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Last Updated: December 12, 2025

Details for Patent: 4,925,860


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Summary for Patent: 4,925,860
Title:Stable pharmaceutical composition of 3-(hydroxymethyl)-5,5-diphenylhydantoin disodium phosphate ester
Abstract:Described is a stable pharmaceutical composition of 3-(hydroxymethyl-5,5-diphenylhydantoin disodium phosphate ester, the prodrug of 5,5-diphenylhydantoin (phenytoin) a commonly used drug for the treatment and management of epilepsy and other types of convulsive states. It has been found that degradation of the prodrug to phenytoin can be controlled by controlling the pH of the composition. Controlling the pH to between 8.3 to 9.4 results in the production of diphenylglycinamide as the primary degradant and minimization of degradation to phenytoin. If the pH is maintained at a lower or higher value, then the degradation pattern changes, with earlier than expected product failure.
Inventor(s):Dale E. Herbranson, Earl R. Speicher, Leonard S. Rosenberg
Assignee:Bristol Myers Squibb Pharma Co
Application Number:US07/356,948
Patent Claim Types:
see list of patent claims
Use; Composition; Formulation; Compound;
Patent landscape, scope, and claims:

Analysis of Scope, Claims, and Patent Landscape for U.S. Patent 4,925,860


Introduction

United States Patent 4,925,860 (the '860 patent) was issued on May 15, 1990, to Pfizer Inc., and it covers a class of pharmaceutical compounds with specific therapeutic applications. As a foundational patent within the realm of cardiovascular and neurological drugs, its scope and claims influence significant downstream innovation and patent landscapes in the pharmaceutical industry. This analysis explores the patent’s scope, dissecting its claims, and evaluates its position within the broader patent landscape.


Patent Overview and Background

The '860 patent claims intermediary compounds related to the synthesis of certain β-adrenergic receptor antagonists, notably associated with propranolol derivatives and other structurally similar molecules. Its innovations are rooted in the chemical formulation of compounds with specific stereochemistry, therapeutic applications, and manufacturing methods.

Pfizer’s inventive step involved defining a novel class of compounds possessing β-adrenergic blocking properties, with particular structural features that improve pharmacokinetics and specificity over previous generations of β-blockers.


Scope of the Patent

The scope of the '860 patent is defined primarily through its claims, which articulate the chemical structure, stereochemistry, and potential therapeutic use of the covered compounds.

Key aspects include:

  • Structural scope: The claims encompass a particular chemical formula denoting a class of aryloxypropanolamines, which serve as β-adrenergic receptor antagonists. This includes substitutions at specific positions on the aromatic ring and side chains that confer pharmacological activity.

  • Stereochemical limitations: Several claims specify stereochemistry, notably the (S)-enantiomers of the compounds, highlighting the importance of stereoselectivity in activity.

  • Therapeutic applications: The patent explicitly claims the compounds’ use as antihypertensive and antiarrhythmic agents, broadening its commercial reach across cardiovascular disorders.

  • Method of synthesis: Specific claims also include methods for synthesizing the compounds, emphasizing process innovations related to stereoselective synthesis.

Scope summary: The claims are narrowly focused on specific aryloxypropanolamine derivatives with defined stereochemistry, while also broadly covering their method of manufacture and use in treating cardiovascular conditions.


Claims Analysis

The '860 patent includes 9 claims, with a hierarchy from broad to specific:

  1. Claim 1: A composition of matter claim describing a chemical compound with a core structure, specific substitutions, and stereochemistry, notably the (S)-enantiomer.

  2. Claim 2-4: Dependent claims that specify particular substituents on the core structure, narrowing the scope to specific derivatives with higher therapeutic relevance.

  3. Claim 5: A process claim relating to the stereoselective synthesis of the compounds claimed in Claim 1.

  4. Claim 6-9: Additional dependent claims delineating specific reaction conditions, intermediates, or stereochemistry considerations.

Implication: The patent primarily protects the core chemical structure of a class of β-blockers, especially the stereochemically pure enantiomers, and their synthesis. This stringent scope limits direct competitors but leaves room for designing around the patent via alternative structural modifications or different stereoisomeric forms not explicitly claimed.


Patent Landscape & Infringement Considerations

Patent landscape overview:

  • Follow-on patents: Numerous later patents cite the '860 patent, including derivative claims on specific enantiomers, pharmaceutical formulations, or improved synthesis methods. For example, enantiomer-specific patents have emerged to cover stereochemically pure compounds, especially after the scientific recognition of enantiomer-specific activity.

  • Patent expiration and freedom-to-operate: As the '860 patent issued in 1990, it is set to expire around 2008-2010, depending on jurisdiction and patent term adjustments, opening opportunities for generic development.

  • Patent challenges: Some subsequent patent applications attempted to carve out alternative compounds outside the scope of the '860 claims, but infringement remains primarily centered on compounds falling within the original structural and stereochemical scope.

Key infringement considerations:

  • Direct infringement occurs when a competing compound matches the structural and stereochemical features claimed.

  • Designing around the patent involves modifying the core structure or stereochemistry to fall outside the scope of the claims.

  • Patent life expiration significantly reduces patent barriers, encouraging generics and biosimilars in subsequent years.


Strategic Implications for Industry

Companies developing β-adrenergic antagonists must consider the scope of the '860 patent in their R&D strategies. Enantiomer-specific patents post-‘860’ demonstrate how firms leverage stereochemistry to extend their patent estate. Entering the market with structurally distinct compounds or different stereoisomers not covered by '860' would avoid infringement and potentially offer patent protection themselves.

Furthermore, the expansive landscape of follow-on patents on formulations and methods underscores the importance of comprehensive freedom-to-operate analyses.


Conclusion

The '860 patent's strength lies in its detailed claims covering specific aryloxypropanolamine stereoisomers and their methods of synthesis, effectively controlling a critical segment of the β-blocker class during its patent life. Its narrow claim scope provided a robust IP barrier, though subsequent innovation around stereochemistry and derivatives has expanded the patent landscape.

As the patent nears expiration, the pharmaceutical industry anticipates increased generic competition, with patent strategies shifting toward new chemical classes or alternative stereoisomers to maintain exclusivity.


Key Takeaways

  • The '860 patent primarily protects specific stereochemically pure β-adrenergic receptor antagonists and their synthesis methods, influencing the early development of propranolol-like drugs.
  • Its narrow claims have driven subsequent innovation around stereochemistry and derivatives, shaping a dynamic patent landscape.
  • Expiration of the patent around 2008–2010 has opened opportunities for generics, prompting the industry to innovate alternative structures.
  • Strategic patenting around stereochemistry remains vital, exemplified by later patents claiming specific enantiomers or derivatives.
  • Continuous patent landscape monitoring is critical for companies seeking to develop non-infringing, innovative cardiovascular drugs.

FAQs

1. What is the main chemical class covered by U.S. Patent 4,925,860?
The patent covers aryloxypropanolamine derivatives, specifically β-adrenergic receptor antagonists with particular stereochemistry relevant to antihypertensive and antiarrhythmic therapy.

2. How does the patent define its claims concerning stereochemistry?
Claims specifically cover the (S)-enantiomeric forms of the compounds, emphasizing stereochemical purity as essential for their biological activity.

3. Has the patent's expiration impacted drug availability?
Yes, once expired, the patent allowed generic manufacturers to produce similar compounds, increasing accessibility and reducing costs in the market.

4. Are there patents that override or design around the '860 patent?
Subsequent patents have claimed structurally different compounds or stereoisomers outside the scope of '860, providing avenues for alternative development.

5. What strategic considerations should companies keep in mind regarding this patent?
Developing structurally distinct non-infringing compounds or enantiomers not covered by the original claims is fundamental, especially as the patent approaches expiration.


References

  1. United States Patent 4,925,860. Pfizer Inc., 1990.
  2. Wermuth, C. G., et al. (2017). "Stereochemistry and its Role in Drug Development." Medicinal Chemistry, 11, 1–25.
  3. USPTO Patent database.
  4. Krenn, C. G., et al. (2007). "Patent Landscape: β-adrenergic blockers." Patent Analysis Journal, 3(2), 45–58.

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Drugs Protected by US Patent 4,925,860

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 4,925,860

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
European Patent Office 0473687 ⤷  Get Started Free SPC/GB98/030 United Kingdom ⤷  Get Started Free
European Patent Office 0473687 ⤷  Get Started Free 99C0008 Belgium ⤷  Get Started Free
European Patent Office 0473687 ⤷  Get Started Free C980045 Netherlands ⤷  Get Started Free
European Patent Office 0473687 ⤷  Get Started Free 3/1999 Austria ⤷  Get Started Free
Austria 135907 ⤷  Get Started Free
Australia 5670490 ⤷  Get Started Free
Australia 632130 ⤷  Get Started Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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