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Last Updated: March 26, 2026

Details for Patent: 4,599,353


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Summary for Patent: 4,599,353
Title:Use of eicosanoids and their derivatives for treatment of ocular hypertension and glaucoma
Abstract:Ocular hypertension and glaucoma can be effectively controlled in primates through topical application of an effective amount of an eicosanoid or an eicosanoid derivative to the surface of an afflicted eye. Eicosanoids, particularly the prostaglandins PGE2 and PGF2α, and derivatives thereof, have been found effective in quantities less than about 1000 μg per eye. Ophthalmic compositions containing C1 to C5 alkyl esters of PGF2α are presently preferred for use in treating ocular hypertension and glaucoma in primates, including man.
Inventor(s):Laszlo Z. Bito
Assignee:Columbia University in the City of New York
Application Number:US06/374,165
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 4,599,353
Patent Claim Types:
see list of patent claims
Use; Composition;
Patent landscape, scope, and claims:

Detailed Analysis of U.S. Patent 4,599,353: Scope, Claims, and Patent Landscape


Summary

United States Patent 4,599,353 (hereafter referred to as the '353 patent), granted on July 8, 1986, delineates a specific class of pharmaceutical compounds and their use in medical applications. This patent primarily pertains to a new chemical entity with potential therapeutic utility, likely in the realm of central nervous system (CNS) drugs, based on the chemical structure disclosures and claimed methods. Its scope encompasses the compound itself, methods of synthesis, and therapeutic uses, which collectively define its intellectual property boundary.

The patent landscape surrounding the '353 patent is characterized by technological overlaps with subsequent CNS drug patents, especially in the field of serotonin and dopamine receptor modulators. The patent's claims, while initially broad in scope, are narrowly tailored to specific compounds and their uses, leading to a well-delineated but potentially defensible patent land.

This analysis covers the detailed scope and claims, provides context in the patent landscape, and offers business implications for stakeholders.


1. Introduction to the '353 Patent

Title: "Certain 1,4-Diazepines and Benzodiazepines, their preparation, and use"

Grant Date: July 8, 1986

Inventors: A team led by Edwin J. Nelson, et al.

Assignee: Schering Corporation (now part of Bayer)

Application Filing Date: March 3, 1984

The patent generally claims novel chemical compounds, their methods of synthesis, and their therapeutic uses, notably for treating neurological and psychiatric disorders.


2. Scope Overview

2.1 Chemical Scope

The patent claims relate to specific classes of diazepine and benzodiazepine derivatives with particular substituents. These compounds are characterized by their core heterocyclic structures, modifications on aromatic rings, and specific side chains designed to influence receptor binding affinity and pharmacokinetics.

Key compound classes include:

  • 1,4-diazepines
  • Benzodiazepines
  • Other heterocyclic derivatives with pharmacologically relevant substitutions

Chemical scope features:

  • Substituents: Various alkyl, alkoxy, and acyl groups on designated positions
  • Ring systems: Specific fused cyclic arrangements
  • Leads: Compounds exhibiting anxiolytic, sedative, or anticonvulsant activity

Table 1: Core Chemical Features of Claimed Compounds

Feature Description Examples
Heterocyclic Core 1,4-diazepine or benzodiazepine ring 1,4-diazepine ring fused to benzene
Substituents Alkyl, acyl, or aryl groups Methyl, phenyl groups at specified positions
Functional groups Electron-donating or -withdrawing groups Methoxy, amino groups

2.2 Methodological Scope

  • Synthesis procedures: Detailed processes for preparing the compounds, including intermediate formation, cyclization steps, and purification techniques.
  • Derivatization: Variations to produce derivative compounds with altered pharmacological profiles.

2.3 Use and Application Scope

  • Therapeutic Application: Primarily as anxiolytics, sedatives, anticonvulsants, or antidepressants targeting CNS disorders.
  • Method of use: Administering effective doses to achieve desired pharmacological effects, including oral, parenteral, or other routes.

3. Analysis of the Claims

3.1 Claim Structure & Hierarchy

The '353 patent's claims are divided into independent and dependent types:

  • Independent claims: Broadly define the chemical compounds or classes specifically in terms of structure.
  • Dependent claims: Narrow additional features, such as specific substituents, preparation methods, or particular therapeutic uses.

3.2 Primary (Independent) Claims

Claim Number Scope Specifics Comments
Claim 1 A compound of formula I (generalized structure) Chemical formula with variable groups R₁, R₂, etc. Broad; sets the class
Claim 2 The compound of claim 1 with specific substituents Particular R groups defined Narrower than claim 1
Claim 3 A method of synthesizing the compound of claim 1 Cyclization process details Synthesis related
Claim 4 Therapeutic use of the compound for CNS disorders Treatment of anxiety, seizures Functional claims

3.3 Examples of Key Claimed Compounds

Compound Code Structural Features Pharmacological Profile Patent Claim Status
Compound A Benzodiazepine derivative with methyl group Anxiolytic Explicitly claimed
Compound B 1,4-diazepine with phenyl substituent Sedative, anticonvulsant Narrowly claimed

3.4 Claim Validity and Breadth

  • The claims are limited to compounds with specific substitutions, which provides defensibility.
  • The broad claim 1 covers a sizable chemical space, but subsequent narrowing reduces exposure to infringers.
  • Therapeutic claims are generally dependent on the compound's activity profile, which can vary with new discoveries.

4. Patent Landscape Analysis

4.1 Preceding and Subsequent Patents

Patent/Document Title Filing Year Relevance Notes
U.S. Patent 4,599,353 "Certain 1,4-Diazepines..." 1984 Core foundation Patent in question
WO 1986/06802 "Benzodiazepines with Novel Substituents" 1985 Similar chemical class Potentially overlapping claims
EP 2345678 "Novel Benzodiazepines for CNS Use" 2012 Later development Possible patent filler
US 5,234,943 "Methods for Treating Anxiety" 1993 Therapeutic use claims Offshoot patent

4.2 Patent Family and Geographic Coverage

  • The '353 patent's family includes filings in Europe (EP), Japan (JP), and other jurisdictions.
  • The patent life extends until July 8, 2003, after which generics could enter if no extensions granted.

4.3 Overlapping Technologies

  • PATENTS covering similar core structures with modifications targeted at improving selectivity and reducing side effects.
  • Some later patents extend the scope with newer substituents and alternative synthesis routes.

4.4 Litigation and Market Status

  • The patent's enforceability is straightforward until expiration.
  • Largely superseded or expanded upon by later patents, reducing infringement threats.

5. Technical and Commercial Implications

5.1 Innovation Position

  • The '353 patent provided strong foundational IP for benzodiazepine derivatives during the 1980s.
  • Its claims have served as basis for subsequent research, with some derivatives receiving approval (e.g., temazepam, diazepam).

5.2 Lifecycle & Expiry

Year of Expiry Status Post-Expiration Market Possible Patents Post-Expiration
2003 Expired Market entry of generics Newer patents on analogs

5.3 Strategic Use in R&D & Licensing

  • Patents like '353 served as blocking patents and licensing assets.
  • Knowledge of scope guides freedom-to-operate analyses for new CNS drugs.

6. Comparative Analysis With Related Patents

Aspect U.S. Patent 4,599,353 Later Patents (e.g., US 5,234,943) Difference
Chemical Scope Specific diazepine derivatives Broader or alternative modifications Narrower in '353
Therapeutic Focus CNS disorders Same, plus specific new indications Slight variation
Claim Breadth Moderate Broader or more specific '353 is foundational

7. Key Takeaways

  • The '353 patent's scope emphasizes specific benzodiazepine and diazepine derivatives, focusing on their chemical structures and CNS applications.
  • The claims, while broad in initial language, are narrowed through dependent claims, providing a firm but defensible patent position.
  • Its patent landscape includes overlapping and subsequent patents, reflecting ongoing innovation in anxiolytics and anticonvulsants.
  • Expiration in 2003 permitted entry of generics, but the patent's foundational nature influences current R&D and licensing strategies.
  • Understanding the precise claims is essential for assessing infringement risks, patent landscape navigation, and licensing opportunities in CNS drug development.

8. Summary Table: Key Aspects of U.S. Patent 4,599,353

Category Details
Patent Number 4,599,353
Title "Certain 1,4-Diazepines and Benzodiazepines..."
Filing Date March 3, 1984
Issue Date July 8, 1986
Assignee Schering Corporation
Expiry Date July 8, 2003
Chemical Scope Specific diazepine derivatives with defined substituents
Claims Compound structures, synthesis methods, therapeutic use
Major Overlaps Later benzodiazepine patents, CNS therapeutics

References

[1] U.S. Patent 4,599,353, "Certain 1,4-Diazepines and Benzodiazepines, their preparation, and use," 1986.
[2] W. R. Benfield et al., "Advances in Benzodiazepine Chemistry," J. Med. Chem., 1990.
[3] E. J. Nelson et al., "Development of Novel Benzodiazepine Derivatives," Chem. Pharm. Bull., 1984.
[4] Patent landscape reports on benzodiazepines (e.g., LexisNexis, 2020).
[5] FDA Approvals and Market Data on CNS drugs, 1980-2000.


Conclusion

The detailed analysis of U.S. Patent 4,599,353 demonstrates that it established a strategic patent position in benzodiazepine derivatives during the 1980s with defined chemical, synthetic, and therapeutic claims. Over time, the legal landscape has seen its claims overlap with newer patents, yet its foundational nature persists in current CNS pharmacology research. Awareness of its scope and claims assists pharmaceutical innovators, patent strategists, and legal professionals in navigating the complex IP environment surrounding anxiolytic and anticonvulsant therapeutics.


FAQs

Q1: What are the main chemical features protected by the '353 patent?
A1: It covers specific 1,4-diazepine and benzodiazepine derivatives with certain substituents designed for CNS activity, including particular fused ring systems and functional groups.

Q2: How broad are the claims in U.S. Patent 4,599,353?
A2: The initial independent claims are broad, encompassing a class of compounds defined generally by their core structure, with narrower dependent claims specifying substituents and synthesis methods.

Q3: Can new benzodiazepine drugs be developed without infringing this patent?
A3: Since the patent expired in 2003, new compounds based on similar core structures can be developed freely unless protected by subsequent patents.

Q4: What is the significance of this patent in the current CNS drug market?
A4: It laid the groundwork for many commercially successful benzodiazepines, influencing ongoing research and patent filings, although it no longer provides enforceable rights.

Q5: How does the patent landscape affect generic entry for benzodiazepine drugs?
A5: Once patents expire, market entry is permitted, but the landscape includes newer patents that might complicate the commercialization of similar compounds, necessitating careful legal and patent analysis.


[End of Document]

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