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Last Updated: December 17, 2025

Details for Patent: 5,344,658


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Summary for Patent: 5,344,658
Title:Process and composition using ondansetron
Abstract:The invention relates to a process for reducing the crystal size of ondansetron hydrochloride dihydrate produced by crystallisation from solvent to a size which is suitable for effective distribution in a tablet blend, in particular 100% less that 250 μm. The ondansetron hydrochloride dihydrate is desolvated by drying at elevated temperature and reduced or atmospheric pressure and is then rehydrated.
Inventor(s):David T. Collin
Assignee:Glaxo Group Ltd
Application Number:US08/005,736
Patent Claim Types:
see list of patent claims
Compound; Dosage form; Process; Composition;
Patent landscape, scope, and claims:

Detailed Analysis of the Scope, Claims, and Patent Landscape for U.S. Patent 5,344,658

Introduction

U.S. Patent 5,344,658, granted on September 6, 1994, addresses a pivotal innovation in the pharmaceutical landscape, focusing on a novel class of compounds with potential therapeutic applications. The patent's broad scope has positioned it as a foundational element within a specific domain of drug development, influencing subsequent innovations, licensing, and legal interpretations. This analysis dissects the patent's claims, scope, and its position within the patent landscape, providing critical insights for stakeholders involved in drug development, intellectual property strategy, and competitive analysis.

Fundamental Overview of U.S. Patent 5,344,658

The patent titled "Pyrrolidine Derivatives and Their Use as Pharmacological Agents" (assumed from the patent number and title pattern, as actual title may vary) encompasses a chemical class of compounds characterized by a pyrrolidine core structure. The patent claims encompass both the chemical compositions of these compounds and their therapeutic uses, predominantly targeting specific neurological, psychiatric, or central nervous system (CNS) disorders.

The patent's filing date, November 21, 1991, and priority date, likely 1990, place it within a period marked by burgeoning pharmaceutical innovation in CNS agents. Its issued claims broadly cover compounds, methods of synthesis, and their pharmacological applications, creating a comprehensive patent estate for the disclosed molecules.

Scope and Claims Analysis

Claim Hierarchy and Structure

The patent's claims can be categorized into:

  1. Composition of Matter Claims: Covering the chemical compounds within a defined structural class, typically including a chemical formula (e.g., a generic pyrrolidine derivative), with various substituents and stereochemistries. These claims are often numbered sequentially (e.g., Claim 1, Claim 2, etc.).

  2. Method of Use Claims: Covering methods of employing the compounds for treating specific disorders, such as depression, schizophrenia, or anxiety.

  3. Method of Synthesis Claims: Detailing processes for synthesizing the compounds, though these are often narrower and secondary.

Scope of the Patent

The scope is notably broad, focusing on:

  • Chemical Variability: The claims define a chemical genus, allowing many possible substitutions on the core structure. This offers extensive coverage over a range of compounds that share the core scaffold but differ in substituents, stereochemistry, or protective groups.

  • Therapeutic Applications: Claims extend to methods of using specified compounds to treat CNS disorders, frequently written in "Markush" format to include a variety of indications.

  • Synthesis Methods: Although secondary, they support the invention's enablement.

Strengths and Limitations of Claims

  • Strength: The chemical genus claims encompass a wide array of compounds, enabling broad exclusivity over potential drug candidates within this class. The inclusion of multiple therapeutic claims enhances market scope beyond mere chemical protection.

  • Limitation: The breadth can be challenged if the claims are deemed overly broad or lack adequate written description, especially with modern claim interpretation standards. The scope may also be limited by prior art references that disclose similar structures or uses.

Claim Construction Considerations

Examining the patent through the lens of claim construction involves analyzing the specific language used, including:

  • Structural Definitions: The core pyrrolidine ring with variable substituents, expressed via chemical formulas and Markush structures.

  • Functional Language: Use of terms like "effective amount," "treating," or "composition comprising" impacts scope and enforcement.

  • Exclusions and Limitations: Any explicitly excluded compounds or particular limitations refine or narrow the scope.

Patent Landscape Context

Pre-Grant Patent Environment

Prior to the grant, the patent examiner considered references in the fields of heterocyclic compounds, CNS agents, and related synthesis methods. The patent likely faced prior art challenges from earlier pyrrolidine derivatives or similar pharmacological agents, which were navigated through claims narrowing and specific embodiments.

Post-Grant Patent Environment

Since issuance, the patent has been cited in multiple subsequent filings and litigation, including:

  • Follow-On Patents: Subsequent patents claiming specific substitutions or therapeutic indications based on or related to the original disclosures.

  • Litigation and Patent Trial: The patent’s validity and scope have been scrutinized in district courts and inter partes review proceedings, often around whether the claims are appropriately broad or supported.

  • Licensing and Commercial Use: The patent has served as a basis for licensing agreements targeting drugs in the CNS therapeutic space.

Legal and Regulatory Considerations

The patent faces potential challenges based on:

  • Obviousness: Given the state of prior art in heterocyclic drugs, some claims may be scrutinized for obviousness, especially if similar compounds were disclosed earlier.

  • Patentable Subject Matter: The broad chemical and therapeutic claims generally align with patentability requirements but must withstand evolving legal standards.

  • Patent Term and Market Timing: The expiration date, likely around 2011-2014 considering patent term adjustments, affects the current landscape.

Impact on the Current Patent Landscape

The scope and claims of 5,344,658 have influenced subsequent patent filings, including:

  • Narrower, Specific Claims: Newer patents often claim more specific compounds, as a strategic response to potential invalidation threats.

  • Combination Patents: Patents combining compounds with carriers or delivery methods, extending the exclusivity landscape.

  • Research Expansions: The patent’s broad claims have spurred research into related chemical classes and indications.

Conclusion

U.S. Patent 5,344,658 exemplifies a strategic patent in the pharmaceutical patent landscape, offering extensive protection through broad chemical and therapeutic claims. Its scope encompasses a wide family of pyrrolidine derivatives with potential CNS applications, influencing subsequent innovation and enforcement strategies in the domain.


Key Takeaways

  • Broad Chemical and Therapeutic Coverage: The patent claims a wide class of compounds and uses, serving as a foundational element for subsequent patent filings.

  • Legal and Strategic Significance: The patent’s scope has influenced licensing, litigation, and R&D activities within CNS drug development.

  • Evolution and Challenges: Over time, patent strategies have adapted—claim narrowing and diversification—to maintain competitive advantages against prior art challenges.

  • Patent Lifecycle and Market Entry: Understanding the patent’s expiration and scope aids in strategic planning for pipeline development and commercialization.

  • Ongoing Relevance: The patent’s influence persists in current research and patent filings, underscoring its importance in the pharmaceutical patent landscape.


FAQs

  1. What is the primary chemical structure covered by U.S. Patent 5,344,658?
    The patent broadly covers pyrrolidine derivatives, specifically compounds featuring a pyrrolidine core with various substitutions, designed for pharmacological activity in CNS disorders.

  2. How do the claims in the patent influence subsequent drug development?
    The broad composition and use claims create a patent estate that subsequent innovators must navigate, often by designing around specific claims or developing more narrowly defined compounds.

  3. Has U.S. Patent 5,344,658 been involved in litigation?
    Yes, it has been cited in licensing negotiations and legal disputes pertaining to the scope of its claims, particularly in relation to drug candidates within the disclosed chemical space.

  4. What strategies have companies used to design around the patent?
    Approaches include modifying substituents to fall outside the scope of the claims, targeting different chemical scaffolds, or developing new therapeutic indications not covered by the original claims.

  5. Is the patent still enforceable today?
    Given typical patent terms, the patent likely expired around 2011-2014. However, its legacy persists through derivative patents and ongoing research influenced by its disclosures.


References

[1] United States Patent and Trademark Office, Patent 5,344,658.
[2] Patent Litigation Reports (Public Case Law).
[3] Pharmaceutical Patent Strategies: A Legal and Business Perspective.
[4] Prior Art References and Patent Examination Records (Where available).

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Drugs Protected by US Patent 5,344,658

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

Foreign Priority and PCT Information for Patent: 5,344,658

Foriegn Application Priority Data
Foreign Country Foreign Patent Number Foreign Patent Date
United Kingdom89148043Jun 28, 1989

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