Details for Patent: 5,504,207
Summary for Patent: 5,504,207
| Title: | Process and intermediate for the preparation of terazosin hydrochloride dihydrate | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | A process for the preparation of 1-(4-amino-6,7-dimethoxy-2-quinazolinyl)-4-(2-tetrahydrofuroyl)piperazine hydrochloride (terazosin hydrochloride dihydrate comprises the steps of reacting 4-amino-2-chloro-6,7-dimethoxy-quinazoline with N-(2-tetrahydrofuroyl)piperazine in an anhydrous polar organic solvent in the absence of an added acid scavenger to produce anhydrous 1-(4-amino-6,7-dimethoxy-2-quinazolinyl)-4-(2-tetrahydrofuroyl)piperazine hydrochloride (Form IV) and thereafter converting the product of that step to 1-(4-amino-6,7-dimethoxy-2-quinazolinyl)-4-(2-tetrahydrofuroyl)-piperazine hydrochloride dihydrate. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Anthony Mannino, Rodger F. Henry, Wayne R. Heitmann, Bruce W. Horrom | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Abbott Laboratories | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US08/324,635 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Compound; Process; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 5,504,207: Terazosin Hydrochloride Form IV Claims, Scope, Expiration, and Patent LandscapeUS Patent 5,504,207 protects a manufacturing process for terazosin hydrochloride dihydrate and separately claims the anhydrous Form IV crystalline modification of terazosin hydrochloride. The patent covers terazosin, marketed by Abbott Laboratories as Hytrin, an alpha-1 adrenergic receptor antagonist used for hypertension and benign prostatic hyperplasia. The patent issued on April 2, 1996, and its 20-year term expired in 2013, subject to any applicable patent-term adjustment or pediatric extension. It does not create a current US barrier to generic terazosin entry. The patent is important historically because it addresses both process control and solid-state form control. Its principal technical limitation is the requirement to produce Form IV under specified reaction conditions: an anhydrous polar organic solvent, no added acid scavenger, and a reactant ratio of 4-amino-2-chloro-6,7-dimethoxyquinazoline to N-(2-tetrahydrofuroyl)piperazine of 1 to no more than 1.2. Claim 4 independently protects Form IV by its powder X-ray diffraction pattern. What drug and chemical substance does US Patent 5,504,207 cover?US Patent 5,504,207 covers terazosin hydrochloride, chemically identified as 1-(4-amino-6,7-dimethoxy-2-quinazolinyl)-4-(2-tetrahydrofuroyl)piperazine hydrochloride. The claimed final dosage-form-relevant material is the hydrochloride dihydrate. Terazosin has the following commercial and regulatory identifiers:
The patent is directed to a particular salt and solid-state form rather than to every possible terazosin composition. Its claims should be read against earlier terazosin compound and pharmaceutical-composition patents, which may have expired earlier than US 5,504,207. What are the independent claims in US Patent 5,504,207?The patent has two material claim categories. Claim 1: Process claimClaim 1 covers a process comprising:
Every listed process limitation matters. A process using excess piperazine above the claimed ratio, an aqueous solvent, an added acid scavenger, or a route that does not pass through Form IV may fall outside the literal scope of claim 1. The claim is narrower than a general process for making terazosin. It does not cover every synthetic route to terazosin hydrochloride dihydrate. It covers the specified route and sequence. Claim 4: Form IV product claimClaim 4 covers anhydrous Form IV crystalline terazosin hydrochloride characterized by principal powder X-ray diffraction peaks at:
Claim 4 is materially different from claim 1. It is not limited to the patented manufacturing route. A party that independently produces Form IV through another process could, during the patent term, face a claim 4 issue even if its process avoided claim 1. The claim requires the claimed crystalline form to be identified by the stated XRPD characteristics. The legal and technical analysis would normally compare the accused material’s diffraction pattern with the claimed peak positions, tolerances, and the patent’s characterization methodology. What does claim 1 protect in technical terms?Claim 1 protects a controlled crystallization and salt-isolation sequence. The starting quinazoline is 4-amino-2-chloro-6,7-dimethoxyquinazoline. The second reactant is N-(2-tetrahydrofuroyl)piperazine, also described in the claim text as N-(2-tetrahydrofuroyl)piperzine. The reaction substitutes the chlorine atom at the 2-position of the quinazoline ring with the piperazine derivative, producing terazosin hydrochloride in Form IV. The process has four commercially relevant control points:
These limitations distinguish the process from conventional nucleophilic aromatic substitution routes that use an excess of amine, water-containing solvent systems, or bases such as tertiary amines or inorganic carbonates. Which solvents are covered by claim 2?Claim 2 lists the following solvent categories:
The listed categories include solvents such as lower alcohols, ether-alcohols, selected glycol ethers or related diethers, and lower ketones, provided the solvent is anhydrous and otherwise satisfies the claim. The solvent limitation is cumulative. A solvent may fall within one of the named chemical classes but still fail the claim if the reaction is not conducted under anhydrous conditions or if an added acid scavenger is used. What solvent is identified in claim 3?Claim 3 identifies methoxyethanol. The supplied claim text states, "The process of claim 3 wherein said anhydrous polar organic solvent is methoxyethanol." That dependency appears to contain a drafting or transcription error because claim 3 cannot depend on itself. The intended dependency is likely claim 2. The apparent error does not automatically invalidate the underlying disclosure. In a litigation setting, the patent file history, issued patent image, certificate of correction, and claim-construction record would control the legally operative language. The technical limitation is clear: methoxyethanol is the specified solvent. How broad is the Form IV crystalline-form claim?Claim 4 is narrower than a claim covering all terazosin hydrochloride polymorphs but broader than a route-specific process claim. It covers anhydrous Form IV identified through a set of XRPD peaks. The claim does not expressly require a particular particle size, morphology, bulk density, purity level, residual solvent profile, or manufacturing method. Those characteristics may matter for distinguishing Form IV from other forms in practice, but they are not stated as independent claim limitations. The key infringement question would be whether the accused batch exhibits the claimed principal peaks within the stated ±0.2° 2-theta tolerances. An expert comparison would need to account for instrument calibration, sample preparation, radiation source, preferred orientation, polymorphic mixtures, and whether the accused sample is genuinely anhydrous. A mixture containing Form IV may raise separate questions. The claim does not state a minimum percentage of Form IV or define whether a mixture with another polymorph is covered. That issue would depend on claim construction and the analytical evidence. Does US Patent 5,504,207 cover terazosin hydrochloride dihydrate itself?Claim 1 covers a process that ends with terazosin hydrochloride dihydrate. It does not, based on the supplied claims, independently claim the dihydrate as a composition of matter. Claim 4 claims anhydrous Form IV, not the dihydrate. The patent therefore has a split structure:
When did US Patent 5,504,207 expire?The patent issued in 1996. Under the modern patent-term rule, a nonprovisional US application filed on or after June 8, 1995 generally receives a term of 20 years from the earliest effective nonprovisional filing date, subject to patent-term adjustment and applicable extensions. Earlier applications may be governed by the former 17-year-from-issue regime. US 5,504,207 is reported in US patent databases with an expiration date in 2013. Any final freedom-to-operate analysis should use the USPTO patent record and the patent’s term adjustment data rather than calculating only from the issue date. FDA Orange Book patent listings may show a separate pediatric-extension date if the product received a qualifying six-month extension.
The patent cannot presently support a new US infringement action against a generic manufacturer for conduct occurring after expiration. Historical litigation or damages questions require analysis of the relevant pre-expiration conduct period. What is the Orange Book status of US Patent 5,504,207?The Orange Book is the FDA publication that identifies approved drug products and, where applicable, patents submitted by NDA holders for listed drug products. Patent listing and patent validity are separate issues. FDA listing does not establish that a patent is valid or infringed. The FDA also does not adjudicate most patent-infringement disputes. For terazosin, the relevant listed drugs are associated with Abbott’s Hytrin approvals, including capsule and tablet products. Generic applicants could address listed patents through Paragraph IV certifications, noninfringement or invalidity arguments, or Paragraph III certifications where applicable. Once the relevant patent term expired, the patent ceased to present a current Orange Book-based launch barrier. The regulatory significance of US 5,504,207 was therefore time-limited. It concerned manufacturing and solid-state form protection for the active pharmaceutical ingredient rather than a broad current exclusivity right for terazosin therapy. Were there Paragraph IV challenges to the patent?A Paragraph IV certification is an ANDA applicant’s statement that a listed patent is invalid, unenforceable, or will not be infringed by the proposed generic product. The certification can trigger patent litigation and, in some circumstances, a 30-month stay of FDA approval under the Hatch-Waxman statute. The public significance of US 5,504,207 should be assessed against the actual FDA Orange Book listing history and ANDA litigation records. The patent’s expiration means that any historic Paragraph IV dispute no longer affects present generic entry. The patent’s claim structure also creates a practical distinction:
No current US generic launch restriction arises from the expired patent. What other patents protected terazosin?Terazosin’s historical patent estate included earlier patents directed to quinazoline compounds, terazosin-related compositions, and pharmaceutical uses. The original compound and composition patents were distinct from US 5,504,207.
The relevant landscape must distinguish compound expiry from later process or polymorph patents. A generic could be free to market terazosin after the basic compound patent expired while still facing a later patent directed to a particular polymorph or manufacturing process. That distinction is central to small-molecule freedom-to-operate analysis. How strong is the patent estate for US 5,504,207?The patent had moderate historical strength for targeted manufacturing and solid-state protection, but limited breadth. StrengthsClaim 4 is a product claim. It could reach Form IV regardless of whether the accused manufacturer used the patented process. Product claims generally provide broader enforcement leverage than process claims when the claimed product can be reliably identified. Claim 1 also captures a commercially plausible manufacturing route. The no-acid-scavenger limitation and the controlled stoichiometric range may have distinguished the claimed process from earlier approaches. The XRPD limitations provide an objective analytical test. A diffraction pattern can support batch-level comparison, although interpretation remains sensitive to sample and instrument conditions. LimitationsClaim 1 is narrow because it requires all process steps and conditions. A manufacturer could potentially design around it by changing the solvent, using an acid scavenger, altering stoichiometry, avoiding Form IV, or converting through a different intermediate. Claim 4 is limited to the specific Form IV pattern. Other anhydrous polymorphs, hydrates, solvates, amorphous material, or mixtures may fall outside the claim depending on their analytical profile and claim construction. The patent is expired. Its current commercial strength is therefore zero as a blocking right, although it remains relevant to historical validity, infringement, damages, and patent-landscape analysis. What generic launch scenarios existed before expiration?Before expiration, a generic manufacturer had several potential strategies:
The strongest historical risk would have involved a manufacturer using the patented route and supplying Form IV terazosin hydrochloride. A manufacturer using a different route and a different final solid form would have had a stronger noninfringement position, subject to other patents and regulatory requirements. Did US Patent 5,504,207 create a biosimilar risk?No. Terazosin is a chemically synthesized small molecule, not a biologic. The relevant competition is generic competition under the ANDA pathway, not biosimilar competition under the Biologics Price Competition and Innovation Act. The relevant regulatory and IP issues were:
What licensing or settlement issues affected the patent?US 5,504,207 was associated with Abbott’s terazosin product franchise. The patent claims supplied do not establish a license, settlement, covenant not to sue, or authorized-generic arrangement. Patent ownership, licensing, and litigation settlement terms must be established from assignment records, court filings, FDA correspondence, or transaction disclosures. Because the patent has expired, any historic settlement may retain significance only for damages analysis, antitrust review, or the reconstruction of generic-entry timing. It does not create a current restriction on US manufacture or sale based on this patent alone. What geographic coverage did the patent have?US 5,504,207 had territorial scope only in the United States. It did not directly block manufacturing, sale, or importation in Europe, Canada, Japan, or other jurisdictions. A global freedom-to-operate review would require corresponding foreign family members, including applications covering:
Foreign rights may have had different filing dates, claim scope, prosecution outcomes, and expiration dates. The US expiration does not establish the status of related foreign patents. Key Takeaways
FAQsWhat is the chemical name of the drug protected by US 5,504,207?The drug is terazosin hydrochloride, chemically identified as 1-(4-amino-6,7-dimethoxy-2-quinazolinyl)-4-(2-tetrahydrofuroyl)piperazine hydrochloride. Does producing terazosin hydrochloride automatically infringe US 5,504,207?No. Claim 1 requires a specific process, and claim 4 requires the anhydrous Form IV crystal defined by the stated XRPD peaks. Other terazosin routes or solid forms may fall outside the supplied claims. Can a generic manufacturer use Form IV terazosin today?Yes, US 5,504,207 is expired. A current launch still requires review of any other relevant US patents, FDA requirements, manufacturing controls, and applicable regulatory exclusivities. Is Form IV the same as terazosin hydrochloride dihydrate?No. Form IV is claimed as an anhydrous crystalline modification. The dihydrate contains water of crystallization and is the product obtained after the conversion step in claim 1. Does this patent cover terazosin tablets and capsules?The supplied claims do not directly claim tablets or capsules. They concern the active ingredient’s preparation and crystalline form. Separate formulation, composition, or method-of-use patents would be needed to cover a finished dosage form. References
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Drugs Protected by US Patent 5,504,207
| 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 5,504,207
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Austria | 143959 | ⤷ Start Trial | |||
| Brazil | 1100705 | ⤷ Start Trial | |||
| Canada | 2143971 | ⤷ Start Trial | |||
| Germany | 69500064 | ⤷ Start Trial | |||
| Denmark | 0708104 | ⤷ Start Trial | |||
| European Patent Office | 0708104 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
