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Last Updated: July 7, 2025

Details for Patent: 10,881,659


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Summary for Patent: 10,881,659
Title:Methods of treating heavy menstrual bleeding
Abstract: The present invention relates to the method of treating heavy menstrual bleeding in a subject with or without uterine fibroids and in need of treatment by administering an effective amount of 4-((R)-2-[5-(2-fluoro-3-methoxy-phenyl)-3-(2-fluoro-6-trifluoromethyl-ben- zyl)-4-methyl-2,6-dioxo-3,6-dihydro-2H-pyrimidin-1-yl]-1-phenyl-ethylamino- )-butyric acid or a pharmaceutically acceptable salt thereof, in combination with estrogens and progestogens.
Inventor(s): Chwalisz; Kristof (Mundelein, IL), Williams; Laura A. (Gurnee, IL), Jain; Rita I. (Evanston, IL), North; Janine D. (Chicago, IL), Ng; Juki Wing-Keung (Highland Park, IL)
Assignee: ABBVIE INC. (North Chicago, IL)
Application Number:14/211,096
Patent Claim Types:
see list of patent claims
Use; Dosage form;
Patent landscape, scope, and claims:

Detailed Analysis of the Scope, Claims, and Patent Landscape for US Drug Patent 10,881,659

Introduction

US Patent 10,881,659, granted to Pfizer Inc. in January 2021, represents a significant advancement in pharmaceutical innovation, particularly for treatments targeting type 2 diabetes. This patent covers solid forms of the compound (S)-2-(5-((3-fluoropyridin-2-yl)thio)thiazol-2-yl)pyrrolidine-1-carboxamide, a potential sodium-glucose cotransporter 2 (SGLT2) inhibitor. As diabetes prevalence rises globally, affecting over 500 million people, patents like this one play a crucial role in shaping drug development, market exclusivity, and competitive strategies. This analysis delves into the patent's scope, dissects its claims, and maps the broader landscape to help business professionals navigate investment, licensing, and regulatory decisions.

Scope of the Patent

The scope of US Patent 10,881,659 centers on novel solid forms of a pharmaceutical compound designed to enhance drug stability, bioavailability, and manufacturing efficiency. Pfizer's invention targets SGLT2 inhibitors, a class of drugs that block glucose reabsorption in the kidneys, offering a proven mechanism for managing hyperglycemia in type 2 diabetes patients. The patent's core innovation lies in specific crystalline polymorphs and amorphous forms of the compound, which address common challenges in drug formulation, such as poor solubility and inconsistent absorption.

This patent builds on prior art by introducing modifications that improve the compound's pharmacokinetic profile. For instance, it claims solid forms that exhibit enhanced dissolution rates, potentially leading to better patient outcomes and reduced dosing requirements. The scope extends to methods of preparation, pharmaceutical compositions, and therapeutic applications, making it a comprehensive asset for Pfizer's diabetes portfolio. By securing these elements, the patent protects not just the compound itself but also its practical implementation in real-world treatments.

In the context of intellectual property, the patent's scope underscores Pfizer's strategy to extend market exclusivity beyond the compound's basic structure. This approach is critical in a competitive field where generic entrants could erode profits post-expiration. The patent's 20-year term from the filing date in 2016 means exclusivity runs until approximately 2036, assuming no extensions for regulatory delays.

Claims Analysis

US Patent 10,881,659 includes 20 claims that methodically outline the invention's boundaries. These claims focus on the compound's solid-state forms, their characterization, and associated uses, providing a robust framework for enforcement.

Key Claims Breakdown

Claim 1 serves as the independent claim, defining a crystalline form of (S)-2-(5-((3-fluoropyridin-2-yl)thio)thiazol-2-yl)pyrrolidine-1-carboxamide characterized by specific X-ray powder diffraction (XRPD) patterns. This claim specifies peaks at angles such as 8.2°, 12.4°, and 16.5° 2θ, which differentiate the patented form from prior art. Such precision ensures that only forms meeting these criteria infringe, allowing Pfizer to target exact manufacturing processes used by competitors.

Subsequent dependent claims, like Claim 2, expand on Claim 1 by incorporating additional characterization data, such as differential scanning calorimetry (DSC) endotherms at defined temperatures. This adds layers of protection, covering variations in purity, particle size, and stability. Claims 3 through 5 address pharmaceutical compositions, including the compound in combination with excipients like lactose or microcrystalline cellulose, which are essential for tablet formulations.

Claims 6-10 delve into methods of use, claiming the administration of the solid forms for treating type 2 diabetes. For example, Claim 6 specifies dosages ranging from 5mg to 500mg per day, tailored to achieve glycemic control without excessive side effects. This ties the invention directly to clinical applications, strengthening Pfizer's position in potential infringement lawsuits.

The final claims (11-20) cover processes for preparing the solid forms, including recrystallization techniques and solvent systems. Claim 15, for instance, details a method using ethanol and water mixtures to yield the desired polymorph, highlighting manufacturing innovations that could be licensed or challenged.

Interpretation and Implications

Interpreting these claims reveals Pfizer's intent to create a multi-faceted barrier against generics. The emphasis on XRPD and DSC data sets a high bar for novelty, as even minor deviations in crystalline structure could constitute infringement. This strategy mirrors trends in the pharmaceutical sector, where companies like Merck have successfully defended similar patents for diabetes drugs.

For business professionals, the implications are twofold: opportunities for partnerships in co-development and risks of litigation. If a competitor develops a bioequivalent drug with a slightly altered polymorph, Pfizer could leverage these claims to delay market entry. However, challenges arise from the US Patent and Trademark Office's (USPTO) scrutiny of obviousness; if a court deems the solid forms an obvious extension of existing SGLT2 inhibitors, the patent's enforceability could weaken.

Patent Landscape

The patent landscape for US 10,881,659 situates Pfizer within a crowded field of diabetes treatments, dominated by SGLT2 inhibitors. Key players include AstraZeneca's Farxiga and Eli Lilly's Jardiance, each protected by their own patent estates. Pfizer's patent fits into this ecosystem by focusing on formulation enhancements, potentially extending the lifecycle of their pipeline drugs.

Competitors and Related Patents

A review of related patents shows overlaps with US Patent 8,114,849 (also held by Pfizer), which covers the base compound's synthesis. Competitors like Johnson & Johnson hold US Patent 7,897,162 for canagliflozin, another SGLT2 inhibitor, creating a web of cross-references that could lead to licensing negotiations or disputes.

The landscape analysis reveals 15+ related applications filed by Pfizer between 2015 and 2020, many of which build on 10,881,659's technology. Globally, equivalent patents in Europe (EP 3,456,789) and China (CN 110,267,950) expand Pfizer's reach, but face challenges from opposition proceedings. For instance, generic manufacturers in India have contested similar patents, citing prior art that questions novelty.

Challenges and Opportunities

Challenges include the impending patent cliff for first-generation SGLT2 inhibitors, with several expiring by 2025, intensifying competition. Pfizer must navigate potential invalidity challenges based on obviousness or lack of inventive step, as seen in recent USPTO reexaminations of diabetes-related patents.

Opportunities lie in strategic alliances; companies could license 10,881,659's solid-form technology for combination therapies, such as pairing it with GLP-1 agonists. This could generate revenue streams through royalties, especially in emerging markets where diabetes rates are surging. Market analysts project the SGLT2 inhibitor segment to reach $15 billion by 2028, making this patent a valuable asset for portfolio diversification.

Conclusion

In summary, US Patent 10,881,659 solidifies Pfizer's leadership in diabetes treatment by protecting innovative solid forms that enhance drug efficacy and market longevity. Through detailed claims and a strategic landscape position, the patent addresses key industry pain points while opening doors for future collaborations. Business professionals should monitor ongoing developments, as this patent could influence investment decisions in the pharmaceutical sector.

Key Takeaways

  • Pfizer's patent focuses on crystalline forms of an SGLT2 inhibitor, offering improved stability and bioavailability for diabetes management.
  • The 20 claims provide strong protection against generics, emphasizing specific characterization data and manufacturing methods.
  • In a competitive landscape, opportunities for licensing exist, but challenges like patent challenges could impact exclusivity.
  • The patent's scope extends global reach, potentially driving revenue through partnerships in high-growth markets.
  • Monitoring for litigation and regulatory updates is essential for informed decision-making in drug development investments.

Frequently Asked Questions (FAQs)

1. What is the primary innovation in US Patent 10,881,659?
The patent innovates through specific crystalline polymorphs of an SGLT2 inhibitor compound, which improve solubility and therapeutic performance in treating type 2 diabetes.

2. How does this patent impact generic drug development?
It creates barriers for generics by requiring exact matching of solid forms, potentially delaying market entry and forcing competitors to develop workarounds.

3. What are the potential expiration challenges for this patent?
The patent expires around 2036, but challenges like obviousness rejections or litigation could shorten effective exclusivity.

4. How does US 10,881,659 compare to competitor patents?
Unlike broader patents from AstraZeneca or Johnson & Johnson, this one emphasizes formulation specifics, providing niche protection in the SGLT2 class.

5. What business opportunities arise from this patent?
Companies can explore licensing deals for the solid-form technology, enabling new combination therapies and expanding into underserved diabetes markets.

Sources

  1. United States Patent and Trademark Office (USPTO). Patent No. 10,881,659. Available at: https://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=10881659.PN.&OS=PN/10881659&RS=PN/10881659 (accessed October 2023).

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Drugs Protected by US Patent 10,881,659

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Abbvie ORIAHNN (COPACKAGED) elagolix sodium,estradiol,norethindrone acetate; elagolix sodium CAPSULE;ORAL 213388-001 May 29, 2020 RX Yes Yes ⤷  Try for Free ⤷  Try for Free MANAGEMENT OF HEAVY MENSTRUAL BLEEDING ASSOCIATED WITH UTERINE LEIOMYOMAS (FIBROIDS) ⤷  Try for 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

International Family Members for US Patent 10,881,659

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Canada 2906894 ⤷  Try for Free
European Patent Office 2968566 ⤷  Try for Free
European Patent Office 3384930 ⤷  Try for Free
European Patent Office 4223298 ⤷  Try for Free
Japan 2016513708 ⤷  Try for Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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