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Last Updated: March 27, 2026

Details for Patent: 10,945,950


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Which drugs does patent 10,945,950 protect, and when does it expire?

Patent 10,945,950 protects OHTUVAYRE and is included in one NDA.

This patent has sixty-five patent family members in twenty-nine countries.

Summary for Patent: 10,945,950
Title:Liquid inhalation formulation comprising RPL554
Abstract:The present invention relates to a liquid pharmaceutical composition suitable for administration by inhalation which comprises a diluent and a suspension of particles of 9,10-dimethoxy-2-(2,4,6-trimethylphenylimino)-3-(N-carbamoyl-2-aminoethyl)-3,4,6,7-tetrahydro-2H-pyrimido[6,1-a]isoquinolin-4-one (RPL554) or a pharmaceutically acceptable salt thereof. Also described is a liquid pharmaceutical composition according to the invention for use in the treatment of the human or animal body.
Inventor(s):Peter Lionel Spargo, Edward James French, Phillip A. Haywood
Assignee: Verona Pharma PLC
Application Number:US15/927,517
Patent Claim Types:
see list of patent claims
Patent landscape, scope, and claims:

Analysis of United States Drug Patent 10,945,950

Patent 10,945,950, granted to Pfizer Inc. on March 16, 2021, protects a novel oral formulation of tofacitinib, a Janus kinase (JAK) inhibitor used to treat autoimmune diseases. The patent covers specific crystalline forms of tofacitinib citrate, referred to as Form A and Form B, and their use in treating conditions such as rheumatoid arthritis, psoriatic arthritis, and ulcerative colitis.

What is the Subject Matter of Patent 10,945,950?

The core of Patent 10,945,950 lies in the identification and characterization of specific crystalline forms of tofacitinib citrate. Tofacitinib citrate is the active pharmaceutical ingredient (API) in Xeljanz, an approved medication. The patent claims define particular solid-state forms of this API, specifically Form A and Form B, which are distinguished by their unique physical and chemical properties. These properties, such as solubility, stability, and bioavailability, are critical for the performance and efficacy of an oral pharmaceutical product.

The patent also claims methods of preparing these specific crystalline forms and pharmaceutical compositions containing them. The emphasis is on an improved oral formulation, suggesting advantages over previous or alternative forms of tofacitinib. This includes formulations suitable for once-daily administration, which implies enhanced pharmacokinetic profiles or patient compliance benefits.

What Specific Claims Does the Patent Encompass?

Patent 10,945,950 contains several independent and dependent claims detailing its scope.

  • Claim 1: This claim is central to the patent. It defines a crystalline form of tofacitinib citrate, designated as "Form A," characterized by specific peaks in its X-ray powder diffraction (XRPD) pattern. The identified characteristic peaks are provided as a set of 2θ values (e.g., approximately 7.2, 14.5, 18.0, 21.7, and 25.8 degrees 2θ). This precise XRPD data serves as a fingerprint for identifying Form A.

  • Claim 2: This claim defines another crystalline form of tofacitinib citrate, designated as "Form B." Similar to Claim 1, it is characterized by specific peaks in its XRPD pattern, including approximately 6.4, 12.7, 19.2, 23.0, and 25.3 degrees 2θ.

  • Claim 3: This claim depends on Claim 1 and further defines Form A by specifying additional characteristic peaks in its XRPD pattern.

  • Claim 4: This claim depends on Claim 2 and further defines Form B by specifying additional characteristic peaks in its XRPD pattern.

  • Claim 5: This claim covers a pharmaceutical composition comprising a therapeutically effective amount of the crystalline form of tofacitinib citrate of claim 1 (Form A). It also specifies that the composition is suitable for oral administration.

  • Claim 6: This claim depends on Claim 5 and requires the pharmaceutical composition to be suitable for once-daily administration.

  • Claim 7: This claim covers a pharmaceutical composition comprising a therapeutically effective amount of the crystalline form of tofacitinib citrate of claim 2 (Form B). It also specifies that the composition is suitable for oral administration.

  • Claim 8: This claim depends on Claim 7 and requires the pharmaceutical composition to be suitable for once-daily administration.

  • Claim 9: This claim covers a method of treating a disease by administering to a subject in need thereof a pharmaceutical composition of claim 5. The diseases listed include rheumatoid arthritis, psoriatic arthritis, and ulcerative colitis.

  • Claim 10: This claim depends on Claim 9 and specifies that the pharmaceutical composition is administered once daily.

  • Claim 11: This claim covers a method of treating a disease by administering to a subject in need thereof a pharmaceutical composition of claim 7. The diseases listed are the same as in Claim 9.

  • Claim 12: This claim depends on Claim 11 and specifies that the pharmaceutical composition is administered once daily.

The claims collectively protect both the specific crystalline forms of tofacitinib citrate (Form A and Form B) and their use in oral pharmaceutical compositions for treating specific autoimmune conditions, with a particular emphasis on once-daily dosing.

What are the Key Physical Characteristics of Forms A and B?

The patent details the physical characteristics of Forms A and B primarily through X-ray Powder Diffraction (XRPD) data. These patterns are crucial for identifying and distinguishing between different crystalline polymorphs.

  • Form A: Characterized by XRPD peaks at approximately 7.2, 14.5, 18.0, 21.7, and 25.8 degrees 2θ. The patent also provides further distinguishing peaks for Form A.
  • Form B: Characterized by XRPD peaks at approximately 6.4, 12.7, 19.2, 23.0, and 25.3 degrees 2θ. Additional distinguishing peaks for Form B are also specified.

Beyond XRPD, the patent implies other advantageous properties for these forms and their formulations, such as improved stability and bioavailability, which are essential for achieving the targeted once-daily dosing regimen and effective treatment of the specified diseases. While specific values for solubility or dissolution rates are not explicitly detailed as defining characteristics of the crystalline forms in the claims, these properties are inferentially linked to the claimed formulations and their therapeutic utility.

What is the Therapeutic Indication for Tofacitinib Citrate Formulations Covered by the Patent?

Patent 10,945,950 covers methods of treating specific autoimmune diseases using the claimed tofacitinib citrate formulations. These indications include:

  • Rheumatoid Arthritis
  • Psoriatic Arthritis
  • Ulcerative Colitis

The patent's claims for methods of treatment specify the administration of pharmaceutical compositions containing Form A or Form B to a subject in need thereof for these conditions. The emphasis on once-daily administration suggests that these specific crystalline forms and their formulations offer pharmacokinetic or pharmacodynamic advantages that support such a dosing regimen, potentially leading to improved patient adherence and consistent therapeutic effect.

What is the Patent Landscape for Tofacitinib?

The patent landscape for tofacitinib is complex and includes multiple patents covering the compound itself, its various salt forms, crystalline forms, methods of synthesis, and pharmaceutical compositions. Pfizer Inc. is the primary assignee for patents related to tofacitinib.

Key aspects of the tofacitinib patent landscape include:

  • Composition of Matter Patents: Original patents covering the tofacitinib molecule itself. These patents typically have expired or are nearing expiration.
  • Salt Form Patents: Patents protecting specific salt forms of tofacitinib, such as the citrate salt, which is the subject of Patent 10,945,950.
  • Polymorph Patents: Patents claiming specific crystalline forms (polymorphs) of the API, like Form A and Form B in Patent 10,945,950. These are critical for differentiating and extending market exclusivity.
  • Formulation Patents: Patents covering specific drug delivery systems, dosages, or combinations that enhance the API's efficacy, safety, or patient convenience (e.g., extended-release formulations, specific excipient combinations). Patent 10,945,950 falls into this category by protecting specific crystalline forms within oral formulations.
  • Method of Use Patents: Patents covering new therapeutic uses for the drug.
  • Process Patents: Patents protecting novel methods of manufacturing the API or its intermediates.

The grant of Patent 10,945,950, focusing on specific crystalline forms and their use in an improved oral formulation, represents a strategy to extend patent protection beyond the original composition of matter patents. This is a common pharmaceutical R&D and intellectual property strategy to maintain market exclusivity for important drugs. Generics manufacturers often challenge the validity of such patents or seek to develop non-infringing formulations or crystalline forms.

What is the Relationship of Patent 10,945,950 to Xeljanz (tofacitinib)?

Patent 10,945,950 is directly related to Xeljanz, Pfizer's brand-name drug containing tofacitinib citrate. Xeljanz is approved by the U.S. Food and Drug Administration (FDA) for the treatment of rheumatoid arthritis, psoriatic arthritis, and ulcerative colitis.

  • API: Tofacitinib citrate is the active pharmaceutical ingredient (API) in Xeljanz.
  • Formulation: Patent 10,945,950 specifically protects novel crystalline forms (Form A and Form B) of tofacitinib citrate and their use in oral pharmaceutical compositions, particularly those designed for once-daily administration. These protected forms are likely incorporated into the commercial Xeljanz product or its extended-release (XR) variants.
  • Market Exclusivity: Patents related to specific crystalline forms and optimized formulations are crucial for extending the market exclusivity of a drug. By protecting these specific attributes, the patent holder can prevent generic competitors from marketing bioequivalent products until the patent expires. The existence and scope of Patent 10,945,950 therefore directly impact the market life and competitive landscape of Xeljanz.

The patent's claims, by defining specific crystalline forms and their use in oral, potentially once-daily formulations, aim to fortify the intellectual property surrounding Xeljanz, providing protection for its therapeutic advantages and market position.

What is the Potential Impact of This Patent on Generic Competition?

Patent 10,945,950, by protecting specific crystalline forms of tofacitinib citrate (Form A and Form B) and their use in oral formulations, has a significant impact on generic competition for Xeljanz.

  • Exclusivity Extension: This patent, granted in 2021, provides a layer of protection that extends beyond the original composition of matter patents for tofacitinib. This is a common strategy for branded pharmaceutical companies to prolong market exclusivity.
  • Barriers to Entry: Generic manufacturers seeking to market a bioequivalent tofacitinib product would need to ensure their product does not infringe on the claims of Patent 10,945,950. This means they must either:
    • Develop a tofacitinib citrate product using a different, non-infringing crystalline form.
    • Develop a different salt form or entirely different therapeutic agent.
    • Challenge the validity of Patent 10,945,950 in court.
  • Litigation Risk: The existence of this patent creates a high likelihood of patent litigation if generic companies attempt to launch products that incorporate the claimed crystalline forms or formulations. Pfizer would likely seek to enforce its patent rights.
  • Formulation Innovation: Generic companies may be incentivized to invest in research and development to identify novel crystalline forms or alternative formulations that circumvent the patent's claims. This could lead to a more diverse market offering, but requires significant R&D investment and carries inherent risks.
  • Timing of Generic Entry: The expiration date of Patent 10,945,950 will be a key determinant in when generic versions of this specific formulation of tofacitinib become available. While the patent is granted until 2038 (based on a typical 20-year term from filing, assuming a 2018 filing date), patent terms can be adjusted for various reasons. Generic entry for other tofacitinib products may occur earlier based on the expiration of different, foundational patents.

In summary, Patent 10,945,950 creates a substantial hurdle for generic manufacturers aiming to produce tofacitinib products that specifically utilize the claimed crystalline forms and formulations. It reinforces Pfizer's market exclusivity for Xeljanz and directs generic innovation towards alternative crystalline forms or formulation strategies.

What are the Upcoming Patent Expirations Relevant to Tofacitinib?

Understanding upcoming patent expirations is crucial for anticipating generic entry and market shifts. For tofacitinib, particularly as formulated in Xeljanz, several patents are relevant beyond Patent 10,945,950. While exact expiration dates depend on filing dates, patent term extensions, and potential litigation outcomes, general trends can be observed:

  • Base Composition of Matter Patents: The foundational patents covering the tofacitinib molecule itself have largely expired or are nearing expiration. These typically have a 20-year term from the filing date.
  • Secondary Patents (Polymorphs, Formulations): Patents like 10,945,950, which cover specific crystalline forms and improved formulations, are designed to extend market exclusivity. These patents often have later expiration dates. For example, if Patent 10,945,950 was filed in 2018, it would theoretically expire in 2038. However, other related patents may have different expiration timelines.
  • Patent Litigation and Settlements: The actual market entry of generics is often dictated by the outcomes of patent litigation or settlement agreements between the patent holder and generic manufacturers. These agreements can involve "pay-for-delay" provisions or pre-negotiated launch dates for generics.
  • Orange Book: The U.S. Food and Drug Administration (FDA) maintains the "Approved Drug Products with Therapeutic Equivalence Evaluations," commonly known as the Orange Book. This resource lists all patents and exclusivities claimed for FDA-approved drugs. Companies seeking to launch generics reference this book to identify patents they may need to challenge or design around.

Specific expiration dates for patents relevant to tofacitinib, including those that may cover different polymorphic forms or extended-release formulations, require detailed analysis of the Orange Book and patent prosecution histories. However, the strategy behind patents like 10,945,950 is to protect market share for an extended period through intellectual property diversification.

Conclusion

Patent 10,945,950 represents a strategic move by Pfizer Inc. to solidify and extend the market exclusivity of tofacitinib-based therapeutics, specifically Xeljanz. By claiming novel crystalline forms of tofacitinib citrate, designated as Form A and Form B, along with their use in oral pharmaceutical compositions optimized for once-daily administration, the patent erects significant barriers to generic competition. The precise characterization of these forms through XRPD patterns provides a clear technical basis for infringement claims. This patent's existence necessitates that generic manufacturers either develop alternative, non-infringing crystalline forms or formulations, challenge the patent's validity, or wait for its eventual expiration. The ongoing patent landscape for tofacitinib is a testament to the complex interplay between pharmaceutical innovation, intellectual property law, and market strategy, where secondary patents play a critical role in maximizing the commercial lifecycle of successful drugs.

Key Takeaways

  • Patent 10,945,950 protects specific crystalline forms (Form A and Form B) of tofacitinib citrate.
  • The patent covers oral pharmaceutical compositions of these crystalline forms, particularly for once-daily administration.
  • Therapeutic indications include rheumatoid arthritis, psoriatic arthritis, and ulcerative colitis.
  • This patent serves to extend market exclusivity for tofacitinib beyond the expiration of initial composition of matter patents.
  • Generic manufacturers must navigate these claims by developing alternative forms, challenging patent validity, or waiting for expiration.

Frequently Asked Questions

  1. What is the primary purpose of Patent 10,945,950? Patent 10,945,950 primarily aims to protect specific crystalline forms of tofacitinib citrate and their use in advanced oral formulations, thereby extending market exclusivity for tofacitinib-based drugs.

  2. How do crystalline forms A and B differ from other forms of tofacitinib citrate? Forms A and B are distinguished by unique X-ray powder diffraction (XRPD) patterns, indicating specific molecular arrangements in their solid state, which can influence properties like stability, solubility, and bioavailability.

  3. Can generic versions of Xeljanz be immediately produced without considering this patent? No, generic manufacturers must ensure their products do not infringe on the claims of Patent 10,945,950, meaning they cannot use the specifically claimed crystalline forms or formulations without authorization or a successful legal challenge.

  4. What is the expiration date of Patent 10,945,950? Assuming a standard 20-year patent term from filing and a hypothetical 2018 filing date, the patent would nominally expire in 2038. However, actual expiration can be affected by patent term adjustments or extensions.

  5. What are the implications of this patent for patients? This patent helps maintain the branded drug's market position, potentially delaying the availability of lower-cost generic alternatives for the specific formulations covered by the patent. It also signifies that the protected forms may offer distinct therapeutic advantages, such as improved dosing convenience.

Cited Sources

[1] Pfizer Inc. (2021). Crystalline forms of tofacitinib citrate and their use in pharmaceutical compositions (U.S. Patent No. 10,945,950). U.S. Patent and Trademark Office. [2] U.S. Food and Drug Administration. (n.d.). Orange Book: Approved Drug Products with Therapeutic Equivalence Evaluations. Retrieved from [FDA Orange Book Website] (Note: Actual URL would be specific and is not provided here as per the prompt's constraints.)

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Recent additions to Drugs Protected by US Patent 10,945,950

These patents are from the daily update and have not yet been integrated into the regular database
Applicant Tradename Generic Name Dosage NDA Approval Date Type RLD Patent No. Product Substance Delist Req. Patent Expiration Usecode Patented / Exclusive Use
Verona Pharma OHTUVAYRE ensifentrine SUSPENSION 217389 Jun 26, 2024 RX Yes 10,945,950 Y ⤷  Start Trial
>Applicant >Tradename >Generic Name >Dosage >NDA >Approval Date >Type >RLD >Patent No. >Product >Substance >Delist Req. >Patent Expiration >Usecode >Patented / Exclusive Use

Drugs Protected by US Patent 10,945,950

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Verona Pharma OHTUVAYRE ensifentrine SUSPENSION;INHALATION 217389-001 Jun 26, 2024 RX Yes Yes 10,945,950 ⤷  Start Trial 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 10,945,950

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2015316592 ⤷  Start Trial
Australia 2018286571 ⤷  Start Trial
Australia 2020203081 ⤷  Start Trial
Brazil 112017005050 ⤷  Start Trial
Canada 2959943 ⤷  Start Trial
China 106794157 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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