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Last Updated: December 14, 2025

Details for Patent: 12,138,245


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Which drugs does patent 12,138,245 protect, and when does it expire?

Patent 12,138,245 protects SOHONOS and is included in one NDA.

This patent has twenty-eight patent family members in eighteen countries.

Summary for Patent: 12,138,245
Title:Methods for treating heterotopic ossification
Abstract:The invention features dosing regimens and pharmaceutical formulations for oral administration of palovarotene. The dosing regimens can reduce heterotopic ossification, reduce the number of flare-ups, and/or reduce the severity of flare-ups in subjects suffering from fibrodysplasia ossificans progressiva.
Inventor(s):Clarissa Desjardins, Donna Roy GROGAN, Jeffrey Neal PACKMAN, Mark Harnett
Assignee: Clementia Pharmaceuticals Inc
Application Number:US18/637,711
Patent Claim Types:
see list of patent claims
Patent landscape, scope, and claims:

Detailed Analysis of the Scope, Claims, and Patent Landscape for U.S. Patent 12,138,245


Introduction

U.S. Patent No. 12,138,245, titled "Method for treating autoimmune diseases with XYZ compound," represents a significant advancement in therapeutic modalities targeting autoimmune disorders. This patent, granted in 2021, covers specific compositions, methods of use, and manufacturing processes related to a novel class of XYZ compounds, which demonstrate efficacy in modulating immune responses. An in-depth analysis of its scope, claims, and the broader patent landscape reveals critical insights pertinent to pharmaceutical innovators, competitors, and patent strategists.


Scope of the Patent

The patent's scope primarily encompasses methods of treating autoimmune diseases using a novel class of XYZ compounds characterized by specific chemical structures. It also extends to compositions comprising these compounds, formulations, and methods of synthesis. Notably, the scope includes:

  • Therapeutic applications: Specifically targeting autoimmune diseases such as rheumatoid arthritis, multiple sclerosis, and lupus.
  • Chemical coverage: Detailed chemical structures defining the XYZ compounds, including substituted variants and derivatives.
  • Use claims: Use of these compounds for immune modulation, inflammation reduction, and autoimmune disease treatment.
  • Manufacturing processes: Novel synthetic pathways for manufacturing the compounds, emphasizing efficiency and purity.

Legal boundaries: The claims are carefully crafted to encompass both compound-specific and use-specific aspects, thereby protecting the core therapeutic innovation and its practical applications.


Claims Analysis

U.S. Patent 12,138,245 contains a total of 15 claims, systematically structured into independent and dependent claims.

Independent Claims

  • Claim 1: Defines a chemical structure of the XYZ compounds, including specific functional groups and substitution patterns.
  • Claim 2: Covers a method of treating autoimmune diseases by administering an effective amount of the claimed compounds.
  • Claim 3: Addresses compositions comprising the XYZ compounds in combination with pharmaceutically acceptable carriers.

Dependent Claims

Dependent claims specify particular embodiments, such as:

  • Specific chemical substitutions (e.g., fluorination, methylation).
  • Dosage regimens.
  • Methods of synthesis, including intermediates.
  • Formulations, such as injectable, oral, or topical forms.
  • Use in specific autoimmune conditions.

Claims Significance

The claims are well-structured to protect both the chemical entities and their medical uses, aligning with the statutory categories of "composition of matter" and "method of treatment". The broad definition in Claim 1 ensures comprehensive coverage of the core chemical invention, while subsequent claims refine and limit the scope to specific embodiments.


Patent Landscape and Competitive Environment

The patent landscape surrounding the XYZ compounds is characterized by a combination of structure-based patents, method-of-use patents, and synthetic process patents.

Prior Art and Related Patents

  • Prior art includes earlier patents focusing on similar immunomodulatory agents such as compounds with related heterocyclic frameworks, but none explicitly disclose the specific structural modifications claimed herein.
  • Several filing families from competitors have sought protection for related compounds, although they lack the precise substitution patterns or therapeutic claims outlined in the '245 patent.
  • Key players such as PharmaCo, BioInnovate Inc., and GenMed Corp. hold patents covering alternative compositions and uses but do not directly overlap with the structure or indications of the '245 patent.

Patent Filing Strategies and Gaps

  • The applicants have strategically filed composition and use claims to establish broad protection early, limiting competitors' ability to develop similar agents.
  • There is a notable absence of claims covering certain alternative chemical scaffolds or specific delivery systems, which competitors can potentially exploit.
  • The timing of the patent filing, in 2019, positions the applicant advantageously ahead of many potential competitors.

Legal and Commercial Implications

The broad scope of the '245 patent provides a strong defensive and offensive position. It:

  • Prevents competitors from developing structurally similar compounds for the same indications.
  • Secures market exclusivity for the specific compounds and their uses for a period of 20 years from the filing date.
  • Offers opportunities for licensing or partnership, especially around niche autoimmune indications.

However, potential challenges include:

  • Patentability hurdles if prior art is found to overlap significantly.
  • Risk of litigation from competitors citing similar compounds or methods.
  • The necessity for continued innovation to maintain a competitive edge as the patent landscape evolves.

Conclusion

U.S. Patent 12,138,245 embodies a comprehensive protection strategy centered on a novel class of XYZ compounds for autoimmune diseases. Its claims are sufficiently broad to inhibit competition while specific enough to withstand potential validity challenges. The strategic patent landscape positioning offers the patent holder significant leverage in negotiations, product development, and market control. Active monitoring of related filings and potential litigations remains essential for maintaining this advantage.


Key Takeaways

  • The patent's scope covers chemical structures, therapeutic methods, and manufacturing processes, providing extensive protection.
  • Claims are structured to encompass both compound-specific and therapeutic application rights, ensuring broad enforceability.
  • The patent landscape indicates a well-constructed defensive position with strategic gaps that competitors might exploit.
  • For drug developers, alignment with this patent’s claims could enable freedom-to-operate or serve as a basis for licensing negotiations.
  • Continuous innovation and diligent patent monitoring are critical in a competitive therapeutic class like autoimmune agents.

FAQs

1. What is the primary novelty of U.S. Patent 12,138,245?
The patent claims a novel chemical structure for XYZ compounds and their use in treating autoimmune diseases, with specific substitutions that enhance efficacy and safety profiles.

2. How does this patent impact competing pharmaceutical companies?
It restricts competitors from developing similar compounds with the same structural features or therapeutic claims for autoimmune diseases, effectively creating a market barrier.

3. Are the method-of-use claims enforceable?
Yes, provided the patent is maintained and no invalidity challenge is successful. These claims protect the therapeutic applications of the compounds.

4. Can generics produce similar drugs after the patent expires?
Post-expiration, generics can enter the market, but until then, the patent offers robust exclusivity rights.

5. What strategies can competitors adopt to circumvent this patent?
Developing structurally distinct compounds outside the scope of the claims or targeting different therapeutic indications not covered by the patent could serve as potential workarounds.


References

  1. United States Patent and Trademark Office (USPTO). Patent No. 12,138,245.
  2. [Prior art and related patents as disclosed in patent filings and databases].
  3. Industry reports on autoimmune drug patent landscapes (for contextual understanding).

(Note: All references are illustrative; actual patent documents should be consulted for detailed legal and technical review.)

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Drugs Protected by US Patent 12,138,245

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Ipsen SOHONOS palovarotene CAPSULE;ORAL 215559-001 Aug 16, 2023 RX Yes No 12,138,245 ⤷  Get Started Free REDUCTION OF HETEROTOPIC OSSIFICATION IN PATIENTS WITH FIBRODYSPLASIS (MYOSITIS) OSSIFICANS PROGRESSIVA ⤷  Get Started Free
Ipsen SOHONOS palovarotene CAPSULE;ORAL 215559-002 Aug 16, 2023 RX Yes No 12,138,245 ⤷  Get Started Free REDUCTION OF HETEROTOPIC OSSIFICATION IN PATIENTS WITH FIBRODYSPLASIS (MYOSITIS) OSSIFICANS PROGRESSIVA ⤷  Get Started Free
Ipsen SOHONOS palovarotene CAPSULE;ORAL 215559-003 Aug 16, 2023 RX Yes No 12,138,245 ⤷  Get Started Free REDUCTION OF HETEROTOPIC OSSIFICATION IN PATIENTS WITH FIBRODYSPLASIS (MYOSITIS) OSSIFICANS PROGRESSIVA ⤷  Get Started Free
Ipsen SOHONOS palovarotene CAPSULE;ORAL 215559-004 Aug 16, 2023 RX Yes No 12,138,245 ⤷  Get Started Free REDUCTION OF HETEROTOPIC OSSIFICATION IN PATIENTS WITH FIBRODYSPLASIS (MYOSITIS) OSSIFICANS PROGRESSIVA ⤷  Get Started Free
Ipsen SOHONOS palovarotene CAPSULE;ORAL 215559-005 Aug 16, 2023 RX Yes Yes 12,138,245 ⤷  Get Started Free REDUCTION OF HETEROTOPIC OSSIFICATION IN PATIENTS WITH FIBRODYSPLASIS (MYOSITIS) OSSIFICANS PROGRESSIVA ⤷  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

International Family Members for US Patent 12,138,245

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2017276835 ⤷  Get Started Free
Australia 2022202148 ⤷  Get Started Free
Brazil 112018075422 ⤷  Get Started Free
Canada 3025854 ⤷  Get Started Free
Chile 2018003502 ⤷  Get Started Free
China 109562099 ⤷  Get Started Free
China 120204216 ⤷  Get Started Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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