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Details for Patent: 3,950,405
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Summary for Patent: 3,950,405
| Title: | Trans-4-aminomethylcyclohexane-1-carboxylic acid | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | A trans isomer of 4-cyanoncyclohexane-1-carboxylic acid or its lower alkyl ester is reduced in a solvent in the presence of a hydrogenating catalyst, and hydrolyzing the produced ester in case the starting trans-isomer is a lower alkyl ester, then the trans-4-aminomethyl-cyclohexane-1-carboxylic acid is recovered from the reaction mixture. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Atsuji Okano, Shizuo Kadoya, Takeo Naito, Takaaki Aoyagi, Masao Shimizu | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Mitsubishi Chemical Corp | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US04/836,196 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Compound; | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | U.S. Patent 3,950,405: Tranexamic Acid Claim Scope, Expiration, and Patent LandscapeU.S. Patent 3,950,405 covers the active pharmaceutical ingredient tranexamic acid, chemically identified as trans-4-(aminomethyl)cyclohexane-1-carboxylic acid. Its single claim is a direct composition-of-matter claim. The patent expired decades ago, so it does not currently block manufacture, sale, importation, formulation, or therapeutic use of tranexamic acid in the United States. Current commercial risk is concentrated in later formulation, dosage-regimen, manufacturing, and method-of-use patents rather than in the 1976 compound patent. What does U.S. Patent 3,950,405 claim?The patent contains one substantive claim:
The claimed compound is tranexamic acid, also known as TXA. Its principal identifiers are:
The claim is unusually narrow in wording but commercially broad in effect because it covers the active molecule itself rather than a particular tablet, injection, indication, manufacturing process, or dosage schedule. How broad is the claim to trans-4-aminomethylcyclohexane-1-carboxylic acid?The claim covers the trans compound as a chemical entity. A product that contains tranexamic acid as the claimed active ingredient would have fallen within the claim during the patent term, subject to ordinary claim-construction principles. The claim does not expressly recite:
Does the patent cover tranexamic acid salts?The literal claim identifies the free acid, trans-4-aminomethylcyclohexane-1-carboxylic acid. It does not expressly claim a salt such as a hydrochloride, sodium salt, or another pharmaceutically acceptable salt. A salt can raise separate claim-construction and infringement questions because the isolated commercial substance may have a different ionic form from the neutral acid. During the patent term, coverage of a salt would have depended on the patent’s specification, prosecution history, chemical equivalence, and the applicable infringement theory. The patent’s practical relevance is now historical because the patent has expired. Does the claim cover the cis isomer?No. The claim expressly requires the trans configuration. The cis isomer is structurally different and is outside the literal scope of the claim. A product containing both cis and trans material would require a separate analysis. The claim does not specify a purity percentage or define an allowable amount of the cis isomer. A mixture containing the claimed trans compound could have presented infringement issues during the term, depending on the product composition and applicable claim interpretation. Does the claim cover formulations and finished products?The patent does not claim a formulation as such. During the patent term, a finished tablet, capsule, or injection containing the claimed compound could have implicated the composition claim because the active ingredient was present in the claimed form. The patent did not need to recite the dosage form to reach the active molecule. The claim would not, by itself, establish protection for a formulation that contains no tranexamic acid. It also would not protect a later formulation feature, such as extended release, excipient selection, tablet hardness, coating, or dissolution profile, unless that feature was covered by a separate patent. When did U.S. Patent 3,950,405 expire?For a patent issued in 1976, the governing pre-Uruguay Round patent term was generally 17 years from the issue date. On that basis, U.S. Patent 3,950,405 expired on or about April 13, 1993, absent an unusual term adjustment, extension, or terminal disclaimer. The public patent record identifies the patent as expired. [1]
Patent term extension under 35 U.S.C. § 156 was not available in the modern form for this historical patent in a way that would restore the expired compound right. Patent-term adjustment under current law also does not convert this patent into an enforceable right today. What products contain the compound covered by U.S. Patent 3,950,405?Tranexamic acid is marketed in multiple U.S. dosage forms and under multiple product names.
The FDA approved Cyklokapron tranexamic acid injection for reduction or prevention of bleeding in selected surgical and dental settings, including use in patients with hemophilia undergoing tooth extraction. [2] FDA approved Lysteda in 2009 for cyclic heavy menstrual bleeding. [3] The underlying compound patent did not create a continuing exclusivity right for either product. Any present patent exposure must be analyzed against later patents listed for the relevant product, as well as patents covering manufacturing or particular uses. What is the Orange Book status of tranexamic acid?The Orange Book is relevant principally to FDA-approved products, not to the expired compound patent itself. U.S. Patent 3,950,405 should not be treated as a current Orange Book barrier. Orange Book analysis must distinguish among:
For tranexamic acid, the active ingredient has long been off-patent. Generic approval therefore depends on satisfying the applicable abbreviated new drug application requirements and addressing any still-listed product-specific patents or regulatory exclusivities for the relevant reference product. The existence of a later patent covering Lysteda, Cyklokapron, or a particular regimen would not revive U.S. Patent 3,950,405. The FDA Orange Book identifies patent information submitted for approved drug products and provides the relevant listing framework. [4] A product-level review should be performed separately for oral tablets and injectable products because their patents, labeling, and regulatory histories can differ. Are there Paragraph IV challenges involving tranexamic acid?Paragraph IV risk is product-specific. A generic applicant may certify that a listed patent is invalid, unenforceable, or will not be infringed. That certification can trigger litigation under the Hatch-Waxman Act. For the expired compound patent, a Paragraph IV challenge is no longer commercially meaningful. The patent cannot support a current infringement action. Any modern Paragraph IV dispute involving tranexamic acid would more likely concern:
A generic applicant seeking approval for a basic tranexamic acid product generally faces a different risk profile from an applicant seeking to copy a patented branded formulation or indication. The former can rely on the expired compound patent landscape. The latter may need a Paragraph IV certification, a section viii statement, a carve-out of a patented use, or a non-infringement strategy. What formulation patents protect tranexamic acid products?The 3,950,405 patent is not a formulation patent. Later formulation patents may protect commercial attributes such as:
These later rights are separate from the expired composition claim. Their enforceability depends on their individual filing dates, priority claims, patent terms, prosecution history, claim scope, and Orange Book listing status. A formulation patent generally cannot prevent all manufacture of tranexamic acid. It can restrict copying of the claimed formulation or process. A competitor may avoid infringement by using a different excipient system, release mechanism, dosage form, concentration, or manufacturing route, provided the alternative does not fall within the patent claims. What method-of-use patents affect tranexamic acid?Tranexamic acid has applications across several bleeding-related settings, including:
The historic compound patent does not claim any of these uses. A later method patent may claim a particular patient population, dose, timing, route, treatment duration, or combination therapy. Method-of-use protection is narrower than compound protection. A generic applicant may be able to market the same active ingredient for unpatented indications while carving out a patented use from its label, subject to FDA requirements and induced-infringement considerations. What manufacturing and intellectual-property barriers remain?The expired composition patent removes the primary molecule-level barrier. Commercial barriers may still arise from manufacturing know-how and regulatory requirements. Manufacturing considerationsTranexamic acid production may involve control of:
These attributes may be protected by later process or formulation patents, trade secrets, or quality-control know-how. Trade-secret protection does not prevent independent development of the same process, but it can increase the time and cost required to qualify a supplier. Regulatory considerationsAn ANDA applicant must establish pharmaceutical equivalence and bioequivalence where required, comply with current good manufacturing practices, and address the reference product’s labeling. Injectable products carry additional requirements involving sterility, particulate matter, container closure, and manufacturing controls. The expired 3,950,405 patent does not remove these FDA obligations. How strong is the patent estate for tranexamic acid?The estate is weak at the active-ingredient level and potentially differentiated at the product level.
The commercial value of the old patent was concentrated in its composition-of-matter coverage. Once it expired, competitive advantage shifted to regulatory approvals, supply reliability, formulation differentiation, branding, hospital contracts, and later product-specific intellectual property. What generic launch risks exist for tranexamic acid?A conventional generic launch faces substantially lower patent risk than a copy of a branded, patented formulation. Low-risk scenarioA manufacturer launches a standard immediate-release oral tablet or conventional injection after confirming that:
Moderate-risk scenarioRisk increases where the applicant seeks to copy:
High-risk scenarioThe highest exposure arises when the applicant:
Which companies compete in tranexamic acid?The U.S. competitive landscape includes originator-sponsored products, generic manufacturers, hospital suppliers, and contract manufacturers. Key commercial participants include:
Competition is based less on molecule ownership than on:
What is the revenue exposure from U.S. Patent 3,950,405?There is no current revenue exposure attributable to the expired patent itself. The patent no longer supports an injunction, damages claim, or exclusion from the U.S. market. Revenue exposure may still arise from later rights connected to branded products. The relevant commercial questions are:
For tranexamic acid, the basic generic opportunity is structurally more attractive than a protected small-molecule launch because the principal compound patent expired in 1993 and the ingredient has an established regulatory history. Key Takeaways
Frequently Asked QuestionsIs U.S. Patent 3,950,405 still enforceable?No. The patent expired approximately in April 1993 under the 17-year term applicable to the patent. Does U.S. Patent 3,950,405 cover tranexamic acid tablets?It claims the active compound, not a tablet formulation. During its term, a tablet containing the claimed compound could have implicated the composition claim. The patent has no current enforceability. Does the patent cover tranexamic acid injection?The active compound claim could have reached the compound in an injectable product during the patent term. It did not independently claim sterility, concentration, container closure, or injectable formulation technology. Can a generic manufacturer sell tranexamic acid in the United States?The expired compound patent does not prevent sale. The manufacturer must still satisfy FDA approval, labeling, manufacturing, bioequivalence, quality, and any later product-patent requirements. Does the patent cover use of tranexamic acid for heavy menstrual bleeding?No. The claim is to the compound and does not recite heavy menstrual bleeding or any other therapeutic indication. Later method-of-use patents must be analyzed separately. References
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Drugs Protected by US Patent 3,950,405
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| >Applicant | >Tradename | >Generic Name | >Dosage | >NDA | >Approval Date | >TE | >Type | >RLD | >RS | >Patent No. | >Patent Expiration | >Product | >Substance | >Delist Req. | >Patented / Exclusive Use | >Submissiondate |
Foreign Priority and PCT Information for Patent: 3,950,405
| Foriegn Application Priority Data | ||
| Foreign Country | Foreign Patent Number | Foreign Patent Date |
| 46-69632 | Dec 24, 1971 | |
International Family Members for US Patent 3,950,405
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Belgium | 657492 | ⤷ Start Trial | |||
| Brazil | 6465652 | ⤷ Start Trial | |||
| Switzerland | 444146 | ⤷ Start Trial | |||
| Germany | 1443755 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
