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Details for Patent: 5,780,485
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Summary for Patent: 5,780,485
| Title: | Use of α1c specific compounds to treat benign prostatic hyperplasia | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | A method of treating benign prostatic hyperplasia in a subject which comprises administering to the subject a therapeutically effective amount of a compound which binds to a human alpha 1C adrenergic receptor with a binding affinity greater than ten-fold higher than the binding affinity with which the compound binds to a human alpha 1A adrenergic receptor, a human alpha 1B adrenergic receptor, and a human histamine H1 receptor, and, binds to a human alpha 2 adrenergic receptor with a binding affinity which is greater than ten-fold lower than the binding affinity with which the compound binds to such alpha 1C adrenergic receptor. Compounds meeting these criteria are provided. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Charles Gluchowski, Carlos C. Forray, George Chiu, Theresa A. Branchek, John M. Wetzel, Paul R. Hartig | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | H Lundbeck AS | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US08/415,681 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Drug Patent 5,780,485: Scope, Claims, Expiration, and Patent LandscapeUS Patent No. 5,780,485 is a method-of-use patent covering treatment of benign prostatic hyperplasia and inhibition of prostatic tissue contraction with antagonists showing specified receptor-selectivity ratios. The patent does not claim a defined chemical structure, dosage form, dose, salt, polymorph, formulation, or manufacturing process. Its enforceability ended when the patent term expired, making it a historical blocking patent rather than a current U.S. exclusivity barrier. The core limitation is functional: the antagonist must bind to the human α1C adrenergic receptor at materially higher affinity than specified comparator receptors, ion channels, or other targets. The broadest independent claims require at least a 48-fold or 26-fold α1C-over-α1B affinity differential. The patent therefore targeted highly α1C-selective adrenergic antagonists rather than conventional nonselective α1 blockers. What does US Patent 5,780,485 protect?The patent protects two related therapeutic concepts:
Claims 1 through 28 cover treatment of BPH. Claims 29 through 56 cover inhibition of prostatic tissue contraction. The two claim groups substantially duplicate each other, with the principal difference being the claimed therapeutic act.
The patent is a genus claim set. It is not limited to a named active ingredient. Any antagonist satisfying the claimed receptor-binding ratios and the therapeutic-use limitation could fall within the literal scope, subject to proof of the relevant affinity measurements. How do the receptor-affinity limitations work?The claims use relative binding affinity rather than an absolute potency threshold. In practical terms, the relevant comparison is generally expressed as: [ \text{Selectivity ratio} = \frac{\text{affinity for human α1C receptor}}{\text{affinity for comparator target}} ] Because binding affinity is commonly reported through inhibition constants such as Ki, the numerical relationship may be expressed inversely depending on the assay convention. A lower Ki ordinarily indicates stronger binding. The patent’s claim language must therefore be interpreted with the patent specification and assay methodology, not by treating the word “affinity” as an unqualified numerical variable. The principal thresholds are:
The claims also require administration of a “therapeutically effective amount” or, for the tissue claims, an “effective contraction-inhibiting amount.” That limitation prevents the claims from covering mere possession, synthesis, or in vitro binding of an antagonist without the claimed therapeutic or tissue effect. Which claims are broadest?Claims 1, 10, 29, and 38 are the broadest independent method claims. Claim 1 requires:
Claim 10 reduces the α1C-over-α1B threshold to 26-fold. On its face, claim 10 is broader than claim 1 with respect to the α1B selectivity ratio, assuming the claims otherwise have the same scope. Claim 29 mirrors claim 1 but covers inhibition of prostatic tissue contraction. Claim 38 mirrors claim 10 but covers inhibition of prostatic tissue contraction. The dependent claims narrow the independent claims by adding receptor-selectivity ratios. Examples include:
Claims 29 through 56 repeat this architecture for the tissue-contraction method. Does the patent cover a particular drug?No chemical compound is identified in the claims provided. The patent claims an antagonist by receptor-binding profile, not by molecular name or structural formula. A drug can therefore be relevant only if it satisfies both requirements:
A conventional α1 adrenergic antagonist with weaker selectivity may not meet the numerical limitations. Conversely, a structurally unrelated compound could theoretically satisfy the claims if its receptor-binding data meet the specified thresholds. The patent should not be equated automatically with patents covering tamsulosin, alfuzosin, silodosin, terazosin, doxazosin, or other BPH therapies. Those products have separate compound, formulation, dosage, polymorph, manufacturing, and method-of-use patent histories. The relevant issue is whether a product’s measured receptor profile falls within the US 5,780,485 thresholds. What formulations are protected by US 5,780,485?The patent claims provided do not contain formulation limitations. They do not require:
The claims therefore do not independently protect a formulation. A formulation could be relevant only because it delivers an antagonist used in a claimed BPH treatment. Separate formulation patents would be required to protect release technology, dosage form design, or a particular composition. This distinction matters in generic litigation. A generic applicant could avoid a formulation patent while still potentially implicating an expired method-of-use patent. Conversely, a product could fall within an active formulation patent even though US 5,780,485 has expired. When did US Patent 5,780,485 lose exclusivity?US Patent 5,780,485 issued on July 14, 1998. Its ordinary U.S. patent term expired no later than the mid-2010s under the applicable patent-term rules. The patent is expired as of 2026 and cannot create current U.S. patent exclusivity.
Patent term is governed principally by 35 U.S.C. §154, subject to patent-term adjustment, patent-term extension, terminal disclaimers, and other statutory provisions. A precise historical expiration calculation must be made from the USPTO patent-term record. No current extension can revive an expired patent.[2] The expiration eliminates patent-based launch risk under this patent. It does not eliminate regulatory requirements, product-liability exposure, trade-secret restrictions, or separate unexpired patents held by other parties. What is the Orange Book status of US 5,780,485?The claims are method-of-use claims, but patent-number issuance alone does not establish an Orange Book listing. Orange Book listing depends on whether the patent was submitted by the new drug application holder, accepted by FDA, and associated with an approved drug and use code. US 5,780,485 should not be treated as an active Orange Book barrier merely because it claims BPH treatment. The relevant FDA questions are:
An expired patent cannot support a current Paragraph IV exclusion period or block ANDA approval on its own. Under the Hatch-Waxman framework, Paragraph IV litigation consequences attach to listed patents that remain legally relevant to the drug application.[3] Were Paragraph IV challenges or generic litigation affected?The patent’s claim structure could have generated a Paragraph IV issue if it had been listed against an approved BPH product and if a generic applicant’s proposed labeling included the patented use. The most likely legal questions would have been:
The claims present several potential litigation pressure points. Functional genus scopeThe patent claims an entire class of antagonists based on receptor selectivity. A challenger could argue that the specification did not demonstrate or enable the full breadth of every claimed numerical ratio across all possible antagonists. Written-description and enablement issues are assessed under 35 U.S.C. §112.[4] Assay reproducibilityThe claims depend on receptor-binding ratios. Differences in receptor constructs, radioligands, membrane preparations, cell systems, assay conditions, and calculation methods could affect the numerical result. A product may therefore require an assay-specific infringement analysis. Receptor nomenclatureThe patent uses α1C and α1A as separate comparators. Modern pharmacology and historical receptor nomenclature are not always identical. Claim interpretation must follow the patent’s specification and prosecution history rather than assuming that current nomenclature maps directly onto the terms used in 1990s-era assays. ObviousnessA challenger could combine prior-art α1 antagonists, receptor-subtype pharmacology, and BPH treatment disclosures. The central question would be whether the claimed selectivity thresholds and therapeutic application were predictable from the prior art under 35 U.S.C. §103.[5] How strong is the patent estate?The standalone estate is weak for current commercial purposes because the patent has expired. Its historical claim breadth was significant, but its business value depended on three facts:
The patent has no evident claim coverage for:
That produces a narrow estate around a broad functional therapeutic concept. It could have been commercially important when unexpired, particularly if a marketed antagonist matched the claimed α1C-selectivity profile. It does not provide a surviving platform for current licensing or launch control. What manufacturing and intellectual-property barriers remain?US 5,780,485 creates no current manufacturing barrier. A company can manufacture an antagonist without infringing these expired claims. Current barriers may instead arise from separate rights covering:
For small-molecule BPH products, biosimilar risk is generally not the relevant framework. Biosimilars are associated with biological products under the Public Health Service Act. Conventional α1 adrenergic antagonists are normally addressed through the ANDA pathway, not a biosimilar application.[6] How does US 5,780,485 compare with ordinary BPH drug patents?
The patent is therefore best classified as a pharmacology-based method patent. Its value was tied to demonstrating that a compound was sufficiently selective for the claimed receptor subtype and that the selectivity produced a BPH-related therapeutic effect. What generic launch risks exist today?There is no current U.S. patent launch risk under US 5,780,485 because the patent has expired. A generic or reformulator does not need to design around these claims for current U.S. launch purposes. Historical launch risk would have depended on:
A product could have avoided literal infringement by failing to satisfy one required selectivity threshold, but that conclusion would depend on reliable comparative assay data. A product could also have faced induced-infringement allegations if its labeling encouraged the patented BPH use under 35 U.S.C. §271(b).[7] Key Takeaways
FAQsDoes US 5,780,485 cover tamsulosin?Not automatically. Tamsulosin would be relevant only if its receptor-binding profile satisfied the specific α1C selectivity ratios and its use matched the claims. The patent does not identify tamsulosin by name. Can an expired method-of-use patent block an ANDA?No. An expired patent cannot independently prevent approval or commercial launch. A current listed patent, regulatory exclusivity period, or separate unexpired patent could still create a barrier. Does the patent cover treatment of urinary symptoms generally?No. The claims are directed to treatment of BPH and inhibition of prostatic tissue contraction. They do not expressly cover every lower urinary tract symptom or every urological indication. Are receptor-binding assay results enough to prove infringement?No. Infringement would require proof of every claim limitation, including the therapeutic use and effective amount. The binding assay must also be relevant to the claim construction and the receptor definitions in the patent. Does the patent protect a once-daily or extended-release BPH formulation?No. The provided claims contain no release-profile, dosage-form, dosing-frequency, excipient, or formulation limitation. References
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Drugs Protected by US Patent 5,780,485
| 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 5,780,485
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Australia | 2240495 | ⤷ Start Trial | |||
| Australia | 5602994 | ⤷ Start Trial | |||
| Australia | 680457 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
