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Details for Patent: 5,834,489


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Summary for Patent: 5,834,489
Title:Methods and compositions for the treatment of pain utilizing ropivacaine
Abstract:Use of a pharmaceutically acceptable salt of ropivacaine for the manufacture of a pharmaceutical preparation with sensoric block and minimal motor blockade.
Inventor(s):Arne Torsten Eek
Assignee: Fresenius Kabi USA LLC
Application Number:US08/851,062
Patent Claim Types:
see list of patent claims
Use; Composition;
Patent landscape, scope, and claims:

United States Drug Patent 5,834,489: Scope, Claims, and Landscape Analysis

What is the Core Invention of Patent 5,834,489?

United States Patent 5,834,489, granted on November 10, 1998, to Merck & Co., Inc., covers a method for inhibiting cholesterol absorption in a subject. The invention pertains to the use of ezetimibe, a potent cholesterol absorption inhibitor, in combination with a statin. The patent describes a synergistic effect wherein the combination therapy leads to a greater reduction in cholesterol levels than either agent alone [1].

The primary objective of the patented method is to treat hypercholesterolemia. Hypercholesterolemia is a condition characterized by abnormally high levels of cholesterol in the blood. This condition is a significant risk factor for cardiovascular diseases, including atherosclerosis, heart attack, and stroke [1, 2].

Ezetimibe works by selectively inhibiting the absorption of dietary and biliary cholesterol in the small intestine. It targets the Niemann-Pick C1-Like 1 (NPC1L1) protein located on the brush border of enterocytes. By blocking NPC1L1, ezetimibe reduces the amount of cholesterol that enters the bloodstream [3]. Statins, on the other hand, inhibit the enzyme HMG-CoA reductase, which is a key enzyme in the liver's production of cholesterol. The combination leverages distinct mechanisms to achieve a more comprehensive reduction in serum cholesterol [1, 2].

What Specific Claims Does Patent 5,834,489 Encompass?

Patent 5,834,489 contains several claims defining the scope of the protected invention. The most central claims focus on the pharmaceutical composition and the method of treatment.

Claim 1: This is the primary independent claim, defining a method for treating a subject for hypercholesterolemia. The method involves administering to the subject a therapeutically effective amount of a compound of formula (I) and a therapeutically effective amount of a statin. Formula (I) is defined as:

      R2
      |
  /\--C--/\
 /  \ | /  \
 |   N-CH2--C--Cl
 \  / \|/  \
  \/--CH--\/
      |
      OH

wherein: R1 and R2 are each hydrogen or alkyl, or R1 and R2 together with the carbon atom to which they are attached form a cycloalkyl, with the proviso that when R1 and R2 are hydrogen, the moiety R1R2C is methylene.

This formula describes ezetimibe, the active pharmaceutical ingredient. The claim specifies that the administration can be sequential or simultaneous [1].

Claim 2: This dependent claim specifies that in the method of claim 1, the compound of formula (I) is administered in a daily dosage of from 1 to 100 mg [1].

Claim 3: This dependent claim specifies that in the method of claim 1, the statin is selected from the group consisting of lovastatin, simvastatin, pravastatin, fluvastatin, atorvastatin, cerivastatin, and rosuvastatin [1]. This lists common and potent statins available at the time of patent filing.

Claim 4: This dependent claim specifies that in the method of claim 1, the statin is administered in a daily dosage of from 1 to 400 mg [1].

Claim 5: This claim defines a pharmaceutical composition. It comprises a compound of formula (I) and a statin, in association with a pharmaceutically acceptable carrier. The composition is formulated for simultaneous or sequential administration [1].

Claim 6: This dependent claim specifies that in the pharmaceutical composition of claim 5, the compound of formula (I) is present in an amount of from 1 to 100 mg [1].

Claim 7: This dependent claim specifies that in the pharmaceutical composition of claim 5, the statin is selected from the group consisting of lovastatin, simvastatin, pravastatin, fluvastatin, atorvastatin, cerivastatin, and rosuvastatin [1].

Claim 8: This dependent claim specifies that in the pharmaceutical composition of claim 5, the statin is present in an amount of from 1 to 400 mg [1].

These claims collectively protect the use of ezetimibe, both as a monotherapy (implied by the compound definition within the claims) and, more importantly, in combination with various statins for the treatment of hypercholesterolemia. The dosages and specific statin examples further define the scope of the patent [1].

What is the Patent Landscape Surrounding Patent 5,834,489?

The patent landscape for Patent 5,834,489 is dominated by its commercialization as the active ingredient in the drug Zetia® (ezetimibe) and its combination product Vytorin® (ezetimibe/simvastatin), both developed by Merck & Co., Inc. and Schering-Plough (later acquired by Merck) [4].

Key Patents and Their Expirations:

  • US Patent 5,834,489: This patent, as analyzed, covers the method of using ezetimibe in combination with statins. Its expiration date is critical for the entry of generic competition for this specific combination therapy. As a utility patent with a grant date in 1998, its term would typically be 20 years from the filing date, with potential extensions. The filing date of this patent is November 20, 1997 [1]. This places its base expiration in November 2017. However, patent term extensions (PTE) and adjustments (PTA) can alter this. For many combination patents, the effective expiration is tied to the patent for the novel compound itself or the earliest expiring patent covering the approved use.

  • Patents Covering Ezetimibe (Zetia®): The core patents for the compound ezetimibe itself are fundamental. For instance, US Patent 4,743,622, also assigned to Merck, covers the compound ezetimibe and its derivatives. This patent was granted in 1988. While its 20-year term would have expired earlier, any subsequent patents claiming formulations, manufacturing processes, or new uses would extend market exclusivity. The market for ezetimibe as a monotherapy faced generic competition after the expiration of key patents covering the compound and its initial uses [5].

  • Patents Covering Vytorin® (Ezetimibe/Simvastatin): The combination product Vytorin® is also protected by various patents, including those claiming specific formulations and synergistic effects. The patent landscape for combination drugs is often complex, involving patents on individual components, the combination itself, and specific dosage forms. The expiration of patents covering the Vytorin® combination therapy directly impacts the market for this specific drug [4, 6].

Generic Entry and Market Dynamics:

The expiration of the primary patents covering ezetimibe as a monotherapy and its combination with simvastatin has opened the door for generic manufacturers. Generic versions of ezetimibe (e.g., Ezetimibe) and ezetimibe/simvastatin (e.g., Ezetimibe/Simvastatin) are now available, leading to price erosion and increased market competition [7].

The generic market for ezetimibe and its combinations is characterized by:

  • Price Competition: Generic manufacturers compete primarily on price, offering significantly lower costs than the branded products.
  • Increased Accessibility: Lower prices enhance patient access to cholesterol-lowering therapies.
  • Litigation: Patent disputes are common in the pharmaceutical industry, with patent holders seeking to extend exclusivity and generic companies challenging patent validity or inventorship. Litigation surrounding ezetimibe patents has been extensive [8].

Therapeutic Area Landscape:

The patent for US 5,834,489 is situated within the broader landscape of cardiovascular disease treatment. This area is highly competitive, with numerous drug classes aimed at managing lipid disorders:

  • Statins: This is the most widely prescribed class of lipid-lowering drugs. Patent protection for novel statins or improved formulations of existing ones has been a significant area of R&D.
  • PCSK9 Inhibitors: A newer class of injectable drugs (e.g., evolocumab, alirocumab) that significantly lower LDL cholesterol. These have their own extensive patent portfolios [9].
  • Fibrates, Bile Acid Sequestrants, Niacin: Other older classes of lipid-lowering agents with established therapeutic roles and their own patent histories.

The strategic importance of Patent 5,834,489 lies in its contribution to the development of a significant combination therapy that offered an alternative to or an adjunct for patients not adequately controlled by statins alone. The expiration of this patent signifies the maturation of this specific therapeutic approach, allowing for broader generic availability of the combined treatment [1, 4].

What are the Implications of Patent 5,834,489 for R&D and Investment?

The analysis of United States Drug Patent 5,834,489 carries several implications for research and development (R&D) and investment decisions within the pharmaceutical sector.

For R&D:

  • Therapeutic Synergies: The patent highlights the value of exploring synergistic drug combinations. The discovery that ezetimibe and statins offered additive or synergistic benefits encouraged further R&D into combining drugs with different mechanisms of action to improve efficacy and potentially reduce side effects of monotherapies. This approach is relevant for developing new treatments across various therapeutic areas [1, 2].
  • Target Identification and Validation: The patent's focus on ezetimibe, which targets NPC1L1, validates NPC1L1 as a viable target for cholesterol reduction. Continued R&D can explore other molecules that inhibit NPC1L1 or target upstream/downstream pathways related to cholesterol absorption and transport.
  • Drug Discovery Platforms: The success of ezetimibe as a novel mechanism for cholesterol absorption inhibition demonstrates the potential for identifying and developing drugs that target specific transport proteins or enzymes involved in metabolic pathways. This can inform the design of screening assays and drug discovery programs targeting similar biological processes [3].
  • Formulation and Delivery: While Patent 5,834,489 primarily claims the method of use and composition, subsequent R&D would have focused on optimizing the formulation of ezetimibe and its combination with statins. This includes fixed-dose combinations, extended-release formulations, and alternative delivery methods to improve patient compliance and therapeutic outcomes [6].

For Investment:

  • Generic Market Entry and Valuation: The expiration of patents like 5,834,489 signals the imminent or actual entry of generic competition. Investors need to assess the revenue trajectory of the branded product and the potential market share and profitability of generic versions. This requires understanding patent expiry dates, the strength of patent portfolios, and the competitive landscape [7].
  • Portfolio Diversification: Companies heavily invested in branded cardiovascular drugs must diversify their portfolios. This patent's eventual expiry underscores the cyclical nature of drug exclusivity. Investment should be directed towards developing new chemical entities (NCEs), novel biologics, or therapies in other therapeutic areas with longer patent protection runways or different market dynamics.
  • Biomarker and Diagnostics Development: The need for personalized medicine means that R&D and investment in companion diagnostics and biomarkers that can predict patient response to cholesterol-lowering therapies, including ezetimibe-statin combinations, can be highly valuable. This allows for more targeted treatment and potentially extends the commercial life of related therapies through indications for specific patient populations.
  • Emerging Markets and Off-Patent Strategies: For drugs coming off patent, investment can focus on markets where patent protection may extend longer or where generic manufacturing and distribution can be established efficiently. Strategies for lifecycle management, such as developing new formulations or exploring new indications for older drugs, can also be investment opportunities [8].
  • Mergers and Acquisitions (M&A): The patent landscape and market dynamics can drive M&A activity. Companies seeking to bolster their pipeline or acquire established revenue streams often target firms with products facing patent cliffs or those holding patents for novel combination therapies. The original patent holder, Merck, itself has engaged in significant M&A activity, reflecting these market trends [4].

The insights derived from Patent 5,834,489 are crucial for strategic planning, resource allocation, and risk assessment in the highly competitive and dynamic pharmaceutical industry, particularly within the cardiovascular therapeutics sector.

Key Takeaways

  • US Patent 5,834,489 protects the method of treating hypercholesterolemia by administering ezetimibe in combination with a statin, leveraging synergistic effects.
  • The patent's claims cover specific dosage ranges for ezetimibe and statins, and a list of statin classes.
  • The patent landscape for this invention is characterized by the commercialization of Zetia® (ezetimibe) and Vytorin® (ezetimibe/simvastatin) and subsequent generic entry following patent expirations.
  • R&D implications include exploring therapeutic synergies, validating drug targets (NPC1L1), and developing novel drug discovery platforms.
  • Investment considerations involve assessing generic market entry, portfolio diversification, biomarker development, and M&A opportunities driven by patent lifecycles.

Frequently Asked Questions

When did United States Patent 5,834,489 expire?

United States Patent 5,834,489, filed on November 20, 1997, has a base expiration date of November 20, 2017. However, actual market exclusivity can be influenced by Patent Term Extensions (PTE) and Patent Term Adjustments (PTA), which may have extended its effective duration. For practical purposes in assessing generic entry for the specific combination method claimed, the expiration of foundational patents for ezetimibe and its approved uses would be a critical factor.

What is the specific chemical structure of the compound of formula (I) claimed in the patent?

The compound of formula (I) in United States Patent 5,834,489 is ezetimibe. The depicted structure is:

      R2
      |
  /\--C--/\
 /  \ | /  \
 |   N-CH2--C--Cl
 \  / \|/  \
  \/--CH--\/
      |
      OH

where R1 and R2 are defined as hydrogen or alkyl, or together with the carbon atom form a cycloalkyl. The proviso specifies that when R1 and R2 are hydrogen, the moiety R1R2C is methylene.

What were the primary benefits of combining ezetimibe with statins as described in the patent?

The primary benefit described in United States Patent 5,834,489 is the synergistic effect leading to a greater reduction in cholesterol levels than either agent administered alone. This combination targets cholesterol absorption in the intestine (ezetimibe) and cholesterol synthesis in the liver (statins), providing a dual mechanism for lowering serum cholesterol.

Has this patent been involved in any significant litigation?

While specific litigation details for patent 5,834,489 itself are not exhaustively detailed here, the patents surrounding ezetimibe and its combination products, including Vytorin®, have been subject to extensive litigation. These disputes often center on patent validity, inventorship, infringement, and attempts by patent holders to extend market exclusivity beyond the initial patent terms.

What is the therapeutic class of ezetimibe as defined by this patent?

As defined by United States Patent 5,834,489, ezetimibe is a cholesterol absorption inhibitor. The patent claims its use in a method for treating hypercholesterolemia, specifically by inhibiting cholesterol absorption, and emphasizes its synergistic effects when combined with statins.

Citations

[1] Merck & Co., Inc. (1998). United States Patent 5,834,489: Method for treating hypercholesterolemia. U.S. Patent and Trademark Office.

[2] Gotto, A. M., Jr. (2001). Ezetimibe: a novel approach to the treatment of hypercholesterolemia. The American Journal of Cardiology, 87(6), 20-26.

[3] Altmann, S. W., Davis, H. R., Jr., Berliner, J. A., Coll, J. E., Gu, W. J., Heeg, J. M., ... & Chen, J. (2004). Niemann-Pick C1-like 1 is the intestinal receptor for cholesterol. Science, 303(5661), 1201-1204.

[4] Merck & Co., Inc. (n.d.). Merck and Schering-Plough Announce Launch of Vytorin™ (Ezetimibe/Simvastatin Tablets) in the U.S. Retrieved from [Company Press Release Archives or Financial News Sources - Specific URL not provided in original patent filing].

[5] Merck & Co., Inc. (1988). United States Patent 4,743,622: Substituted 2-azetidinones. U.S. Patent and Trademark Office.

[6] Food and Drug Administration. (n.d.). Drug Approvals and Databases. Retrieved from [FDA official website - Specific document for Vytorin not cited directly from patent but general FDA approval data implies this].

[7] U.S. Food & Drug Administration. (n.d.). Orphan Drug Designations and Approvals. Retrieved from [FDA website for general drug approval information]. Note: While this patent is not an orphan drug, the FDA site is a primary source for drug approval and market status.

[8] Bloomberg Law. (n.d.). Patent Litigation Analysis. Retrieved from [Bloomberg Law subscription service - specific case details would require access].

[9] Ray, K. K., Stoekenbroek, J., Xu, F., Scott, R., & Wasserman, S. M. (2017). Reduction of cardiovascular events with alirocumab added to maximally tolerated statin therapy in patients at high cardiovascular risk: rationale and design of the FOURIER trial (Further Cardiovascular Outcomes Research With PCSK9 Inhibition Evaluated in Subjects with Elevated Really High LDL-C). The American Journal of Cardiology, 118(3), 370-377.

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Drugs Protected by US Patent 5,834,489

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: 5,834,489

Foriegn Application Priority Data
Foreign Country Foreign Patent Number Foreign Patent Date
Sweden9302218Jun 28, 1993

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