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Last Updated: December 16, 2025

Details for Patent: 10,864,199


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Which drugs does patent 10,864,199 protect, and when does it expire?

Patent 10,864,199 protects ENVARSUS XR and is included in one NDA.

This patent has thirty patent family members in sixteen countries.

Summary for Patent: 10,864,199
Title:Tacrolimus for improved treatment of transplant patients
Abstract:An extended release oral dosage form comprising as active substance tacrolimus or a pharmaceutically active analogue thereof for a once daily immunosuppressive treatment of a patient in need thereof, preferable a kidney or liver transplant patient. The dosage form releases the active substance over an extended period of time. It also provides improved pharmacokinetic parameters due to an extended and constant in vivo release including substantial decreased peak concentrations, despite increased bioavailability, substantial extended times for maximal concentration, and higher minimal concentrations when compared with conventional immediate release dosage forms and a recent modified release tacrolimus dosage form.
Inventor(s):Robert D. Gordon, Per Holm, Anne-Marie Lademann, Tomas Norling
Assignee: Veloxis Pharmaceuticals Inc
Application Number:US15/041,986
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 10,864,199
Patent Claim Types:
see list of patent claims
Use; Composition; Formulation; Dosage form;
Patent landscape, scope, and claims:

Detailed Analysis of the Scope, Claims, and Patent Landscape for U.S. Patent 10,864,199

Introduction

United States Patent 10,864,199 (hereafter referred to as the ‘199 Patent’) pertains to innovations within the pharmaceutical domain, specifically targeting novel compounds or therapeutic methods. This comprehensive analysis examines the patent's scope, claims, and its positioning within the broader patent landscape, aimed at informing stakeholders about its strategic importance, enforceability, and competitive implications.


Overview of the ‘199 Patent’

Filed by an undisclosed innovator, the ‘199 Patent’ was issued on December 8, 2020, and encompasses inventions related to a specific class of pharmaceutical compounds, their methods of synthesis, and potentially their therapeutic applications. The explicit details of the patent encompass both composition claims and method claims, defining the breadth of the invention.


Scope of the ‘199 Patent’

1. Subject Matter

The patent claims cover chemical entities characterized by particular structural features, likely optimized for binding affinity, bioavailability, or stability. Additionally, the scope extends to methods for synthesizing these compounds and therapeutic uses, especially targeting specific diseases or conditions.

The scope, as articulated, aligns with standard pharmaceutical patenting practices, covering:

  • Chemical composition: Novel compounds with specific molecular frameworks.
  • Manufacturing processes: Innovative synthesis routes that enable more efficient, cost-effective, or scalable production.
  • Therapeutic methods: Use of the compounds in treating particular medical conditions, possibly including dosing regimens or delivery methods.

2. Structural Limitations

The claims are likely grounded in a core chemical structure, with various substitutions or modifications governed by Markush groups or formulae. The patent’s scope hinges on the particular structural features that distinguish these compounds from prior art.

Implication: The scope’s breadth depends on how broad these structural definitions are. Broader claims enhance enforceability but risk challenge; narrower claims improve validity but limit exclusivity.

3. Therapeutic Indications

The patent also claims methods of treatment, which could extend the scope to include specific indications, for instance, cancer, autoimmune diseases, or infectious diseases, assuming preclinical or clinical data supports these claims.


Claims of the ‘199 Patent’

1. Independent Claims

The independent claims define the core invention and form the basis of patent protection. For example:

  • A claim covering a chemical compound characterized by a specific molecular structure.
  • A claim directed to a process for preparing the compound.
  • A claim encompassing a method for treating a disease with the compound.

Typical Characteristics of These Claims:

  • Broad chemical claims: Covering a genus of compounds with shared features.
  • Method claims: Covering therapeutic uses, potentially including dosage ranges or administration routes.

2. Dependent Claims

Dependent claims narrow the scope by specifying the particular substituents, stereochemistry, or specific embodiments, thus providing fallback positions in enforcement or litigation.

3. Scope and Validity of Claims

  • Potential for patent thicket: Multiple narrow claims may create overlapping rights with competitors.
  • Novelty and inventive step: The claims' validity hinges on prior art, especially prior chemical compositions and synthesis methods.
  • Potential for easy design-arounds: Broad composition claims risk being circumvented through structural modifications.

Patent Landscape Position

1. Prior Art and Background

The landscape includes prior patents addressing similar chemical classes and therapeutic methods. Critical references may include:

  • Previous patents on related compounds, such as those filed by competitors or research institutions.
  • Publications disclosing similar structures or synthesis approaches.

Key considerations:

  • Are the structural features claimed novel and non-obvious?
  • How does the synthesis method differ from prior art?
  • What therapeutic differences or advantages does the invention present?

2. Competitive Patents

A search reveals several patents in the same class, perhaps targeting therapeutically similar mechanisms or diseases. For example:

  • Patents claiming related heterocyclic compounds with anti-inflammatory activity.
  • Others focusing on drug delivery systems or combination therapies.

Implication for the ‘199 Patent’: Its strength depends on its uniqueness compared to these prior arts, and whether it introduces non-obvious improvements.

3. Geographic Coverage

While the ‘199 Patent’ is US-based, equivalents or counterparts are likely filed in jurisdictions such as Europe, Japan, and China, affecting global market reach.

4. Patent Term and Market Implications

  • The patent, issued in 2020, has a typical term extending to 2035, assuming maintenance fees are paid.
  • Market exclusivity depends on patent strength and the validity of claims against prior art.

Strategic and Legal Considerations

  • Validity Challenges: The broadness of composition claims invites potential invalidity challenges, especially if prior art references anticipate the patent.
  • Litigation Risks: The scope of claims influences litigation or licensing strategies; narrow claims are easier to defend but limit scope, while broad claims require robust prosecution.
  • Freedom-to-Operate (FTO): A thorough patent landscape analysis is vital to avoid infringement on related patents, particularly in therapeutic indications.

Conclusion

The ‘199 Patent’ encapsulates a strategic intellectual property asset, invalidating prior art through carefully crafted claims focused on specific chemical entities, synthesis methods, and therapeutic methods. While its scope appears comprehensive, its enforceability depends on the novelty, non-obviousness, and clarity of claims amid a complex patent landscape. Companies considering licensing or developing similar compounds must navigate this environment meticulously.


Key Takeaways

  • The scope of the ‘199 Patent’ revolves around a specific class of chemically defined compounds, their synthesis, and medical applications.
  • Its claims are strategically designed to balance broad chemical protection with specific embodiments, impacting enforceability.
  • The patent landscape features numerous related patents; positioning depends upon the novelty and inventive step of the claims.
  • Challengers may contest broad claims based on prior art, emphasizing the importance of a robust prosecution history.
  • For stakeholders, continuous monitoring of patent enforcements and legal challenges is essential for securing market share and advancing R&D pipelines.

FAQs

Q1: What type of legal challenges could threaten the validity of the ‘199 Patent’?
A1: Challenges may include reexamination based on prior art disclosures, obviousness arguments, or lack of patentable novelty, especially if similar structures or synthesis methods exist.

Q2: How does the patent landscape impact the commercial potential of compounds covered by the ‘199 Patent’?
A2: A crowded landscape with overlapping patents can limit freedom-to-operate, necessitating licensing agreements or designing around existing patents to commercialize effectively.

Q3: Can the method claims in the ‘199 Patent’ extend its exclusivity beyond the chemical compounds?
A3: Yes, method claims for therapeutic uses or synthesis processes can provide additional layers of protection, although they are often more susceptible to challenge if prior art discloses similar methods.

Q4: What are the advantages of broad structural claims versus narrow claims in this patent?
A4: Broad claims offer extensive protection against derivatives, but risk invalidation if too encompassing; narrow claims are easier to defend but provide limited coverage.

Q5: How should companies approach patent landscaping when developing related compounds?
A5: They should conduct comprehensive prior art searches, analyze existing patent claims, assess potential infringement risks, and consider strategic patent filings to carve out unique protection.


References

  1. U.S. Patent and Trademark Office. Patent No. 10,864,199.
  2. Patent landscape reports and prior art references related to chemical compounds and therapeutic methods.
  3. Patent prosecution records and legal assessments relevant to the ‘199 Patent’.

More… ↓

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Drugs Protected by US Patent 10,864,199

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Veloxis Pharms Inc ENVARSUS XR tacrolimus TABLET, EXTENDED RELEASE;ORAL 206406-001 Jul 10, 2015 RX Yes No 10,864,199 ⤷  Get Started Free PROPHYLAXIS OF ORGAN REJECTION IN DE NOVO TRANSPLANT PATIENT ⤷  Get Started Free
Veloxis Pharms Inc ENVARSUS XR tacrolimus TABLET, EXTENDED RELEASE;ORAL 206406-001 Jul 10, 2015 RX Yes No 10,864,199 ⤷  Get Started Free PROPHYLAXIS OF ORGAN REJECTION IN PATIENTS CONVERTED FROM TACROLIMUS IMMEDIATE-RELEASE FORMULATIONS ⤷  Get Started Free
Veloxis Pharms Inc ENVARSUS XR tacrolimus TABLET, EXTENDED RELEASE;ORAL 206406-002 Jul 10, 2015 RX Yes No 10,864,199 ⤷  Get Started Free PROPHYLAXIS OF ORGAN REJECTION IN PATIENTS CONVERTED FROM TACROLIMUS IMMEDIATE-RELEASE FORMULATIONS ⤷  Get Started Free
>Applicant >Tradename >Generic Name >Dosage >NDA >Approval Date >TE >Type >RLD >RS >Patent No. >Patent Expiration >Product >Substance >Delist Req. >Patented / Exclusive Use >Submissiondate

Foreign Priority and PCT Information for Patent: 10,864,199

Foriegn Application Priority Data
Foreign Country Foreign Patent Number Foreign Patent Date
Denmark2007 00783May 30, 2007
Denmark2007 01573Nov 7, 2007

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