Details for Patent: 6,046,183
Summary for Patent: 6,046,183
| Title: | Method of synergistic treatment for benign prostatic hyperplasia | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | Disclosed is an improved treatment for men with benign prostatic hyperplasia (BPH), involving combination therapy of a 5 alpha -reductase inhibitor, e.g. a 17 beta -substituted 4-azasteroid, a 17 beta -substituted non-azasteroid, 17 beta -acyl-3-carboxy-androst-3,5-diene, benzoylaminophenoxybutanoic acid derivative, fused benz(thio)amide or cinnamoylamide derivative, aromatic 1,2-diethers or thioethers, aromatic ortho acylaminophenoxy alkanoic acids, ortho thioalkylacylaminophenoxy alkanoic acids, pharmaceutically acceptable salts and esters thereof, and particularly finasteride, in combination with an alpha 1-adrenergic receptor blocker, i.e., terazosin. The combination provides therapy at the molecular level for the underlying cause of the disease as well as providing symptomatic relief. Pharmaceutical compositions useful for treatment are also disclosed. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Glenn J. Gormley, Elizabeth Stoner | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Merck Sharp and Dohme LLC | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US09/027,105 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; Composition; | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 6,046,183: Scope, Claims, Expiration, and Finasteride-Doxazosin Patent LandscapeU.S. Patent No. 6,046,183 protects the use of finasteride together with doxazosin for treating benign prostatic hyperplasia (BPH), including a pharmaceutical composition containing both active ingredients. The patent issued on April 4, 2000, from an application filed in 1997. Its estimated United States patent term ended in 2017, subject to any applicable patent-term adjustment or terminal disclaimer. The patent no longer creates a live U.S. exclusivity barrier. The claims are narrow in drug identity but broad in dosage and formulation language. They require both finasteride and doxazosin, a BPH treatment purpose, and therapeutically synergistic effective amounts. The patent does not cover finasteride alone, doxazosin alone, unrelated alpha-blocker combinations, or every BPH treatment using either ingredient separately. What does U.S. Patent 6,046,183 protect?U.S. Patent 6,046,183 covers two related legal categories:
The patent is directed to combination therapy. It does not claim finasteride as a molecular entity or doxazosin as a molecular entity. The patent’s central limitation is the requirement for “therapeutically synergistic effective amounts.” That language narrows the claims because the combination must produce the claimed therapeutic relationship, rather than merely placing the two ingredients in the same treatment regimen. The claims do not state a fixed milligram dose, ratio, dosage interval, release profile, or route of administration. That creates flexibility for the patentee but also creates proof issues. A product or treatment may fall outside the claims if the accused combination is not shown to use therapeutically effective and synergistic amounts. What are the key limitations in Claim 1?Claim 1 requires each of the following elements:
The claim is not limited to a particular patient age, disease severity, prostate volume, urinary symptom score, or treatment duration. It also does not expressly require simultaneous administration. Separate administration of finasteride and doxazosin could fall within the claim if the overall regimen meets the claimed combination and therapeutic requirements. A method claim generally creates the greatest risk for a healthcare provider, patient, or commercial actor whose conduct directly practices the treatment steps. Liability for manufacturers depends on the facts, including product instructions, promotional materials, induced use, and whether the manufacturer actively encourages the claimed combination. Does Claim 1 cover separate finasteride and doxazosin prescriptions?Potentially, yes. Claim 1 does not require a single tablet or a fixed-dose product. A regimen using separate finasteride and doxazosin products can satisfy the combination limitation if both drugs are administered for BPH in therapeutically synergistic effective amounts. That scope is different from Claim 2. Claim 2 requires a pharmaceutical composition containing both ingredients, while Claim 1 can reach a treatment regimen using two separately manufactured products. What are the key limitations in Claim 2?Claim 2 requires:
The claim appears capable of covering a single fixed-dose dosage form containing both active ingredients, such as a tablet, capsule, multiparticulate system, or other oral pharmaceutical form, provided the composition satisfies the efficacy and synergy limitations. The claim does not expressly require:
The phrase “pharmaceutically acceptable carrier” is broad and ordinarily encompasses conventional excipients used to formulate oral drug products. It does not, by itself, create protection for every formulation containing the two active ingredients. The composition must still satisfy the therapeutic and synergy limitations. How broad is the “synergistic” limitation?The synergy requirement is the principal scope-limiting feature of both claims. An additive combination may not satisfy the limitation if the combined effect is merely the expected sum of finasteride and doxazosin effects. Evidence relevant to synergy could include:
The patent’s specification and prosecution history would be important in determining how “synergistic” was interpreted. Under U.S. patent law, claim construction begins with the claim language, specification, and prosecution history. Extrinsic evidence may be considered where appropriate, but it cannot override the intrinsic record.[2] The term also creates invalidity and enforcement questions. A defendant could argue that the claims lack adequate written description or enablement for the full range of unspecified doses, ratios, formulations, and treatment regimens. The patentee would likely rely on the disclosure and examples to show that a skilled person could identify effective combinations within the claimed scope. What was the FDA and clinical context for finasteride-doxazosin therapy?Finasteride is a 5-alpha-reductase inhibitor that reduces dihydrotestosterone and can reduce prostate volume over time. Doxazosin is an alpha-1 adrenergic receptor blocker that relaxes smooth muscle in the prostate and bladder neck and can provide more rapid symptom relief. The Medical Therapy of Prostatic Symptoms, or MTOPS, study evaluated finasteride, doxazosin, the combination, and placebo in men with BPH. The combination reduced the risk of overall clinical progression more than either agent alone in the study population. The results were published after the patent’s filing and supported the clinical rationale for combination therapy.[3] The FDA approved finasteride products for BPH and approved doxazosin products for BPH and hypertension. The United States did not establish a broad, permanent regulatory monopoly over the combination merely because the two drugs were separately approved. Any fixed-dose combination would require its own regulatory pathway or reliance on applicable FDA pathways for the individual components. When did U.S. Patent 6,046,183 expire?The patent issued on April 4, 2000. The underlying U.S. application was filed on May 30, 1997. For a utility patent filed after June 8, 1995, the ordinary term is 20 years from the earliest effective nonprovisional filing date, subject to patent-term adjustment, patent-term extension, terminal disclaimers, and other statutory adjustments.[4] On that basis, the ordinary term would have reached approximately May 30, 2017. The exact expiration date requires review of the patent’s official term calculation, including any patent-term adjustment. Any applicable adjustment would not change the commercial conclusion: the patent expired years ago and is not a current barrier to U.S. generic or combination-product development.
What was the Orange Book status of U.S. Patent 6,046,183?The patent’s Orange Book relevance depends on whether it was properly submitted and listed against an approved drug product under the FDA’s patent-listing rules. A patent claiming finasteride and doxazosin together is not automatically listable against a finasteride-only product or a doxazosin-only product. FDA listing rules generally require the patent to claim the drug substance, drug product, or an approved method of using the drug for which the patent is submitted.[5] The practical assessment is:
The FDA Orange Book remains the controlling source for current listed-patent status and patent certification consequences. An expired patent does not create a current 30-month stay under Hatch-Waxman. What finasteride and doxazosin patents formed the surrounding landscape?The commercial patent landscape included separate patents for the individual drugs and the later combination patent.
The combination patent was commercially distinct from the earlier finasteride and doxazosin patents. It did not extend the molecular patent term for either active ingredient. Its value depended on whether physicians, payors, clinical guidelines, or a future fixed-dose product adopted the combination. What generic entry risks existed before expiration?Before expiration, generic developers faced several distinct scenarios. Separate generic finasteride and doxazosin productsA company could seek approval for finasteride or doxazosin alone. Approval of either product would not necessarily infringe Claim 1 or Claim 2 because the patent requires both active ingredients. Risk could arise if the generic label encouraged combination use in BPH or if the manufacturer actively promoted coadministration. A label limited to the approved use of the single drug would generally present a different infringement profile from a label expressly directing combined use. A fixed-dose combination productA fixed-dose product containing finasteride and doxazosin would have faced direct Claim 2 risk before expiration. The product would also have needed FDA approval, manufacturing support, stability data, bioavailability information, labeling, and a defensible demonstration that the formulation met the claim’s therapeutic limitations. A co-packaged productA co-pack containing separate finasteride and doxazosin units could avoid the literal composition language of Claim 2 because the two drugs would not necessarily be in one composition. It could still raise Claim 1 issues if the packaging or label instructed users to administer both drugs for BPH. Physician-directed off-label combination usePhysician prescribing alone does not automatically establish manufacturer infringement. The risk would depend on who performed the method steps, whether the manufacturer induced the conduct, and the strength of the evidence linking the product’s labeling or promotion to the claimed regimen. Which companies challenged or litigated U.S. Patent 6,046,183?No material current Paragraph IV or patent-litigation risk remains because the patent has expired. A Paragraph IV certification would have been relevant only during the patent’s unexpired term and only if the patent was listed against the relevant FDA-approved product. The principal commercial companies associated with the surrounding products were:
The patent’s combination claims did not necessarily align with either company’s approved single-agent product. The absence of a widely commercialized FDA-approved fixed-dose finasteride-doxazosin product limited the patent’s Orange Book and Hatch-Waxman leverage. A litigation search should distinguish among:
Those categories should not be treated as evidence that Patent 6,046,183 was itself asserted. How strong was the patent estate for finasteride-doxazosin combination therapy?The patent estate was strong in concept but narrow in portfolio depth. Strengths
Weaknesses
The patent was more important as a combination-use patent than as a durable product patent. Its strategic value declined further once the individual active ingredients became generic and physicians could prescribe the two drugs separately at low cost. How does the patent compare with patents for finasteride alone or doxazosin alone?
Patent 6,046,183 did not restore exclusivity to the underlying molecules. Its protection was additive only where a company used both drugs in the claimed therapeutic combination. What manufacturing and formulation barriers remain?The expired patent does not prevent manufacture of a finasteride-doxazosin product in the United States. Commercial barriers may still include:
A company developing a new fixed-dose product would need to review later patents covering particle size, solid dispersions, modified release, coatings, tablet architecture, manufacturing processes, packaging, and specific dosage regimens. Those rights are distinct from Patent 6,046,183. What is the current generic launch and licensing outlook?Because the patent is expired, a U.S. manufacturer does not need a license from the patent owner to commercialize a finasteride-doxazosin combination that satisfies applicable FDA requirements. No continuing royalty obligation arises solely from the expired patent. A license could still be relevant if a separate, unexpired patent covers:
The commercial opportunity is likely constrained by the availability of inexpensive generic finasteride and doxazosin as separate products. A fixed-dose combination could offer adherence or prescribing convenience, but it would need to overcome development and regulatory costs in a market where separate generic components are available. Does U.S. Patent 6,046,183 create biosimilar risk?No. Finasteride and doxazosin are small-molecule drugs, not biologics. The Biologics Price Competition and Innovation Act biosimilar pathway does not apply. Competitive entry would proceed through small-molecule drug approval pathways, including ANDA or, depending on the product and regulatory strategy, an NDA or 505(b)(2) application. Key Takeaways
FAQs About U.S. Patent 6,046,183Can a company market finasteride and doxazosin together in the United States?Yes, the expired patent does not prevent commercialization. The company must still satisfy FDA approval, labeling, manufacturing, bioequivalence, and current patent requirements. Does the patent cover finasteride used with tamsulosin?No. The supplied claims identify doxazosin specifically. Tamsulosin is a different alpha-1 blocker and is not literally recited in the claims. Does a separate finasteride prescription infringe Patent 6,046,183?Finasteride alone does not satisfy the claimed combination. Risk could arise only from conduct involving both finasteride and doxazosin and the other claim limitations. Would an extended-release doxazosin product automatically avoid the patent?No. The claims do not exclude extended-release doxazosin. An extended-release product could still be relevant if it contained both ingredients or was administered with finasteride in a qualifying BPH regimen. Is a license required to sell a fixed-dose finasteride-doxazosin product?Not because of Patent 6,046,183. A separate license may be required for other unexpired patents, proprietary regulatory rights, trademarks, or foreign-market rights. References
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Drugs Protected by US Patent 6,046,183
| 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 6,046,183
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Australia | 1751492 | ⤷ Start Trial | |||
| Australia | 666846 | ⤷ Start Trial | |||
| Bulgaria | 61798 | ⤷ Start Trial | |||
| Bulgaria | 98113 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
