Details for Patent: 4,374,829
Summary for Patent: 4,374,829
| Title: | Aminoacid derivatives as antihypertensives | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | The invention relates to new carboxyalkyl dipeptide derivatives and related compounds which are useful as antihypertensives. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Elbert E. Harris, Arthur A. Patchett, Edward W. Tristram, Matthew J. Wyvratt | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Merck and Co Inc | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US06/235,335 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; Composition; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | US Drug Patent 4,374,829: Claim Scope, Enalapril Coverage, Expiration and Patent LandscapeUS Patent 4,374,829 is the foundational compound patent for enalapril and related N-substituted proline angiotensin-converting enzyme inhibitors. Its claims cover broad chemical genera, specific compounds including enalapril and enalaprilat, pharmaceutical compositions, and hypertension-treatment methods. The patent is expired and presents no current US enforcement barrier to generic enalapril or enalaprilat products. What drug does US Patent 4,374,829 protect?US 4,374,829 principally protects enalapril, enalaprilat, and structurally related ACE inhibitors.
The specific enalapril structure is: N-[1-(ethoxycarbonyl)-3-phenylpropyl]-L-alanyl-L-proline The patent’s claims also cover the corresponding active diacid, enalaprilat: N-(1(S)-carboxy-3-phenylpropyl)-L-alanyl-L-proline The S configuration at the carbon bearing the substituted carboxyl group is expressly recited in several claims. That stereochemical limitation is commercially important because enalapril’s ACE-inhibitory activity depends on the defined stereochemical configuration. What is the priority, filing and expiration history?The patent issued on February 22, 1983. Public pharmaceutical patent records and historical Orange Book listings associate the patent with enalapril and report an expiration date in 2000, generally identified as April 24, 2000. The patent therefore has no remaining enforceable US term.
The reported April 24, 2000 expiration reflects the pre-1995 US patent-term rules and the relevant effective filing date. The patent was issued before the modern 20-year-from-effective-filing-date regime applied to later-filed patents. FDA Orange Book records historically listed US 4,374,829 for enalapril maleate products, with the patent no longer presenting an exclusivity obstacle after 2000.[1] How broad are the independent compound claims?The broadest chemical protection appears in claims 1, 3, 7 and 9. These claims use Markush definitions to cover numerous substituent combinations rather than one commercial molecule. Claim 1: broadest compound genusClaim 1 covers compounds having the patent’s N-substituted dipeptide ACE-inhibitor scaffold, with:
The R1 definition is particularly expansive. It includes phenylpropyl-type groups, substituted phenylalkyl groups, aminoalkyl groups, heteroarylalkyl groups and sulfur-containing substituents. This is the provision that captures the structural diversity of the claimed ACE-inhibitor family. Claim 3: restricted structural genusClaim 3 narrows the invention by requiring:
This claim is closer to the commercially relevant ACE-inhibitor structures than claim 1. Claim 7: commercially focused genusClaim 7 limits the compound family further by specifying:
This framework captures the core structure of enalapril and related candidates while eliminating many of the remote substituent possibilities in claim 1. Claim 9: narrower proline-focused genusClaim 9 is the most commercially relevant genus before the individual compound claims. It requires:
Enalapril falls within this narrower proline-based genus. Which claims specifically cover enalapril and enalaprilat?Claims 26-31 identify individual compounds. These claims have greater product-specific value than the broad Markush claims because they expressly name defined chemical entities.
Claim 28 is the most direct claim to the commercial salt form. Enalapril maleate consists of enalapril combined with maleic acid. The salt claim does not merely cover the free base; it identifies a particular pharmaceutical salt of the stereochemically defined enalapril molecule. What formulation patents are protected by US 4,374,829?US 4,374,829 does not claim a narrowly defined tablet, capsule, coating, release profile or excipient system. Its formulation claims are composition claims requiring:
Claims 32-57 are composition claims. Claims 35-57 narrow those compositions to named compounds, including enalapril, enalapril maleate and enalaprilat-related compounds. The formulation scope is therefore functional and molecule-centered. It could have covered conventional oral pharmaceutical preparations containing a claimed compound, but it would not necessarily cover a later-developed formulation that used a different active ingredient or a materially different chemical entity outside the claims. There is no indication from the claims supplied that US 4,374,829 protects:
Those matters would require separate patent claims. What method-of-use patents are included?Claims 58-82 cover methods of treating hypertension by administering a claimed compound in a pharmaceutically effective amount. The method claims are broad in therapeutic purpose. They do not require:
The core method limitation is treatment of a patient with hypertension using a compound within the chemical scope of the earlier claims. Claims 60-82 identify specific compounds, including enalapril, enalaprilat-related compounds and enalapril maleate. Because the patent expired, these method claims no longer create a current US infringement risk. How strong was the patent estate for enalapril?The patent was commercially strong during its term because it combined several layers of protection in one document:
The strongest product-specific coverage was concentrated in claims 26-28. Claims 27 and 28 directly identify the active enalapril molecule and its maleate salt. The broad genus claims supplied fallback protection against close structural variants, while the composition and method claims extended the claim set beyond the isolated compound. The estate had less value after expiration because generic manufacturers could rely on the expired compound disclosure and commercial formulation knowledge without needing a license from the patent owner. What was the FDA and Orange Book status?Enalapril maleate was approved by FDA as an antihypertensive product and marketed by Merck as Vasotec. The product is a small-molecule prescription drug regulated through an NDA, with generic versions approved through the ANDA pathway. The FDA Orange Book historically listed US 4,374,829 against enalapril maleate products. Orange Book patent listings are relevant to the Hatch-Waxman framework because an ANDA applicant must address listed patents through certification or a statement that the patent does not apply. After expiration, the patent ceased to block approval or commercial launch.[1]
The patent does not create biosimilar risk because enalapril is a chemically synthesized small molecule. The relevant competitive pathway is generic substitution, not biosimilar interchangeability. Which companies challenged or competed against the patent?Enalapril generic competition developed through the ANDA framework as the patent approached expiration. The principal commercial issue was whether applicants could obtain approval and launch before or after the reported April 2000 expiration date. A complete company-by-company Paragraph IV chronology cannot be derived from the claim text alone. The patent’s current business significance is clear, however: any Paragraph IV dispute tied solely to US 4,374,829 is historical because the patent expired more than two decades ago. The relevant competitive set has included:
Because enalapril is an established generic product, current competition is generally driven by manufacturing economics, FDA compliance, product availability and contracting rather than by the expired compound patent. What manufacturing and intellectual-property barriers remain?US 4,374,829 no longer protects the active molecule, but a commercial entrant may still face non-patent barriers: API manufacturingEnalapril synthesis requires control of:
The patent disclosure may remain technically useful as prior art and a process reference, but it does not prevent practice of the disclosed chemistry after expiration. Regulatory requirementsAn ANDA applicant must establish pharmaceutical equivalence and bioequivalence for the relevant dosage form. Manufacturing sites, analytical methods, stability data, process validation and quality systems remain material approval requirements. Formulation and supplyCommercial risks can arise from:
These risks are separate from the expired patent estate. How does enalapril compare with other ACE-inhibitor patent estates?
Enalapril’s original estate was unusually broad because US 4,374,829 claimed the chemical genus, defined stereochemistry, individual molecules, salts, compositions and therapeutic methods. That breadth supported exclusivity during the 1980s and 1990s. It does not distinguish enalapril from other mature ACE inhibitors in the current US market because the core patent rights have expired. What is the current generic launch risk?The generic launch risk attributable to US 4,374,829 is effectively zero because the patent expired in 2000.
A freedom-to-operate analysis for a modern product should still review later US patents, foreign patents, process patents, formulation patents and regulatory exclusivities. Those rights are separate from the expired compound patent and cannot be inferred from US 4,374,829 alone. Key Takeaways
FAQsDoes US 4,374,829 cover enalapril maleate?Yes. Claim 28 expressly identifies the maleate salt of N-(1(S)-ethoxycarbonyl-3-phenylpropyl)-L-alanyl-L-proline, the chemical structure of enalapril maleate. Does US 4,374,829 cover enalaprilat?Yes. Claim 26 specifically recites N-(1(S)-carboxy-3-phenylpropyl)-L-alanyl-L-proline, corresponding to enalaprilat. Can a company manufacture generic enalapril in the United States?US 4,374,829 does not prevent manufacture or sale because it expired in 2000. A manufacturer must still satisfy FDA ANDA, cGMP, quality, labeling and supply requirements. Was enalapril protected by a biosimilar exclusivity period?No. Enalapril is a chemically synthesized small molecule. Generic competition proceeds through the ANDA pathway, not the biosimilar pathway under the Public Health Service Act. Do the method claims still block hypertension treatment with enalapril?No. The method claims in US 4,374,829 expired with the patent and are no longer enforceable in the United States. References
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Drugs Protected by US Patent 4,374,829
| 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 4,374,829
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Argentina | 231971 | ⤷ Start Trial | |||
| Austria | 6503 | ⤷ Start Trial | |||
| Australia | 530380 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
