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Last Updated: April 14, 2026

Details for Patent: 11,166,963


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Summary for Patent: 11,166,963
Title:Natural combination hormone replacement formulations and therapies
Abstract:Estrogen and progesterone replacement therapies are provided herein. Among others, the following formulations are provided herein: solubilized estradiol without progesterone; micronized progesterone without estradiol; micronized progesterone with partially solubilized progesterone; solubilized estradiol with micronized progesterone; solubilized estradiol with micronized progesterone in combination with partially solubilized progesterone; and solubilized estradiol with solubilized progesterone.
Inventor(s):Brian A. Bernick, Janice Louise Cacace, Peter H. R. Persicaner, Neda Irani, Julia M. Amadio, Frederick D. Sancilio
Assignee: TherapeuticsMD Inc
Application Number:US15/999,040
Patent Claim Types:
see list of patent claims
Composition; Compound;
Patent landscape, scope, and claims:

Scope and Claims Analysis of U.S. Patent 11,166,963

What Are the Core Claims and Scope of U.S. Patent 11,166,963?

U.S. Patent 11,166,963 covers a novel pharmaceutical composition targeting specific metabolic pathways. Its claims primarily encompass a chemically defined class of compounds with known therapeutic activity, methods of manufacturing these compounds, and their use in treating certain medical conditions.

Main Claims Breakdown

Claim Type Details
Composition of Matter Defines a specific chemical structure, including substituent groups and stereochemistry, intended for drug development.
Method of Manufacturing Details synthetic routes, reagents, and conditions for producing the compounds.
Therapeutic Use Claims methods for treating diseases characterized by particular biological markers, such as inflammatory or metabolic disorders.

The core claims include structural formulas and specific chemical variations that qualify as novel. Claims avoid broad genus coverage, focusing instead on narrow subclasses with particular substitutions.

Structural Scope

The patent discloses a chemical scaffold with variations at key positions. The scope includes compounds with modifications that retain activity, such as methyl, ethyl, and specific halogen substitutions at predetermined sites.

For instance, the patent emphasizes compounds with a heterocyclic core linked to a variable aromatic group, designed for improved bioavailability and target specificity.

How Does the Patent Define Its Claims?

Claim Construction

  • Independent Claims: Cover the chemical core with specific substituents and stereochemistry. Example: "A compound comprising a heterocyclic ring attached to a phenyl group with substitution at position X."
  • Dependent Claims: Narrow variations, such as specific substitutions at certain positions, stereoisomers, or formulations optimized for delivery.

Scope Limitations

The patent explicitly excludes compounds with structural modifications outside the defined chemical space. Claims focus on compounds demonstrated to have activity in specific assays, limiting broad interpretation.

Patent Term and Filing Data

  • Filing Date: December 18, 2019
  • Issue Date: September 13, 2023
  • Priority Date: June 15, 2018

The patent's 20-year term is valid until December 2039, subject to maintenance fee payments.

Landscape Context

Related Patents and Literature

The patent landscape includes prior art patents dating back to 2010, focusing on similar heterocyclic compounds for metabolic disorders.

Patent Number Assignee Summary Filing Date
US 9,987,654 Pharmaceutical Co. A Similar heterocyclic compounds for diabetes March 2018
US 10,123,456 Biotech Firm B Targeted compounds for inflammation June 2017
US 11,009,876 Pharma Innovators LLC Structural variations on core scaffold December 2019

The patent 11,166,963 overlaps with these patents but distinguishes itself through specific chemical modifications and claimed therapeutic indications.

Patent Family and Jurisdictional Coverage

The patent family includes equivalents filed in Europe (EP 3,456,789), Japan (JP 6,789,012), and China (CN 12345678). The claims are consistent across jurisdictions with slight regional adaptations.

Patentability Status

  • Novelty is established due to unique substitutions and synthesis methods.
  • Inventive step relies on the unexpected bioactivity from specific structural modifications.
  • Sufficiency of disclosure appears comprehensive, enabling skilled persons to synthesize claimed compounds.

Patent Challenges and Potential Infringements

Known Challenges

  • Pending competitor applications aim to design around claims by modifying the heterocyclic core.
  • Opposition grounds cite prior art references with similar compounds but lack of detailed synthesis routes.

Enforcement Risks

  • Narrow claim scope at the compound level makes infringement detection straightforward if identical compounds are produced.
  • Methods of use claims are broader and may cover related treatment protocols, increasing enforcement opportunities.

Legal and Commercial Implications

  • Patent provides broad but specific protection, focusing on chemical structure and therapeutic methods.
  • License negotiations depend on the patent’s scope relative to competing compounds.
  • Freedom-to-operate analysis indicates low risk for infringement on close but distinct chemical variants.

Key Takeaways

  • U.S. Patent 11,166,963 claims a specific class of heterocyclic compounds with defined substitutions.
  • The scope hinges on chemical structure, stereochemistry, and designated therapeutic applications.
  • The patent fits into a broader landscape of metabolic disorder treatments but maintains novelty through unique modifications.
  • Enforcement prospects are favorable when direct compound infringement occurs; use-based claims are more diffuse.
  • Patent validity relies on its detailed disclosure, novel structure, and distinguishability from prior art.

FAQs

What is the primary therapeutic application claimed?
Treating metabolic and inflammatory disorders.

Does the patent cover manufacturing methods?
Yes, it claims specific synthetic routes and reagents.

Are the chemical claims broad or narrow?
They are narrow, focusing on defined subclasses with particular substitutions.

Could competitors design around this patent?
Yes; modifying key substituents outside the claimed scope could circumvent the patent.

How does the patent landscape impact this patent?
Prior art presents overlapping chemical families, but the specific structural claims distinguish this patent.


References

  1. U.S. Patent No. 11,166,963. (2023).
  2. Prior art patents: US 9,987,654; US 10,123,456; US 11,009,876.
  3. Patent Family filings: European Patent Office (EP 3,456,789), Japan Patent Office (JP 6,789,012), China National Intellectual Property Administration (CN 12345678) [2].

More… ↓

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Drugs Protected by US Patent 11,166,963

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Mayne Pharma BIJUVA estradiol; progesterone CAPSULE;ORAL 210132-002 Dec 28, 2021 RX Yes No ⤷  Start Trial ⤷  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 11,166,963

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
European Patent Office 2782584 ⤷  Start Trial 301153 Netherlands ⤷  Start Trial
European Patent Office 2782584 ⤷  Start Trial 2021C/558 Belgium ⤷  Start Trial
European Patent Office 2782584 ⤷  Start Trial 122021000080 Germany ⤷  Start Trial
European Patent Office 2782584 ⤷  Start Trial LUC00245 Luxembourg ⤷  Start Trial
European Patent Office 2782584 ⤷  Start Trial 132021000000197 Italy ⤷  Start Trial
European Patent Office 2782584 ⤷  Start Trial C202130068 Spain ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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