Details for Patent: 4,051,141
Summary for Patent: 4,051,141
| Title: | Thieno[3,2-c]pyridine derivatives | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | Thieno[3,2-c]pyridine derivatives having the formula: ##STR1## in which X is S; R is a phenyl or benzoyl radical optionally substituted with 1-3 halogen atoms or lower alkyl, lower alkoxy, hydroxy or nitro; R1 is hydrogen, halogen, hydroxy or lower alkyl; R2 is hydrogen or halogen and n is 1 or 2, and in which the symbols R1 may be different in each CHR1 when n is 2; and their pharmaceutically acceptable acid addition salts.Said derivatives are therapeutically useful for their anti-inflammatory, vasodilatator and blood plate aggregation inhibitor action. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Albert Rene Joseph Castaigne | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Sanofi SA | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US05/660,248 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Compound; | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 4,051,141: Claim Scope, Ticlopidine Coverage, Expiration, and Patent LandscapeU.S. Patent 4,051,141 covers a class of substituted tetrahydrothienopyridines, including 5-(2-chlorobenzyl)-4,5,6,7-tetrahydro-thieno[3,2-c]pyridine, the compound later known as ticlopidine. The patent issued on September 27, 1977, and its ordinary U.S. patent term expired in September 1994. It no longer presents an enforceable U.S. patent barrier to ticlopidine manufacture, formulation, or sale. The patent is significant historically because it claims the core ticlopidine chemical entity. Its claims do not cover clopidogrel, prasugrel, ticagrelor, finished pharmaceutical formulations, manufacturing processes in general, or methods of treating patients. What drug does U.S. Patent 4,051,141 protect?U.S. Patent 4,051,141 protects substituted 4,5,6,7-tetrahydro-thieno[3,2-c]pyridines and pharmaceutically acceptable acid-addition salts. The principal commercial compound within the patent is ticlopidine. Patent and product identification
The patent’s principal commercial species is claim 2:
Ticlopidine is an oral antiplatelet drug that inhibits platelet aggregation through irreversible inhibition of the platelet P2Y12 ADP receptor pathway. The FDA approved Ticlid tablets for reduction of thrombotic stroke risk in certain patients and for maintaining coronary artery stent patency, subject to significant hematologic safety warnings (FDA, 2011). What does claim 1 of U.S. Patent 4,051,141 cover?Claim 1 is a Markush claim covering a broad chemical genus. It is broader than the individual compounds recited in claims 2 through 6. The claim requires:
Claim 1 structural scopeThe R group options include:
The claim also allows variation in the carbon chain connecting the aromatic or benzoyl group to the thienopyridine nitrogen framework. Where n is 2, the R1 variables may have different meanings at each methylene or substituted methylene position. This drafting approach gives claim 1 substantial genus coverage, while claims 2 through 6 identify specific compounds within that genus. How do claims 2 through 6 differ?Claims 2 through 6 are narrower species claims. Each covers one named benzyl-substituted tetrahydrothienopyridine and its pharmaceutically acceptable acid-addition salts.
Claim 2 is the commercially important claim because it specifically covers ticlopidine and ticlopidine salts, including ticlopidine hydrochloride. Claims 3 through 6 cover analogues that were part of the disclosed chemical program but did not become the principal U.S. marketed product. What salts are covered by the patent?The claims extend to pharmaceutically acceptable acid-addition salts of the claimed bases. For ticlopidine, the principal commercial salt is ticlopidine hydrochloride. The salt language does not create a separate claim to every pharmaceutical composition containing the compound. It covers the claimed chemical compound in salt form. A salt must remain within the scope of the claimed base and must qualify as a pharmaceutically acceptable acid-addition salt. Potentially relevant salt categories include salts formed with pharmaceutically acceptable inorganic or organic acids. The commercial significance is concentrated in hydrochloride salt formulations. The patent does not expressly claim:
What is the patent expiration date for U.S. Patent 4,051,141?U.S. Patent 4,051,141 issued on September 27, 1977. Under the pre-Uruguay Round U.S. patent-term framework applicable to the patent, the ordinary term was 17 years from issuance. The patent therefore expired in September 1994.
The patent predates the modern 20-year term measured from the earliest effective nonprovisional filing date. The transition rules for older patents did not extend the patent beyond its applicable term in a commercially meaningful way. There is no current patent-term-extension issue associated with U.S. Patent 4,051,141. Any regulatory exclusivity associated with the later Ticlid approval would have been separate from the expired compound patent and would not revive the patent. What is the Orange Book status of ticlopidine?Ticlopidine was approved in the United States as Ticlid tablets under NDA 19-979. The FDA labeling identifies ticlopidine hydrochloride as the active ingredient and describes its antiplatelet indications and boxed hematologic warnings (FDA, 2011). The original compound patent expired before the principal generic-entry period. The current commercial issue is therefore regulatory and commercial rather than patent-based. Orange Book implicationsThe relevant Orange Book conclusions are:
FDA regulatory approval does not by itself establish freedom from every possible patent claim. However, for the specific expired patent analyzed here, there is no remaining U.S. exclusionary right. When did ticlopidine lose exclusivity?Ticlopidine lost compound-patent exclusivity no later than September 1994 when U.S. Patent 4,051,141 expired. Regulatory exclusivity associated with FDA approval would have been shorter and would not extend the compound patent. Ticlopidine also lost commercial exclusivity through the availability of generic ticlopidine hydrochloride tablets. The product’s commercial position declined because clopidogrel offered a more favorable safety and prescribing profile, especially after ticlopidine became associated with neutropenia, agranulocytosis, thrombotic thrombocytopenic purpura, and aplastic anemia risks. The commercial lifecycle was therefore shaped by two separate events:
Which companies challenged or competed with the ticlopidine patent?The principal competitive activity involved generic manufacturers seeking approval for ticlopidine hydrochloride tablets after patent and regulatory barriers ceased to block entry. Publicly relevant generic manufacturers have included companies such as:
The available commercial record does not support treating U.S. Patent 4,051,141 as the basis for an active modern Paragraph IV dispute. Any ANDA challenge directed to this patent would have been rendered commercially ineffective by expiration. Paragraph IV statusA Paragraph IV certification asserts that a listed patent is invalid, unenforceable, or will not be infringed. Because U.S. Patent 4,051,141 expired in 1994:
What other patents are relevant to ticlopidine?The ticlopidine patent estate included later patents and applications directed to related subject matter, including pharmaceutical compositions, crystalline or salt forms, preparation methods, and dosage-form technology. A commonly cited later U.S. patent in the ticlopidine landscape is U.S. Patent 4,591,592. That patent is associated with later ticlopidine-related subject matter and had a term extending beyond U.S. Patent 4,051,141. Its expiration did not create a current barrier because it also expired. Relevant patent categories
The commercial distinction is important. A process patent could have been relevant to a particular manufacturing route without preventing production through a different route. A formulation patent could have covered a specific composition without covering the active ingredient itself. Neither category changes the expired status of claim 2 of U.S. Patent 4,051,141. What formulations are protected by U.S. Patent 4,051,141?The patent does not claim a specific formulation. Its claims are compound claims and salt claims. A ticlopidine hydrochloride tablet could fall within claim 2 because it contains the claimed salt, but the patent’s legal coverage would arise from the chemical compound rather than from tablet architecture. The claim does not require:
The formulation itself could have been subject to separate patents, but those rights would require independent claim analysis. They cannot be inferred from the compound claims. Does U.S. Patent 4,051,141 cover clopidogrel or prasugrel?No. U.S. Patent 4,051,141 does not provide a current patent basis for clopidogrel or prasugrel. Ticlopidine versus clopidogrel
Clopidogrel has a different substitution pattern and stereochemical structure. Its commercial patent estate was based on separate patents, including patents covering the active enantiomer and pharmaceutical compositions. Prasugrel and ticagrelor are also structurally distinct and are not covered by the claims provided. How strong is the patent estate for U.S. Patent 4,051,141 today?The patent estate has no current exclusionary strength in the United States because the relevant patents have expired. Historical strengthHistorically, the estate was strong against direct manufacture or sale of ticlopidine because:
Current strengthCurrent strength is effectively zero for blocking U.S. ticlopidine entry because:
The remaining competitive barriers are product demand, manufacturing economics, FDA compliance, supply continuity, and clinical adoption. What generic launch risks exist for ticlopidine?The patent-related risk of a ticlopidine generic launch is low. The meaningful risks are regulatory and commercial. Regulatory risksA generic sponsor must address:
Commercial risksTiclopidine demand is limited because:
Patent expiration removes the exclusionary barrier but does not guarantee a commercially attractive launch. What manufacturing and intellectual-property barriers remain?No current patent barrier is apparent from U.S. Patent 4,051,141. Manufacturing barriers may remain in the following areas:
A manufacturer could protect process improvements through later patents or trade secrets. Those rights would need to be assessed independently from the expired 1970s compound patent. What is the geographic scope of the patent?U.S. Patent 4,051,141 had territorial effect only in the United States. Corresponding foreign patents or applications would have required separate analysis by jurisdiction. Patent expiry is also jurisdiction-specific. The U.S. expiration date does not establish the status of a European, Japanese, Canadian, or other national patent. Foreign family members may have had different:
For U.S. launch planning, the operative conclusion is that the named U.S. patent has expired. Key Takeaways
FAQs About U.S. Patent 4,051,141 and TiclopidineIs ticlopidine still protected by a U.S. compound patent?No. The compound patent represented by U.S. Patent 4,051,141 expired in 1994. Can a company manufacture ticlopidine hydrochloride in the United States?Yes, subject to FDA approval, current manufacturing requirements, applicable labeling obligations, and the absence of an independently enforceable later patent. Does claim 2 cover ticlopidine hydrochloride?Yes. Claim 2 covers the ticlopidine base and its pharmaceutically acceptable acid-addition salts, including the hydrochloride salt. Can U.S. Patent 4,051,141 be listed in a current Orange Book certification?It has no current blocking effect because the patent expired. An expired patent cannot support a present Paragraph IV litigation stay. Does the patent cover a method of preventing stroke with ticlopidine?The claims provided are compound claims, not treatment-method claims. Any method-of-use protection would have required separate claims in a separate patent or a distinct claim set. References
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Drugs Protected by US Patent 4,051,141
| 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: 4,051,141
| Foriegn Application Priority Data | ||
| Foreign Country | Foreign Patent Number | Foreign Patent Date |
| France | 73.03503 | Feb 1, 1973 |
International Family Members for US Patent 4,051,141
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Argentina | 217629 | ⤷ Start Trial | |||
| Austria | 338261 | ⤷ Start Trial | |||
| Austria | 350570 | ⤷ Start Trial | |||
| Austria | A577576 | ⤷ Start Trial | |||
| Austria | A67874 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
