Details for Patent: 5,583,131
Summary for Patent: 5,583,131
| Title: | Aromatic-linked polyamine macrocyclic compounds with anti-HIV activity | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | PCT No. PCT/GB92/02334 Sec. 371 Date Aug. 18, 1994 Sec. 102(e) Date Aug. 18, 1994 PCT Filed Dec. 16, 1992 PCT Pub. No. WO93/12096 PCT Pub. Date Jun. 24, 1993Polyamine macrocyclic compounds, e.g. of 10 to 15 ring members and 3 to 6 ring amine nitrogens, linked through methylene groups to an aromatic moiety, show high selective activity against HIV. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Gary J. Bridger, Sreenivasan Padmanbhan, Renato T. Skerlj, David M. Thornton | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Genzyme Corp | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US08/244,863 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Composition; Compound; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Drug Patent 5,583,131: Claim Scope, Plerixafor Coverage, and Patent LandscapeUS Patent No. 5,583,131 is the foundational U.S. patent covering bicyclam and related bis-macrocyclic compounds with anti-HIV activity. Its claim set includes broad pharmaceutical-composition coverage, specific bicyclam chemical entities, metal complexes, acid-addition salts, and several substituted aromatic or heteroaromatic linkers. The patent is most closely associated with plerixafor, also known as AMD3100 and marketed by Genzyme/Sanofi as Mozobil. The patent issued on December 10, 1996. Its ordinary United States patent term ended December 10, 2013, subject to any applicable regulatory or pediatric extension. The patent therefore does not currently block generic manufacture or use in the United States. The patent remains commercially important because it defined the original chemical and intellectual-property platform for CXCR4 antagonists. What drug does US Patent 5,583,131 protect?US 5,583,131 protects a class of linked cyclic polyamines, particularly bis-macrocycles connected through aromatic or heteroaromatic methylene bridges. The principal structure is:
where:
The lead structure associated with the patent is the bicyclam compound: 1,1'-[1,4-phenylenebis(methylene)]-bis-1,4,8,11-tetraazacyclotetradecane This compound is commonly known as AMD3100 or plerixafor. Plerixafor is a small-molecule CXCR4 antagonist used with granulocyte colony-stimulating factor to mobilize hematopoietic stem cells for collection before autologous transplantation. The FDA approved Mozobil on December 15, 2008, for patients with non-Hodgkin lymphoma or multiple myeloma undergoing stem-cell collection. The approved indication is not HIV treatment, even though the patented compounds were originally claimed as anti-HIV agents (FDA, 2008). What are the main claim categories in US 5,583,131?The claims divide into two principal categories:
Claim 1 is the broadest claim. Claims 2 through 16 narrow the composition by specifying ring architecture or named active ingredients. Claims 17 through 35 identify individual chemical compounds or complexes. The patent does not claim a conventional tablet, capsule, injectable formulation, excipient system, dosage regimen, manufacturing process, or treatment method in the claim language supplied by the user. How broad is claim 1?Claim 1 has substantial chemical breadth but several structural limitations. Structural limitationsThe claim requires both cyclic polyamine termini to be identical. This excludes compounds in which the two macrocycles differ in ring size, nitrogen count, substitution pattern, or ring connectivity. The macrocycles must have:
The claim therefore reaches bicyclam, bis-triazacyclododecane, and related bis-polyaza macrocycles, but it does not cover every polyamine, crown ether, piperazine, diaza-crown, or mixed heteroatom macrocycle. Linker limitationsThe two macrocycles must be connected by an aromatic or heteroaromatic group through methylene substituents:
The claim excludes:
Nitrogen-substitution limitationThe ring amine nitrogens are required to be otherwise unsubstituted. This is an important design-around limitation. N-alkylated, N-acylated, N-benzylated, or otherwise substituted analogs may fall outside claim 1, depending on the exact location and nature of the substitution. The limitation does not necessarily exclude protonation or formation of an acid-addition salt. The dependent claims expressly identify acid-addition salt forms. Which claims most directly cover plerixafor?The claims most closely associated with plerixafor are the para-phenylene-linked bicyclam claims.
The core plerixafor structure is the free-base bicyclam. Commercial plerixafor is supplied as the hydrochloride salt. Claims 4 and related claims expressly identify the acid-addition salt form, while claim 1 provides broader composition coverage. What chemical structures are covered by claims 3 through 35?The named species cover several linker families. Phenylene-linked bicyclamsClaims 3 and 4 cover meta- and para-phenylene-linked bicyclams. The para-phenylene structure is the principal plerixafor-related species. Claims 17, 18, 19, 20, 32, 33, and 34 add substituted aromatic analogs, including:
Biphenyl and heteroaromatic linkersClaims 7, 24, 13, 28, 14, and 29 cover:
These structures introduce additional aromatic nitrogen atoms into the linker but preserve the macrocyclic polyamine termini. Pyridine and thiophene linkersClaims 10, 11, 12, 25, 26, and 27 cover:
Smaller triazacyclododecane macrocyclesClaims 21, 22, 30, and 31 cover compounds containing 1,5,9-triazacyclododecane units. These claims broaden the portfolio beyond the 14-membered tetraazacyclotetradecane bicyclam series. Metal complexesClaims 5, 6, and 23 cover bis-zinc and bis-copper complexes. These claims are chemically distinct from ordinary acid-addition salts. A metal complex may have different coordination, formulation, pharmacology, and regulatory characteristics from plerixafor hydrochloride. How do the composition claims differ from the compound claims?Claims 1 through 16 are composition claims. They require a pharmaceutical composition containing the relevant active compound and, in claim 1, require that the composition be active against HIV. Claims 17 through 35 are drafted as compound claims but depend on claim 1 as supplied. That drafting creates a formal category issue because a compound cannot literally depend on a pharmaceutical-composition claim without importing composition language. The original patent text and prosecution history control the legal effect of that dependency. The claims supplied contain apparent transcription errors, including:
Those errors should be resolved against the issued patent and certificate history before relying on a claim construction. What formulations are protected by US 5,583,131?The patent claims pharmaceutical compositions but does not, based on the supplied claims, require a particular dosage form or formulation technology. The claims therefore potentially reach compositions containing a covered active ingredient in forms such as:
The patent does not expressly require:
That distinction matters for later formulation patents. A later patent could protect an injectable concentration, stabilizer system, container, manufacturing process, or dosing regimen even though the original compound patent has expired. Such later rights would need separate claim-by-claim analysis. Did the patent claim a method of treating HIV or cancer?Not in the claims supplied. Claim 1 describes a pharmaceutical composition active against HIV. It does not recite administering the composition to a patient. The claim set therefore differs from a method-of-treatment patent that would require steps such as administering plerixafor to mobilize stem cells or treating an HIV-infected patient. The later clinical use of plerixafor for hematopoietic stem-cell mobilization is based on its CXCR4-antagonist pharmacology, not on the original HIV-composition claim language. The patent’s original therapeutic field and Mozobil’s approved field are therefore different. When did US Patent 5,583,131 lose exclusivity?The patent issued on December 10, 1996. For a U.S. patent subject to the pre-Uruguay Round patent-term rules, the ordinary term was 17 years from issuance. The ordinary expiration date was therefore: December 10, 2013 The FDA’s Orange Book listed US 5,583,131 for Mozobil. FDA’s product information identifies plerixafor injection as a prescription drug approved under NDA 022311 (FDA, 2008; FDA, n.d.). A pediatric exclusivity extension, if applicable to the listed product and patent, could extend enforceability beyond the ordinary patent expiration date. The commercially relevant protection period for the original U.S. product was nevertheless centered on December 2013, not on a current patent term. What was the Orange Book status of plerixafor?Mozobil was approved as a new molecular entity under NDA 022311. US 5,583,131 was the principal Orange Book patent associated with the product’s original chemical protection.
Because plerixafor is a small molecule, follow-on products use the abbreviated new drug application pathway rather than the biosimilar pathway under section 351(k) of the Public Health Service Act. Were there Paragraph IV challenges to plerixafor?A Paragraph IV certification would be the relevant ANDA mechanism for challenging an unexpired Orange Book patent. Once US 5,583,131 expired, the patent no longer presented a live patent barrier to a new ANDA applicant. The supplied record does not identify a specific Paragraph IV notice, ANDA filer, or litigation docket. No complete litigation conclusion can be drawn from the claims alone. The practical legal position is clear, however: a Paragraph IV challenge to the original compound patent would have been relevant before December 2013; after expiration, the patent could not support a conventional patent-infringement exclusion against a generic launch. Which companies challenged or commercialized plerixafor?The commercial history is more concentrated than the patent landscape.
The original patent was associated with the early bicyclam anti-HIV research program. Commercial value later shifted to stem-cell mobilization after the CXCR4 mechanism and clinical utility were established. How strong is the patent estate for plerixafor?Historical strengthThe patent was strong during its enforceable period because it combined:
The para-phenylene-linked bicyclam claims were particularly important because they captured the core plerixafor structure and its salt forms. Current strengthThe original patent has no remaining ordinary U.S. exclusionary value after expiration. Its current value is historical and evidentiary:
An expired patent cannot block a current generic launch, although it can remain relevant to validity, priority, inventorship, and prior-art disputes involving later patents. What design-around strategies would avoid the literal scope?A competitor seeking to avoid literal infringement could consider structural changes to one or more required elements:
These strategies would still require analysis of later patents and the doctrine of equivalents. They do not revive the expired patent, but they remain relevant to historical claim construction and to later patent families directed to CXCR4 antagonists. What manufacturing and intellectual-property barriers remain?The original patent does not claim a manufacturing process in the claims provided. Generic manufacturers therefore face process-development rather than composition-patent barriers. Relevant technical issues include:
For an ANDA, the key regulatory burden is demonstration of pharmaceutical equivalence and bioequivalence, together with manufacturing compliance. Plerixafor’s injectable dosage form can make manufacturing and analytical control more demanding than an ordinary immediate-release tablet, but those issues are distinct from patent exclusivity. How does plerixafor compare with competing CXCR4 antagonists?
The patent does not create biosimilar exposure because plerixafor is not a biologic. Competitive risk is therefore driven by generic small-molecule entry and alternative CXCR4-directed products, not by biosimilar substitution. What is the revenue exposure from expiration?US 5,583,131 was the principal historical U.S. compound patent for Mozobil. Its expiration removed the primary composition-based barrier to generic competition. The impact on revenue depends on:
No current revenue figure can be attributed to the patent without product sales and market-share data. The patent’s direct revenue protection in the United States ended with expiration, subject to any applicable extension. What is the geographic coverage of the patent family?US 5,583,131 provides U.S. rights only. Equivalent protection in Europe, Canada, Japan, and other jurisdictions depends on separately issued national or regional patents and their individual expiration dates. Patent families for pharmaceutical inventions often include:
The U.S. expiration date cannot be used as a substitute for foreign expiration analysis. A generic launch strategy must be assessed jurisdiction by jurisdiction, particularly in Europe, Canada, Japan, Australia, and emerging markets. Key Takeaways
FAQsIs plerixafor still protected by US Patent 5,583,131?No. The ordinary U.S. patent term ended December 10, 2013. Any later U.S. protection must be evaluated under separate patents. Does US 5,583,131 cover plerixafor hydrochloride?Yes, the para-phenylene-linked bicyclam species and acid-addition salt forms are expressly identified in the claim set supplied. Can a generic manufacturer rely on the expiration of US 5,583,131?Yes, expiration removes the original patent’s exclusionary effect. The manufacturer must still address any later patents, FDA requirements, and product-specific regulatory obligations. Is plerixafor subject to biosimilar competition?No. Plerixafor is a small molecule. Follow-on products use the ANDA pathway rather than the biosimilar pathway. Does the patent cover all CXCR4 antagonists?No. It covers a defined structural class of linked cyclic polyamines. Structurally unrelated CXCR4 antagonists can fall outside its literal scope. References
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Drugs Protected by US Patent 5,583,131
| 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: 5,583,131
| Foriegn Application Priority Data | ||
| Foreign Country | Foreign Patent Number | Foreign Patent Date |
| United Kingdom | 91/26677 | Dec 16, 1991 |
| PCT Information | |||
| PCT Filed | December 16, 1992 | PCT Application Number: | PCT/GB92/02334 |
| PCT Publication Date: | June 24, 1993 | PCT Publication Number: | WO93/12096 |
International Family Members for US Patent 5,583,131
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| European Patent Office | 0619813 | ⤷ Start Trial | CA 2009 00052 | Denmark | ⤷ Start Trial |
| European Patent Office | 0619813 | ⤷ Start Trial | C300425 | Netherlands | ⤷ Start Trial |
| European Patent Office | 0619813 | ⤷ Start Trial | SPC038/2009 | Ireland | ⤷ Start Trial |
| European Patent Office | 0619813 | ⤷ Start Trial | 10C0002 | France | ⤷ Start Trial |
| European Patent Office | 0619813 | ⤷ Start Trial | SPC/GB10/004 | United Kingdom | ⤷ Start Trial |
| Austria | 273964 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
