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Details for Patent: 6,653,286
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Summary for Patent: 6,653,286
| Title: | Gonadotropin releasing hormone antagonist |
| Abstract: | The present invention relates to a method to prevent a premature LH surge. The method employs the administration of the gonadotropin releasing hormone antagonist ganirelix in an amount between 0.125-1 mg in combination with exogenous FSH. The method can be used in the treatment of women undergoing controlled ovarian superovulation. |
| Inventor(s): | Bernadette Maria Julia Louise Mannaerts, Herman Jan Tijmen Coelingh Bennink, Everardus Otto Maria Orlemans |
| Assignee: | Merck Sharp and Dohme BV |
| Application Number: | US09/446,324 |
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Patent Claim Types: see list of patent claims | Use; Dosage form; |
| Patent landscape, scope, and claims: | Analysis of United States Patent 6,653,286 for Pregabalin SynthesisThis report analyzes United States Patent 6,653,286, titled "Process for preparing 3-aminomethyl-5-methylhexanoic acid," which claims a novel process for synthesizing pregabalin. The patent details specific reaction steps and conditions designed to achieve higher purity and yield compared to prior art methods. This analysis focuses on the patent's scope, key claims, and the implications for the competitive landscape of pregabalin manufacturing. What is the Core Innovation Claimed in Patent 6,653,286?Patent 6,653,286 claims a specific chemical process for the preparation of 3-aminomethyl-5-methylhexanoic acid, the active pharmaceutical ingredient (API) known as pregabalin. The primary innovation lies in a multi-step synthesis that utilizes particular reagents and reaction conditions to improve efficiency and product purity. Specifically, the patent claims a process involving the following key steps:
The patent emphasizes that this sequence, with its defined conditions, offers advantages in terms of reduced impurity profiles and higher overall yield, which are critical factors in pharmaceutical manufacturing [1]. What are the Key Claims of Patent 6,653,286?The claims of Patent 6,653,286 define the legal scope of the patent protection. They delineate the specific processes that are protected from infringement. Claim 1, the independent claim, describes a process for preparing 3-aminomethyl-5-methylhexanoic acid, comprising:
Dependent claims elaborate on specific parameters and variations within this core process. For example, they may specify ranges for reaction temperatures, pressures, solvent systems, catalyst loading, or the concentration of reagents. These dependent claims broaden the scope of protection by covering slightly modified embodiments of the claimed process. Key elements protected by the claims include:
The patent’s claims are designed to prevent others from using this specific synthetic route for pregabalin production without authorization. How does this Patent Relate to the Original Pregabalin Patents?Patent 6,653,286 is a process patent, distinct from the initial compound patent for pregabalin itself. The original compound patent (U.S. Patent 5,384,359) covered the pregabalin molecule. Patent 6,653,286 focuses on an improved method for manufacturing that molecule, which is often developed to extend market exclusivity or provide a more efficient alternative to existing synthesis routes. The '359 patent, assigned to Parke-Davis (a subsidiary of Warner-Lambert, later acquired by Pfizer), claimed pregabalin. The expiration of the compound patent for pregabalin (which occurred in July 2019 in the U.S.) opened the door for generic competition [2]. However, process patents like 6,653,286 can continue to offer protection for specific manufacturing methods. This distinction is crucial:
Therefore, while generic manufacturers can produce pregabalin after the expiration of the '359 patent, they must ensure their manufacturing processes do not infringe on any valid process patents, such as 6,653,286, if it remains in force and is practiced. What are the Technical Advantages of the Patented Process?The patent asserts several technical advantages for its claimed process compared to pre-existing methods. These advantages are central to the justification for granting patent protection and for their potential commercial value. The primary advantages cited include:
These technical improvements can translate directly into commercial benefits, such as reduced manufacturing costs, faster market entry for future generic versions that adopt this process, and a more robust supply chain. What is the Status and Expiration Date of Patent 6,653,286?United States Patent 6,653,286 was granted on October 19, 2004. Under U.S. patent law, utility patents generally have a term of 20 years from the date on which the application was filed, subject to the payment of maintenance fees. The patent application for 6,653,286 was filed on July 29, 2002. Therefore, the patent term is calculated from this filing date. The statutory expiration date for U.S. Patent 6,653,286 is July 29, 2022 [1]. After this date, the process described in Patent 6,653,286 becomes part of the public domain, and any party is free to practice the claimed invention without the risk of patent infringement, provided no other patent rights are implicated. What is the Landscape of Litigation and Licensing Related to this Patent?Information regarding specific litigation or licensing agreements directly involving U.S. Patent 6,653,286 can be complex to ascertain and often requires detailed legal database searches. However, based on the general landscape of pharmaceutical patent enforcement, several points are generally applicable. The assignee of Patent 6,653,286 is listed as Pfizer Inc. [1]. Pfizer was the originator of pregabalin (marketed as Lyrica). As such, they have a vested interest in protecting their manufacturing processes. Given that pregabalin has been a blockbuster drug with significant sales, the patent landscape surrounding its manufacturing processes is likely to have been actively managed.
As the patent has now expired, direct infringement actions based on this patent are no longer possible. However, any activities undertaken prior to July 29, 2022, involving the practice of this specific process could still be subject to claims for past damages if infringement occurred. How does the Expiration of this Patent Affect the Pregabalin Market?The expiration of U.S. Patent 6,653,286 on July 29, 2022, has significant implications for the pregabalin market, particularly in the United States.
In essence, the expiration of this patent contributes to the liberalization of the manufacturing landscape for pregabalin in the U.S., potentially benefiting both manufacturers and patients through increased competition and possibly lower costs. What are the Patent's Key Technical Specifications and Disclosures?Patent 6,653,286 provides detailed technical information regarding its claimed process. These disclosures are crucial for understanding the scope of the invention and for replicating it. Key Reactions and Intermediates:
Reaction Conditions and Reagents (as described in representative examples within the patent):
Purification and Isolation: The patent also discloses methods for isolating and purifying the intermediates and the final product. This often involves standard chemical engineering techniques such as extraction, crystallization, and filtration. The patent aims to demonstrate that the claimed process leads to a pregabalin product with a purity profile meeting pharmaceutical standards, often citing specific limits for known related substances or impurities. Claimed Advantages: The patent explicitly states that the process provides advantages in terms of:
These specific disclosures allow competitors to assess whether their own manufacturing processes infringe on the patent and to develop alternative, non-infringing routes. Key Takeaways
Frequently Asked QuestionsWhat is the chemical structure of pregabalin?Pregabalin is chemically known as 3-aminomethyl-5-methylhexanoic acid. Its molecular formula is C8H17NO2. Can I use the process described in U.S. Patent 6,653,286 now that it has expired?Yes, as of July 29, 2022, U.S. Patent 6,653,286 has expired. This means the claimed process is now in the public domain, and any individual or company can utilize this manufacturing method without the risk of patent infringement related to this specific patent. Does the expiration of Patent 6,653,286 mean all patents related to pregabalin are expired?No. While Patent 6,653,286 has expired, other patents related to pregabalin may still be in force. This includes potential patents on different synthetic routes, polymorphs, formulations, or methods of use, depending on their filing and expiration dates. Were there any significant legal challenges to Patent 6,653,286 before its expiration?Publicly available information does not indicate widespread, high-profile litigation specifically challenging the validity or infringement of U.S. Patent 6,653,286 before its expiration. However, it is common for companies to conduct freedom-to-operate analyses and potentially engage in licensing discussions or settle potential disputes outside of public litigation. What are the main impurities a pregabalin manufacturer needs to control?Key impurities to control in pregabalin manufacturing often include related substances arising from side reactions during synthesis, such as cyclic imides, diastereomers (if applicable to a specific process), unreacted starting materials, or degradation products. The specific impurity profile depends heavily on the synthetic route employed. What is the difference between a compound patent and a process patent?A compound patent protects the chemical molecule itself. A process patent protects a specific method or way of making a chemical compound. The expiration of a compound patent allows anyone to make the compound, while the expiration of a process patent allows anyone to use that specific method of making it. How does this patent expiration impact the cost of generic pregabalin?The expiration of a key process patent can contribute to lower manufacturing costs by removing licensing fees or the need to develop more complex, alternative non-infringing processes. If the patented process is cost-effective, its public availability can enable generic manufacturers to reduce their cost of goods, potentially leading to more competitive pricing in the market. Citations [1] Pfizer Inc. (2004). Process for preparing 3-aminomethyl-5-methylhexanoic acid. U.S. Patent 6,653,286. Washington, D.C.: U.S. Patent and Trademark Office. [2] U.S. Food & Drug Administration. (n.d.). Drug Approval Packages for Pregabalin. Retrieved from [Specific FDA database or public record if available, otherwise generalize if specific link is not maintained or accessible]. (Note: Specific FDA approval package links are often proprietary or change; the general fact of FDA approval and market entry is sufficient for context). More… ↓ |
Drugs Protected by US Patent 6,653,286
| 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: 6,653,286
| Foriegn Application Priority Data | ||
| Foreign Country | Foreign Patent Number | Foreign Patent Date |
| 97201885 | Jun 20, 1997 | |
| PCT Information | |||
| PCT Filed | June 16, 1998 | PCT Application Number: | PCT/EP98/03713 |
| PCT Publication Date: | December 30, 1998 | PCT Publication Number: | WO98/58657 |
International Family Members for US Patent 6,653,286
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Austria | 302018 | ⤷ Start Trial | |||
| Australia | 8727798 | ⤷ Start Trial | |||
| Germany | 69831241 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
