved label, clinical equivalence, doctrine of equivalents, and other relugolix patents. The literal claims recite 360 mg, not 240 mg. Does the patent cover prostate-cancer treatment with relugolix for less than 24 weeks?Claims 1 and 6 expressly require maintenance treatment for 24 consecutive weeks or greater. Other claims or patents could have different duration limitations. Is an FSH measurement required for every treated patient to infringe?The claims recite an FSH result after 24 weeks. Whether infringement requires actual testing, an inherent pharmacodynamic result, or label-induced use would depend on claim construction and the factual record. Does adding enzalutamide create a separate patent barrier?Claims 5 and 10 create narrower relugolix-plus-enzalutamide method claims. Other patents may separately cover the combination, sequencing, prostate-cancer indication, or androgen-receptor pathway treatment. References
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Drugs Protected by US Patent 10,786,501
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Sumitomo Pharma Am | ORGOVYX | relugolix | TABLET;ORAL | 214621-001 | Dec 18, 2020 | RX | Yes | Yes | 10,786,501 | ⤷ Start Trial | TREATMENT OF ADULT PATIENTS WITH ADVANCED PROSTATE CANCER | ⤷ 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 10,786,501
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Argentina | 109759 | ⤷ Start Trial | |||
| Argentina | 109762 | ⤷ Start Trial | |||
| Argentina | 110636 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
