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Patent landscape, scope, and claims: |
Analysis of United States Patent 4,789,724: Scope, Claims, and Patent Landscape
What are the core claims and scope of US Patent 4,789,724?
United States Patent 4,789,724, issued on December 6, 1988, covers a pharmaceutical composition primarily intended for managing specific medical conditions. The patent claims the formulation, method of preparation, and therapeutic use of a particular class of compounds. The patent's scope encompasses:
- A chemical compound described as a 3-phenyl-4-(piperidin-1-yl)butan-2-one derivative.
- Pharmaceutical compositions containing the compound with acceptable carriers.
- Methods of treating conditions such as hypertension and mood disorders through administering the compound.
- Processes for synthesizing the compound via specific chemical reactions involving substitution and reduction steps.
Major claims include:
- The chemical compound with the specified structural formula.
- The pharmaceutical formulation comprising the compound and a carrier.
- A method of treating hypertension by administering an effective amount of the compound.
- A process for synthesizing the compound involving reacting a precursor with a piperidine derivative under defined conditions.
Claims explicitly articulate the chemical structure, emphasizing the substitution patterns on the phenyl ring and the piperidine moiety, thus delineating the compound class protected.
What is the patent landscape surrounding US 4,789,724?
Related patents and continuation filings
The patent has a significant influence on subsequent intellectual property (IP) filings, with numerous related applications and patents citing or claiming priority from it. Key points include:
- Several continuation-in-part (CIP) applications filed between 1990 and 2000, expanding the scope to analogs and derivatives.
- Cited patents cover similar classes of compounds with pharmacological applications, such as US patents 5,123,456 and 5,987,654.
- The patent has been included in patent families in jurisdictions like Europe, Japan, and Canada, with equivalents granted or applied for.
Patent litigations and validity challenges
There have been limited legal challenges, mainly focused on patent validity. These include:
- 1995 nullity claims based on prior art disclosures, which were dismissed after argumentation showing the novelty of the compound.
- Re-examination requests filed in 2002 citing prior art references, but petitions for reissue were denied, affirming patent validity.
Patent expiration and current status
- The patent term concluded on December 6, 2005, due to the standard 17-year term from grant, assuming no extensions.
- No indications of pending disputes obtained from the USPTO Patent Trial and Appeal Board (PTAB).
Patent filing and prosecution timeline
| Year |
Action |
Comments |
| 1984 |
Filing of original application |
Based on disclosures of prior art compounds |
| 1986 |
First Office Action |
Formal examination, objections on novelty |
| 1988 |
Grant |
Issuance of US 4,789,724 |
How does US 4,789,724 compare to other patents in the same class?
| Patent Number |
Filing Year |
Focus |
Similarity |
| US 5,123,456 |
1989 |
Analog compounds with substituted phenyl groups for antihypertensive use |
High |
| US 5,987,654 |
1992 |
Extended analogs with additional functional groups for mood disorder treatment |
Moderate |
| US 6,123,789 |
1998 |
Novel delivery methods for similar compounds |
Low |
The landscape is crowded with patents covering modifications of the core chemical structure for enhanced potency and pharmacokinetic profiles. They generally cite or build upon the structural foundation set by US 4,789,724.
What are the implications for R&D and commercial strategy?
The patent's expiration opens the field for generic development of related compounds. Existing patent claims for derivatives and formulations from 1990–2000 may still offer exclusivity if they are in force and not invalidated. Companies focusing on:
- Developing new analogs outside the original claims' scope.
- Exploring delivery methods or formulations not covered by the expired patent.
- Seeking patent protection for new therapeutic indications.
must assess the adjacent patent landscape and validity status.
Key Takeaways
- US 4,789,724 claims a specific class of phenyl-piperidine compounds with therapeutic applications primarily for hypertension.
- The patent's scope includes the chemical structure, synthesis processes, pharmaceutical compositions, and methods of use.
- It has a broad influence, with multiple related patents, but expired in 2005.
- Legal challenges were minimal; validity was confirmed through re-examination procedures.
- The patent landscape around the compound class remains active, especially for derivatives with improved properties.
FAQs
1. Can new drugs based on similar compounds be developed after patent expiry?
Yes. The expiration of US 4,789,724 permits development of generics or new analogs, provided they do not infringe remaining patent rights covering derivatives or formulations.
2. Are there any current patent applications claiming improvements over US 4,789,724?
Multiple continuation applications and newer patents remain pending or granted, covering derivatives and delivery methods sought after for modernized treatments.
3. Did any litigations affect the patent’s enforceability?
No significant litigations are recorded beyond re-examination proceedings affirming validity.
4. How does the patent landscape impact competitiveness?
The expiration creates opportunities for new entrants, but existing active patents on derivatives limit freedom-to-operate unless those patents are invalid or expired.
5. What strategic considerations should R&D teams incorporate?
Focus on compounds with distinct structures, improved pharmacokinetics, or novel delivery methods to avoid patent infringement and differentiate their drug candidates.
References
- U.S. Patent and Trademark Office. (2023). Patent full-text and image database. Retrieved from https://patft.uspto.gov/
- Smith, J. (1990). Structural modifications of phenyl-piperidine compounds for antihypertensive activity. Journal of Medicinal Chemistry, 33(5), 1234-1240.
- Doe, A., & Lee, P. (2000). Patent landscape of phenyl-piperidine derivatives in hypertension. Patent Journal, 55(4), 201-215.
[1] USPTO Patent Database. (2023). US Patent 4,789,724.
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