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Details for Patent: 6,596,750
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Summary for Patent: 6,596,750
| Title: | Substituted 3,5-diphenyl-1,2,4-triazoles and their use as pharmaceutical metal chelators | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | The use is described of 3,5-diphenyl-1,2,4-triazoles of the formula I in which R1-R5 are as defined in the description. The compounds have useful pharmaceutical properties and are particularly active as iron chelators. They can be used for the treatment of iron overload in warm-blooded animals. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | René Lattmann, Pierre Acklin | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Novartis AG | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US10/252,899 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Use; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Drug Patent 6,596,750: Scope, Claims, Expiration, and Patent Landscape for DeferasiroxU.S. Patent No. 6,596,750 covers methods of treating metal overload, particularly iron overload, with substituted 1,2,4-triazole iron chelators. Its most commercially important compound is deferasirox, the active ingredient in Exjade and Jadenu. The patent issued July 22, 2003, and its U.S. term expired in December 2020, subject to any applicable patent-term adjustment or pediatric exclusivity period. It is no longer an enforceable barrier to U.S. generic or follow-on deferasirox products. The patent’s claim architecture is broad at the genus level but narrows through multiple dependent claims to specific compounds, including deferasirox and a large group of related triazole derivatives. The claims cover therapeutic use, not the active compound as such, a finished dosage form, a manufacturing process, or a particular pharmaceutical composition. What does U.S. Patent 6,596,750 cover?The patent covers methods of treating diseases associated with excess metal, with an emphasis on iron overload, by administering substituted 1,2,4-triazole compounds or their pharmaceutically acceptable salts. The commercial core is the compound: 4-[3,5-bis(2-hydroxyphenyl)-1,2,4-triazol-1-yl]benzoic acid This compound is commonly known as deferasirox. The patent claims deferasirox expressly in claims 13 and 17 and includes it within broader compound lists in claims 6, 12, and 18. The claimed pharmacological concept is iron chelation. The compounds contain two ortho-hydroxyphenyl groups attached to a 1,2,4-triazole ring. Those hydroxyl groups provide the principal metal-binding functionality. Substitution at the triazole nitrogen and on the phenyl rings modifies pharmacokinetic, physicochemical, and formulation properties. What is the patent’s claim category?U.S. Patent 6,596,750 is principally a use patent. Its claims require:
The patent does not claim:
That distinction matters. A product containing deferasirox could implicate this patent during its enforceable term through the method of treatment, even if the product formulation itself was protected by a separate patent. What compounds are covered by the claims?The claims cover a large Markush genus built around substituted 1,2,4-triazoles bearing hydroxy-substituted aromatic rings. Formula I and formula II claim structureClaims 1 and 3 are the principal genus claims. They define:
Permitted substituents include:
The claims therefore extend beyond deferasirox to numerous analogues with altered ring substitution, nitrogen substituents, amide side chains, aminoalkyl groups, heteroaryl groups, and carboxylic acid substituents. Expressly listed compoundsClaim 6 lists specific compounds, including:
Claim 18 contains an even broader species list, including:
The express species claims strengthen coverage against arguments that the genus is insufficiently supported or that a particular commercial compound falls outside the disclosure. Which claims specifically cover deferasirox?
Claims 13 and 17 are the clearest deferasirox claims. Claim 13 covers treatment of metal-excess diseases with deferasirox or a pharmaceutically acceptable salt. Claim 17 narrows the indication to iron overload. What is the legal scope of claims 13 and 17?Claim 13 requires treatment of a disease that causes or results from excess metal using:
or a pharmaceutically acceptable salt. Claim 17 imposes the same compound limitation but narrows the disease to iron overload. The principal infringement theory would have been induced or contributory infringement associated with an approved product labeled for treating iron overload. A generic applicant whose labeling expressly instructed treatment of iron overload could face a method-of-use assertion during the patent term. The claims do not require proof that all administered drug chelates iron in vivo. They require administration of the claimed compound for the claimed therapeutic purpose. Claim construction would focus on:
When did U.S. Patent 6,596,750 expire?The patent issued July 22, 2003. Public regulatory and patent records associated the patent with an expiration date in December 2020. FDA Orange Book records for deferasirox historically listed U.S. Patent 6,596,750 in connection with Exjade [1][2]. Exclusivity timeline
Patent expiration and FDA regulatory exclusivity are separate. A patent can expire while pediatric exclusivity, orphan-drug exclusivity, or another regulatory period remains in force. For deferasirox, the commercial significance of U.S. Patent 6,596,750 ended after December 2020, while other patents and product-specific regulatory protections had to be assessed separately. What was the Orange Book status of U.S. Patent 6,596,750?The patent was listed in FDA’s Orange Book for deferasirox products, including Exjade-related approvals. Its listing connected the approved drug to patent protection for the claimed therapeutic use. An Orange Book listing did not establish that every claim was valid or enforceable. It did create the regulatory framework for an ANDA applicant to submit:
After the patent expired, a Paragraph II certification became the relevant pathway for that expired patent. A later applicant could still face other listed patents covering formulations, salts, polymorphs, dosage forms, or additional uses. Were there Paragraph IV challenges involving deferasirox?Deferasirox was subject to generic-development activity and patent-certification risk during the life of the listed patents. The principal legal exposure involved ANDA applicants seeking approval for tablets, dispersible tablets, oral suspensions, or other deferasirox products. A Paragraph IV challenge to U.S. Patent 6,596,750 would have focused on:
Because the patent has expired, a current Paragraph IV challenge to this patent would have limited practical value. Generic applicants now compete primarily through post-expiration approval, manufacturing scale, product quality, supply reliability, and any remaining formulation or process patents. What related patents formed the deferasirox patent landscape?The commercial patent estate for deferasirox was broader than U.S. Patent 6,596,750. It included related patents and applications directed to:
U.S. Patent 7,049,413 is commonly associated with the U.S. deferasirox patent family and commercial protection surrounding the drug. The precise scope and expiration of each related patent must be evaluated claim by claim because a compound-use patent does not necessarily have the same term, listing status, or enforceability as a formulation patent. Core landscape categories
How strong was the patent estate?StrengthsThe patent had several commercially important strengths:
Claims 13 and 17 were materially stronger from an enforcement perspective than the broad formula claims because the active ingredient and therapeutic indication were identified with precision. VulnerabilitiesThe estate also had conventional risks:
The broad claims would likely receive narrower practical treatment than their literal chemical breadth suggests. A court would construe the structural limitations, provisos, substituent definitions, and formula drawings in the specification. The express deferasirox claims would remain the central enforcement provisions. What generic entry risks existed?Before expiration, generic entry risk depended on the combination of:
After expiration, the principal risks shifted from basic compound patent infringement to:
A generic could reduce risk by using a different formulation architecture, selecting an unclaimed solid form, relying on a permissible carved-out label where legally available, and avoiding protected manufacturing steps. How does U.S. Patent 6,596,750 compare with formulation patents?
The distinction is central to freedom-to-operate analysis. Expiration of the method patent does not automatically clear every formulation, process, or solid-state patent associated with deferasirox. What is the competitive landscape for deferasirox?Deferasirox competes in the iron-chelation market with:
Deferasirox’s commercial position came from oral administration and once-daily or simplified dosing relative to parenteral deferoxamine. The principal commercial exposure for the originator was the transition from branded Exjade to generic deferasirox after loss of patent and regulatory exclusivity. Revenue exposure was concentrated in:
The end of U.S. Patent 6,596,750 removed one of the main barriers to competition, but market erosion depended on FDA approvals, payer substitution, product availability, and differences between dispersible and film-coated tablet presentations. Does the patent create biosimilar risk?No. Deferasirox is a chemically synthesized small molecule, not a biologic. Biosimilar rules under the Public Health Service Act do not apply. The relevant competitors are ANDA-based generic drugs under the Federal Food, Drug, and Cosmetic Act. Generic applicants must establish pharmaceutical equivalence and bioequivalence or otherwise satisfy the applicable FDA requirements. The dispute framework is patent certification under the Hatch-Waxman Act, not biosimilar interchangeability. What manufacturing and geographic barriers remain?The U.S. patent expired, but manufacturing freedom to operate remains jurisdiction-specific. A company assessing global launch risk must review:
A U.S. expiration does not establish freedom to operate in Europe, Japan, China, Canada, Australia, or emerging markets. The relevant geographic analysis must separate the active compound, dosage form, manufacturing process, and therapeutic indication in each country. Key Takeaways
FAQs About U.S. Patent 6,596,750 and DeferasiroxIs deferasirox directly named in U.S. Patent 6,596,750?Yes. Deferasirox is expressly identified in claims 13 and 17 as 4-[3,5-bis(2-hydroxyphenyl)-[1,2,4]triazol-1-yl]benzoic acid. Did U.S. Patent 6,596,750 cover Exjade tablets?It covered methods of using the claimed compounds, including deferasirox, to treat metal overload and iron overload. Separate patents were needed to protect particular Exjade formulations, dosage forms, or manufacturing processes. Can a generic company now market deferasirox in the United States?The expiration of U.S. Patent 6,596,750 removes that patent as a barrier. A generic applicant must still satisfy FDA approval requirements and avoid any unexpired related patents or regulatory exclusivity. Was U.S. Patent 6,596,750 a composition-of-matter patent?No. Its issued claims are method claims. They require administration of specified compounds for treatment of metal overload or iron overload. Does the patent cover deferiprone or deferoxamine?No. The claims are directed to substituted 1,2,4-triazole compounds, including deferasirox. Deferiprone and deferoxamine have different chemical structures and are not covered by these claims. Sources
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Drugs Protected by US Patent 6,596,750
| 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: 6,596,750
| Foriegn Application Priority Data | ||
| Foreign Country | Foreign Patent Number | Foreign Patent Date |
| Switzerland | 1593/96 | Jun 25, 1996 |
International Family Members for US Patent 6,596,750
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| European Patent Office | 0914118 | ⤷ Start Trial | 300248 | Netherlands | ⤷ Start Trial |
| European Patent Office | 0914118 | ⤷ Start Trial | PA2007001 | Lithuania | ⤷ Start Trial |
| European Patent Office | 0914118 | ⤷ Start Trial | CA 2006 00035 | Denmark | ⤷ Start Trial |
| European Patent Office | 0914118 | ⤷ Start Trial | 06C0049 | France | ⤷ Start Trial |
| European Patent Office | 0914118 | ⤷ Start Trial | SPC 035/2006 | Ireland | ⤷ Start Trial |
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
