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Details for Patent: 4,092,315
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Summary for Patent: 4,092,315
| Title: | Novel crystalline forms of prazosin hydrochloride | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | The invention relates to novel and valuable crystalline forms of the hypotensive agent prazosin hydrochloride. The anhydrous alpha -form is preferred because it is relatively non-hygroscopic and hence possesses important advantages in handling and formulation. The polyhydrate form of prazosin hydrochloride is preferred because of its low, uniform rate of dissolution. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Ernest J. Bianco | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Pfizer Pharmaceuticals LLC | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US05/662,937 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Compound; Process; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 4,092,315: Scope, Claims, Expiration, and Prazosin Patent LandscapeUS Patent 4,092,315 protects a specific crystalline polymorph of prazosin hydrochloride, known in the patent as the crystalline alpha form. It does not broadly protect prazosin, prazosin hydrochloride, or all solid forms of the active ingredient. The patent also protects a narrowly defined manufacturing process using a C5-C7 alkanol or cycloalkanol, with dependent claims focused on isoamyl alcohol and a temperature of about 132°C. Issued May 30, 1978, the patent expired under the pre-URAA 17-year term on May 30, 1995.[1] Because the patent is expired, it presents no current US exclusivity barrier to generic prazosin, no enforceable patent basis for a new Paragraph IV action, and no current Orange Book protection. What drug and active ingredient does US Patent 4,092,315 cover?US 4,092,315 covers the crystalline alpha form of prazosin hydrochloride. The chemical name recited in the claims is:
This compound is prazosin hydrochloride, the hydrochloride salt of prazosin. Prazosin is an alpha-1 adrenergic receptor antagonist used primarily for hypertension and, in some markets and clinical settings, for other conditions including trauma-related nightmares. The patent is a solid-state and manufacturing patent. Its legal focus is the physical form of the hydrochloride salt, not the pharmacological mechanism or the underlying quinazoline compound class.
What does claim 1 of US 4,092,315 protect?Claim 1 is a product claim to the crystalline alpha form of prazosin hydrochloride, defined by a specified infrared spectrum in potassium bromide. The claim has two principal limitations:
The infrared spectrum is not merely descriptive background. It is the principal claim limitation distinguishing the alpha form from other physical forms, including hydrates, solvates, amorphous material, and potentially other prazosin hydrochloride polymorphs. Why the infrared limitation mattersCrystalline polymorph claims commonly use an analytical signature to define the claimed form. In this patent, the signature is an IR spectrum measured in potassium bromide and expressed in microns. The listed absorption bands include the following values:
The claim does not expressly state a tolerance for peak position, intensity, sample preparation, instrument resolution, or permitted missing or additional peaks. Those issues would have been relevant in a historical infringement dispute involving a marginally different analytical result. A product would generally need to satisfy both the chemical identity and the claimed alpha-form fingerprint. Prazosin hydrochloride in a different polymorphic form would not automatically fall within claim 1. How broad is claim 1 compared with claims 2 through 4?Claim 1 is the broadest claim because it covers the alpha-form product regardless of how it was manufactured. Claims 2 through 4 are process claims and narrow the scope to specified preparation conditions.
Claim 2 appears to depend on claim 1 even though it is drafted as a process claim. The wording links the process to preparation of the product of claim 1. The typographical error in "whrein" does not materially affect the technical subject matter. What process is protected by claim 2?Claim 2 requires all of the following:
The solvent limitation is important. The claim does not cover every solvent system capable of producing the alpha form. It identifies a limited class of alcohol solvents by carbon number and chemical type. Examples potentially within the literal solvent class include:
The phrase "about 5 to 7 carbon atoms" introduces a claim-construction issue concerning the permissible range. Solvents materially outside the C5-C7 range would present a stronger noninfringement position, subject to any doctrine-of-equivalents analysis applicable at the time of the patent. What do claims 3 and 4 add to the patent?Claim 3 limits claim 2 to isoamyl alcohol. Isoamyl alcohol is a branched C5 alcohol and is also known as 3-methyl-1-butanol or isopentyl alcohol. Claim 4 further limits the process to heating the isoamyl alcohol system at approximately 132°C. It is narrower than claim 3 because it adds a specific operating temperature. The dependent claims create clear process design-around options:
The process claims therefore have substantially narrower practical scope than the product claim. When did US Patent 4,092,315 lose exclusivity?US Patent 4,092,315 expired on May 30, 1995. The patent issued in 1978, when US patent terms for this type of application were generally calculated as 17 years from issuance. The application predates the Uruguay Round Agreements Act transition that changed the standard US term to 20 years from the earliest effective nonprovisional filing date.[1]
No patent term extension or patent term adjustment can restore an expired patent to enforceability. The original patent also predates the modern Hatch-Waxman framework governing many Orange Book-listed drug patents. What patents protect prazosin beyond US 4,092,315?The broader historical prazosin patent estate would have included several potential categories:
US 4,092,315 is distinct from a basic compound patent. It does not claim all prazosin derivatives, all prazosin salts, or all therapeutic uses of prazosin. Its contribution is the alpha crystalline form and a process for producing that form. The supplied record does not establish a complete worldwide patent family or identify every historical US patent covering prazosin. The reliable conclusion from US 4,092,315 itself is that the patent is a later-stage solid-state patent layered over the underlying active ingredient. What is the Orange Book status of US Patent 4,092,315?US 4,092,315 cannot currently provide Orange Book patent exclusivity because it expired in 1995. Prazosin hydrochloride products have been marketed as prescription capsules, including the historical Minipress product and generic equivalents. A generic applicant seeking approval today would not face a live patent claim from US 4,092,315. The Orange Book generally identifies patents submitted by approved applicants that claim the drug substance, drug product, or approved method of use. Even where an expired patent remains visible in historical regulatory records, expiration eliminates its ability to block approval or commercial launch.[2]
Which companies challenged or relied on this patent?A complete litigation and Paragraph IV history cannot be inferred from the patent claims alone. The patent issued before the modern Hatch-Waxman litigation regime and expired before current generic prazosin competition became the primary regulatory framework. The practical legal position is clear:
No current patent litigation can extend the term of US 4,092,315. How strong is the patent estate for prazosin?The patent estate is commercially weak today because the relevant patents are historic and the active ingredient is generic. During the patent term, US 4,092,315 had meaningful value as a solid-state barrier if the marketed product used the alpha form. Its strength depended on the ability to establish the polymorph through IR testing and to prove that a competing product was the claimed form.
The product claim would have been more difficult to design around than claims 2 through 4. A competitor could avoid the process claims by using a different solvent or crystallization method, but it would need to avoid producing the claimed alpha form to avoid claim 1. What generic entry risks exist for prazosin?Current generic entry risk is not a patent risk arising from US 4,092,315. The relevant issues are regulatory, manufacturing, quality, and commercial. A generic prazosin applicant would generally need to address:
The expired patent may still have technical relevance. A manufacturer producing the same crystalline form may use the patent disclosure as historical process knowledge, but it cannot be sued for practicing the expired claims. Does prazosin face biosimilar risk?No. Prazosin is a chemically synthesized small molecule, not a biologic. The relevant competitors are generic drug manufacturers, not biosimilar applicants. The FDA pathway is therefore the ANDA pathway under section 505(j) of the Federal Food, Drug, and Cosmetic Act, rather than the biosimilar pathway under section 351(k) of the Public Health Service Act.[3] What manufacturing and geographic barriers remain?US 4,092,315 provides no current geographic barrier in the United States. Its US rights expired in 1995. Foreign equivalents, if any, would have required separate national filings and would have had separate expiration dates. A US patent cannot block manufacture, importation, sale, or use outside the United States. Nor can a foreign patent create a current US restriction after the US patent has expired. Any remaining manufacturing barrier is operational rather than patent-based. It may include:
What is the commercial impact of US Patent 4,092,315?The patent has no current direct revenue exposure for the originator because it cannot prevent generic sales. Its historical commercial role was to protect a selected crystalline form of prazosin hydrochloride after the underlying compound technology had been developed. For an investor or licensing party, the patent should be valued as:
No current revenue forecast should attribute protected sales to this patent. Key Takeaways
FAQsIs prazosin hydrochloride the same as the alpha form in US Patent 4,092,315?No. Prazosin hydrochloride identifies the chemical salt. The patent covers one specific crystalline form of that salt, identified as the alpha form by its IR spectrum. Could a different prazosin polymorph avoid claim 1?Potentially. A different polymorph that does not meet the claim's chemical and IR-spectrum limitations would have a strong noninfringement position against claim 1, subject to claim construction and equivalents analysis. Does US Patent 4,092,315 cover prazosin capsules?Not expressly. The claims cover the crystalline active pharmaceutical ingredient and a process for producing it. They do not recite a capsule, excipient system, dosage strength, or finished pharmaceutical composition. Can a company use the isoamyl-alcohol process disclosed in the patent?Yes, because the patent expired in 1995. The process disclosure may still be technically useful, but the expired claims cannot be enforced. Does the patent support a current royalty or licensing program?No. An expired US patent generally cannot support ongoing patent exclusivity or a new royalty claim based solely on practicing the claimed invention. References
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Drugs Protected by US Patent 4,092,315
| 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 |
International Family Members for US Patent 4,092,315
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Argentina | 210937 | ⤷ Start Trial | |||
| Australia | 2244377 | ⤷ Start Trial | |||
| Australia | 506937 | ⤷ Start Trial | |||
| Belgium | 851878 | ⤷ Start Trial | |||
| Bulgaria | 29724 | ⤷ Start Trial | |||
| Canada | 1068269 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
