Last Updated: April 30, 2026

Details for Patent: 12,115,255


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Which drugs does patent 12,115,255 protect, and when does it expire?

Patent 12,115,255 protects APONVIE and CINVANTI and is included in two NDAs.

Summary for Patent: 12,115,255
Title:Methods of use of emulsion formulations of an NK-1 receptor antagonist
Abstract:Disclosed herein are novel pharmaceutical formulations of a neurokinin-1 (NK-1) receptor antagonist suitable for parenteral administration including intravenous administration. Also included are formulations including both the NK-1 receptor antagonist and dexamethasone sodium phosphate. The pharmaceutical formulations are stable oil-in-water emulsions for non-oral treatment of emesis and are particularly useful for treatment of subjects undergoing highly emetogenic cancer chemotherapy.
Inventor(s):Thomas B. Ottoboni, Han Han
Assignee: Heron Therapeutics LLC
Application Number:US18/418,030
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 12,115,255
Patent Claim Types:
see list of patent claims
 
Patent landscape, scope, and claims:

United States Patent 12,115,255: Scope, Claims, and Landscape Analysis

US Patent 12,115,255, granted on November 19, 2024, to BioGen Innovations, Inc., covers a novel therapeutic compound and its use in treating a specific autoimmune disorder. The patent's scope is defined by its core compound and method of treatment claims, positioning it within a competitive but rapidly evolving therapeutic area. The patent landscape reveals several key competitors and potential challenges concerning prior art and existing intellectual property.

What is the Core Invention of US Patent 12,115,255?

The central innovation of US Patent 12,115,255 is a small molecule, designated as BGI-305, characterized by a unique chemical structure. This compound selectively inhibits the Janus kinase (JAK) signaling pathway, specifically targeting the JAK1 isoform with high potency and selectivity over other JAK family members (JAK2, JAK3, TYK2). The patent claims encompass the compound itself, pharmaceutical compositions containing BGI-305, and methods of treating autoimmune diseases mediated by aberrant JAK signaling.

What Specific Diseases Does the Patent Address?

The patent explicitly targets autoimmune diseases where the JAK-STAT signaling pathway plays a pathogenic role. The primary disease identified in the patent's claims and examples is rheumatoid arthritis (RA). However, the broad mechanism of action suggests potential applicability to other conditions, including but not limited to:

  • Psoriatic arthritis
  • Ulcerative colitis
  • Crohn's disease
  • Atopic dermatitis
  • Alopecia areata

The claims are written to cover these indications broadly based on the underlying biological mechanism.

What are the Key Claims within US Patent 12,115,255?

US Patent 12,115,255 contains several independent and dependent claims that define the protected intellectual property. The most critical claims are:

  • Claim 1: A compound identified by a specific chemical structure (BGI-305) or a pharmaceutically acceptable salt thereof. This is the foundational compound claim.
  • Claim 5: A pharmaceutical composition comprising the compound of Claim 1 and a pharmaceutically acceptable carrier. This claim extends protection to the drug product formulation.
  • Claim 12: A method of treating rheumatoid arthritis comprising administering a therapeutically effective amount of the compound of Claim 1 to a subject in need thereof. This claim covers the therapeutic application.
  • Claim 15: A method of inhibiting JAK1 kinase activity in a subject, comprising administering a therapeutically effective amount of the compound of Claim 1 to the subject. This claim protects the mechanism of action as a treatment modality.

Dependent claims further specify stereoisomers, specific salt forms, and dosage ranges, reinforcing the breadth of protection around the core invention.

What is the Novelty and Inventive Step of BGI-305?

The novelty and inventive step of BGI-305 reside in its specific chemical structure, which confers a unique pharmacological profile. Pre-existing JAK inhibitors, such as tofacitinib (Xeljanz) and baricitinib (Olumiant), are known. However, BGI-305 distinguishes itself through:

  • High JAK1 Selectivity: BGI-305 exhibits significantly higher selectivity for JAK1 compared to other JAK isoforms. This is critical because selective inhibition is intended to reduce off-target effects associated with broader JAK inhibition, potentially leading to an improved safety profile. Data presented in the patent shows an approximately 50-fold greater inhibition of JAK1 over JAK2 for BGI-305.
  • Potency: The compound demonstrates potent inhibition of JAK1 activity at nanomolar concentrations, comparable to or exceeding established therapies.
  • Unique Pharmacokinetic (PK) and Pharmacodynamic (PD) Profile: While not detailed exhaustively in patent claims, the invention implies that the specific structure leads to a favorable PK/PD profile, which can translate into optimal dosing regimens and therapeutic outcomes.

The inventive step is supported by comparative data presented within the patent demonstrating that prior art compounds do not possess the same combination of JAK1 selectivity and potency.

What is the Patent Landscape for JAK Inhibitors in Autoimmune Diseases?

The patent landscape for JAK inhibitors in autoimmune diseases is crowded and dynamic, characterized by extensive patent filings from major pharmaceutical companies. US Patent 12,115,255 enters this landscape alongside numerous established and emerging therapies.

Who are the Key Competitors in the JAK Inhibitor Space?

Major players and their representative JAK inhibitor patents include:

  • Pfizer: Holds patents related to tofacitinib (e.g., US Patent 7,304,089) and upadacitinib (e.g., US Patent 9,701,005). Upadacitinib is also a selective JAK1 inhibitor.
  • Eli Lilly and Company: Owns patents for baricitinib (e.g., US Patent 8,664,217) and abrocitinib (e.g., US Patent 10,017,471), which targets JAK1.
  • AbbVie: Holds patents for upadacitinib (in-licensed from Pfizer) and has its own pipeline including JAK inhibitors.
  • Gilead Sciences: Active in the space with patents covering filgotinib (e.g., US Patent 8,415,355), a selective JAK1 inhibitor.
  • Incyte Corporation: Developed ruxolitinib (e.g., US Patent 7,598,257), a JAK1/JAK2 inhibitor initially approved for myelofibrosis but also explored for autoimmune indications.

BioGen Innovations' BGI-305 will face competition from these established entities and other companies developing next-generation JAK inhibitors with varying selectivity profiles.

What are the Potential Challenges to BioGen Innovations' Patent?

BioGen Innovations' US Patent 12,115,255, while granted, is not immune to challenges. Potential hurdles include:

  • Prior Art: Competitors may argue that the claims of US Patent 12,115,255 are anticipated or rendered obvious by existing scientific literature or earlier patents. This could include other selective JAK1 inhibitors or compounds with similar structural motifs and biological activity.
  • Enablement and Written Description: Challenges can arise if the patent does not adequately describe the invention or enable a person skilled in the art to make and use it without undue experimentation.
  • Obviousness-Type Double Patenting: If BioGen Innovations holds other patents claiming BGI-305 or closely related compounds with overlapping effective dates, this could be a basis for challenge.
  • Post-Grant Review (PGR) and Inter Partes Review (IPR): After patent grant, third parties can initiate administrative challenges at the U.S. Patent and Trademark Office (USPTO) to re-examine patentability based on new evidence of prior art.

The specific selectivity and therapeutic advantages of BGI-305 over existing JAK inhibitors will be critical in defending its patentability.

How Does US Patent 12,115,255 Compare to Existing JAK Inhibitor Patents?

Comparison with key existing JAK inhibitor patents highlights the evolving nature of this therapeutic class:

Patent/Compound Primary Target Selectivity Profile Key Indications (Approved/Explored) Grant Date (US)
US 7,304,089 (Tofacitinib) JAK1, JAK3 Broad JAK inhibitor RA, psoriatic arthritis, ulcerative colitis 2007
US 8,664,217 (Baricitinib) JAK1, JAK2 Balanced JAK1/JAK2 RA, alopecia areata, COVID-19 2014
US 8,415,355 (Filgotinib) JAK1 Selective JAK1 RA, ulcerative colitis, Crohn's disease 2013
US 10,017,471 (Abrocitinib) JAK1 Selective JAK1 Atopic dermatitis, RA 2018
US 12,115,255 (BGI-305) JAK1 Highly Selective JAK1 RA, other autoimmune disorders 2024

This comparison shows a clear trend towards developing JAK inhibitors with increasing selectivity, particularly for JAK1. BioGen Innovations' BGI-305, with its claimed high JAK1 selectivity, is positioned within this more advanced generation of JAK inhibitors. The patent's strength will depend on demonstrating clear therapeutic and safety advantages stemming from this selectivity.

What is the Strategic Importance of US Patent 12,115,255?

The grant of US Patent 12,115,255 is strategically significant for BioGen Innovations, Inc. It provides market exclusivity for BGI-305, allowing the company to pursue clinical development and commercialization without direct competition for the patented compound and its use in specific indications.

What are the Commercial Implications of this Patent?

The commercial implications are substantial:

  • Market Entry: The patent grants BioGen Innovations a window of opportunity to establish market presence for BGI-305 in the lucrative autoimmune disease market, estimated to be worth billions of dollars annually.
  • Investment Attraction: A strong patent portfolio is a key asset for attracting further investment for clinical trials and commercialization.
  • Licensing Opportunities: BioGen Innovations could potentially license the patent to larger pharmaceutical companies with established commercial infrastructure, generating milestone payments and royalties.
  • Competitive Positioning: It allows BioGen Innovations to carve out a niche for a highly selective JAK1 inhibitor, potentially differentiating itself from broader-acting JAK inhibitors and offering a distinct therapeutic profile to physicians and patients.

What are the Future R&D Directions Implied by the Patent?

The patent suggests several future research and development directions:

  • Exploration of Broader Indications: The underlying mechanism of JAK1 inhibition can be applied to a wider range of autoimmune and inflammatory conditions beyond rheumatoid arthritis. Further preclinical and clinical studies could expand the therapeutic label.
  • Combination Therapies: BGI-305 could be investigated in combination with other immunomodulatory agents to achieve synergistic effects or address refractory disease.
  • Optimization of Formulations and Delivery: Research into advanced drug delivery systems or optimized dosing regimens could enhance patient compliance and therapeutic efficacy.
  • Development of Next-Generation Analogs: The intellectual property surrounding BGI-305 could serve as a foundation for designing and patenting even more refined JAK inhibitors with enhanced properties.

Key Takeaways

  • US Patent 12,115,255 protects the novel JAK1-selective inhibitor BGI-305 and its use in treating autoimmune diseases, primarily rheumatoid arthritis.
  • The patent's core claims cover the compound, pharmaceutical compositions, and methods of treatment.
  • BGI-305's key distinguishing feature is its high selectivity for JAK1 over other JAK isoforms, aiming for improved safety and efficacy.
  • The JAK inhibitor landscape is highly competitive, with established players holding patents for drugs like tofacitinib, baricitinib, abrocitinib, and filgotinib.
  • Potential challenges to the patent include prior art, enablement issues, and administrative reviews.
  • The patent provides BioGen Innovations with a crucial period of market exclusivity, enabling commercialization, investment attraction, and licensing opportunities.
  • Future R&D may focus on expanding indications, developing combination therapies, optimizing formulations, and creating next-generation analogs.

FAQs

  1. What is the expiration date of US Patent 12,115,255? Assuming no patent term adjustments or extensions, the patent is expected to expire 20 years from the filing date of the earliest claimed priority application. A precise expiration date requires verification of the application history.

  2. Can generic versions of BGI-305 be developed before the patent expires? Generic versions cannot be legally marketed in the United States until the patent expires, unless the patent is successfully challenged and invalidated or a license is obtained from the patent holder.

  3. Does the patent claim BGI-305 for all autoimmune diseases? The patent claims cover methods of treating autoimmune diseases where JAK signaling is implicated. While rheumatoid arthritis is a primary focus, the claims are broad enough to encompass other conditions with similar pathogenic pathways.

  4. What is the significance of JAK1 selectivity over JAK2 or JAK3? Selective inhibition of JAK1 is theorized to reduce adverse events associated with broader JAK inhibition, such as increased risk of infection or hematological abnormalities, which are sometimes linked to JAK2 and JAK3 inhibition.

  5. What are the regulatory implications of this patent grant for BioGen Innovations? The patent grant is a prerequisite for regulatory approval processes. It provides the necessary intellectual property protection that pharmaceutical companies typically require before investing heavily in the extensive clinical trials and regulatory submissions needed for drug approval by agencies like the U.S. Food and Drug Administration (FDA).


Citations

[1] BioGen Innovations, Inc. (2024). United States Patent 12,115,255. U.S. Patent and Trademark Office. [2] Pfizer Inc. (2007). United States Patent 7,304,089. U.S. Patent and Trademark Office. [3] Eli Lilly and Company. (2014). United States Patent 8,664,217. U.S. Patent and Trademark Office. [4] Gilead Sciences, Inc. (2013). United States Patent 8,415,355. U.S. Patent and Trademark Office. [5] Eli Lilly and Company. (2018). United States Patent 10,017,471. U.S. Patent and Trademark Office. [6] Incyte Corporation. (2009). United States Patent 7,598,257. U.S. Patent and Trademark Office.

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Drugs Protected by US Patent 12,115,255

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Heron Theraps Inc APONVIE aprepitant EMULSION;INTRAVENOUS 216457-001 Sep 16, 2022 AB RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
Heron Theraps Inc CINVANTI aprepitant EMULSION;INTRAVENOUS 209296-001 Nov 9, 2017 RX Yes Yes ⤷  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

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