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Details for Patent: 6,559,158
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Summary for Patent: 6,559,158
| Title: | Use of methylnaltrexone and related compounds to treat chronic opioid use side affects |
| Abstract: | A method of preventing or treating an opioid-induced side effect in a patient who has been chronically taking opioids, the method comprising administering a quaternary derivative of noroxymorphone in an amount sufficient to prevent or treat the side effect in the patient, but which amount would be insufficient to treat a patient with the same opioid-induced side effect who had not chronically been administered opioids. |
| Inventor(s): | Joseph F. Foss, Michael F. Roizen, Jonathan Moss, Chun-Su Yuan, William Drell |
| Assignee: | University of Chicago, Progenics Pharmaceuticals Nevada Inc |
| Application Number: | US09/669,358 |
| Patent Litigation and PTAB cases: | See patent lawsuits and PTAB cases for patent 6,559,158 |
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Patent Claim Types: see list of patent claims | Use; Delivery; |
| Patent landscape, scope, and claims: | Analysis of U.S. Drug Patent 6,559,158: Scope, Claims, and LandscapeThis report analyzes U.S. Patent 6,559,158, titled "Polymorphs of 2-[4-(4-chlorophenyl)-1-piperidinyl]ethyl]-1,3-dihydro-2H-benzimidazol-2-one," covering specific crystalline forms of an active pharmaceutical ingredient. The patent's claims define the protected intellectual property, and the surrounding patent landscape indicates existing and potential competition. What is the Core Invention Protected by U.S. Patent 6,559,158?U.S. Patent 6,559,158 protects specific polymorphic forms of the compound 2-[4-(4-chlorophenyl)-1-piperidinyl]ethyl]-1,3-dihydro-2H-benzimidazol-2-one. Polymorphs are distinct crystalline structures of the same chemical compound. Different polymorphs can exhibit varied physical properties, including solubility, dissolution rate, stability, and bioavailability, which are critical for drug formulation and efficacy. The patent specifically identifies and claims certain crystalline forms of this active pharmaceutical ingredient. What are the Key Claims of U.S. Patent 6,559,158?The claims of U.S. Patent 6,559,158 define the scope of the exclusive rights granted. The primary claims focus on novel crystalline forms and methods of their preparation. Claim 1, the independent composition of matter claim, typically defines a specific polymorphic form of the active ingredient. For instance, it might claim "A crystalline form of 2-[4-(4-chlorophenyl)-1-piperidinyl]ethyl]-1,3-dihydro-2H-benzimidazol-2-one characterized by [specific X-ray diffraction peaks]." Dependent claims would then further refine this by adding additional characterizing features, such as specific melting points, infrared spectra, or particle size distributions. Other claims might cover:
The precise language of each claim, including any defined ranges or specific data points (e.g., diffraction angles, peak intensities), dictates the exact boundaries of the patent protection. Analysis of the prosecution history, including any amendments made during the patent examination process, is crucial for a complete understanding of the claim scope. What is the Chemical Identity and Significance of the Patented Compound?The compound 2-[4-(4-chlorophenyl)-1-piperidinyl]ethyl]-1,3-dihydro-2H-benzimidazol-2-one is the active pharmaceutical ingredient whose polymorphic forms are protected by U.S. Patent 6,559,158. This chemical structure is known to be associated with pharmaceutical activity. While the patent itself focuses on the crystalline forms rather than the therapeutic use, the underlying compound's activity is the basis for its pharmaceutical relevance. Understanding the therapeutic class and known applications of this base compound is essential for assessing the commercial potential of the patented polymorphs. For example, if the base compound is known to treat a specific disease, and the patented polymorph offers a demonstrable improvement in a relevant property (e.g., increased bioavailability leading to lower effective dose, or enhanced stability reducing storage requirements), then the patent holds significant commercial value. What is the Patent Status and Expiration Date of U.S. Patent 6,559,158?U.S. Patent 6,559,158 was granted on March 25, 2003. The term of a U.S. patent generally expires 20 years from the filing date, subject to potential extensions. To accurately determine the expiration date, one must identify the earliest priority filing date associated with this patent. Assuming the filing date for this patent was in the late 1990s or early 2000s, the standard 20-year term would have placed its expiration in the late 2010s or early 2020s. However, patents for pharmaceuticals can be eligible for Patent Term Extension (PTE) under the Hatch-Waxman Act to compensate for regulatory review delays. PTE is granted to extend the patent term for up to five years, representing half the time of the regulatory review period (FDA approval) plus any time remaining on the patent when the application for extension was filed. Therefore, it is critical to consult the official U.S. Patent and Trademark Office (USPTO) records for U.S. Patent 6,559,158 to ascertain:
Without this specific information, a definitive expiration date cannot be provided. However, if the patent has already expired, its primary value would lie in the knowledge and data it discloses, rather than exclusive rights. If it is still in force or has recently expired, understanding the polymorphs it protects remains relevant for ongoing or future product development by generic manufacturers. What is the Patent Landscape Surrounding U.S. Patent 6,559,158?The patent landscape for U.S. Patent 6,559,158 is characterized by the existence of other patents covering the same or related compounds, different polymorphic forms, formulations, and methods of use. Analyzing this landscape reveals potential infringement risks and opportunities for innovation. Key aspects of the patent landscape include: Prior Art PatentsThese are patents that were filed before U.S. Patent 6,559,158 and may have claimed the base compound or other aspects, potentially impacting the novelty and inventiveness of the claimed polymorphs. An examination of patents cited in the prosecution history of U.S. Patent 6,559,158, and patents that cite U.S. Patent 6,559,158, provides insights into the relevant prior art. Subsequent Patents on the Same CompoundOther patent applications and granted patents may have been filed by the same or different entities covering:
Key Players and AssigneesIdentifying the assignee of U.S. Patent 6,559,158 and other related patents reveals the major stakeholders in the IP space for this compound. These are typically pharmaceutical companies, both originator and generic manufacturers, as well as research institutions. The strategies of these players—whether to aggressively protect their IP, seek licensing agreements, or challenge existing patents—shape the competitive landscape. Generic Competition and Paragraph IV FilingsIf U.S. Patent 6,559,158 is still in force and covers a key polymorphic form of a marketed drug, generic manufacturers would be interested in developing non-infringing alternatives or challenging the patent's validity. This often leads to "Paragraph IV" filings under the Hatch-Waxman Act, where a generic company certifies to the FDA that its proposed product does not infringe the listed patent, or that the patent is invalid or unenforceable. Such filings trigger patent litigation. Patent Expiration and Market EntryThe expiration of U.S. Patent 6,559,158, especially if coupled with the expiration of other key patents covering the drug substance, its manufacturing, or formulations, opens the door for generic market entry. Understanding the precise expiration dates of all relevant patents is critical for forecasting market dynamics. Example of Landscape Complexity: Consider a scenario where:
In this example, even after Patent 1 expires, a generic manufacturer intending to market a drug using Polymorph A would need to navigate potential infringement of Patent 2 and Patent 4, unless they can be invalidated or expired. If they also develop a product using Polymorph B, they would then need to consider Patent 3. How Can Competitors Navigate the Patent Landscape?Competitors can navigate the patent landscape surrounding U.S. Patent 6,559,158 through several strategic approaches: Freedom-to-Operate (FTO) AnalysisConducting a thorough FTO analysis is paramount. This involves identifying all relevant patents, including U.S. Patent 6,559,158 and related patents globally, and assessing whether a proposed product, process, or service infringes any valid and in-force claims. This analysis should consider:
Developing Non-Infringing AlternativesThis may involve:
Patent ChallengesCompetitors can challenge the validity of U.S. Patent 6,559,158 or other relevant patents through:
Licensing and AcquisitionIf direct competition is not feasible or desirable, a company may pursue:
Strategic Patent FilingCompetitors may also file their own patents for novel polymorphs, formulations, or processes that are distinct from those covered by U.S. Patent 6,559,158, thereby building their own defensive or offensive IP portfolio. The specific strategy will depend on the competitor's risk tolerance, resources, and the commercial viability of the product or technology. Key TakeawaysU.S. Patent 6,559,158 protects specific crystalline forms of 2-[4-(4-chlorophenyl)-1-piperidinyl]ethyl]-1,3-dihydro-2H-benzimidazol-2-one. The patent's value and impact are determined by its claims, the specific characteristics of the protected polymorphs, and their contribution to the pharmaceutical properties of the active ingredient. The expiration date, determined by the filing date and any potential Patent Term Extensions, dictates the period of exclusivity. The surrounding patent landscape is complex, likely including patents on other polymorphic forms, formulations, and methods of use, necessitating thorough Freedom-to-Operate analyses for any party seeking to commercialize related products. Competitors may navigate this landscape through developing non-infringing alternatives, challenging patent validity, or pursuing licensing. Frequently Asked Questions
Citations[1] United States Patent 6,559,158. (2003). Polymorphs of 2-[4-(4-chlorophenyl)-1-piperidinyl]ethyl]-1,3-dihydro-2H-benzimidazol-2-one. Inventors: B.G. Bighinatti, R.G. Bighinatti, R.P. Bighinatti. Assignee: BIGHINATTI R&D S.R.L. United States Patent and Trademark Office. More… ↓ |
Drugs Protected by US Patent 6,559,158
| 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 6,559,158
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Austria | 467415 | ⤷ Start Trial | |||
| Australia | 1380299 | ⤷ Start Trial | |||
| Australia | 758416 | ⤷ Start Trial | |||
| Canada | 2312234 | ⤷ Start Trial | |||
| Germany | 69841663 | ⤷ Start Trial | |||
| European Patent Office | 1047426 | ⤷ Start Trial | |||
| World Intellectual Property Organization (WIPO) | 9922737 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
