Details for Patent: 7,101,866
Summary for Patent: 7,101,866
| Title: | Anti-inflammatory androstane derivative | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | According to one aspect of the invention, there is provided a compound of formula (I) and solvates thereof. There are also provided compositions containing the compound, processes for preparing it, and its use in therapy. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Keith Biggadike, Steven John Coote, Rosalyn Kay Nice | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | GlaxoSmithKline Intellectual Property Development Ltd | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US09/958,050 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
|
Patent Claim Types: see list of patent claims | Use; Composition; Formulation; Delivery; Dosage form; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | US Patent 7,101,866: Fluticasone Furoate Claims, Patent Scope, Expiration, and Competitive LandscapeUS Patent 7,101,866 covers fluticasone furoate, including its solvates, crystalline polymorphs, pharmaceutical compositions, inhaled and nasal formulations, manufacturing intermediates, fluorination processes, and treatment methods. The patent was assigned to Glaxo Group Limited and is associated with GlaxoSmithKline's fluticasone furoate products, including Veramyst, Arnuity Ellipta, Breo Ellipta, and Trelegy Ellipta. The patent's principal commercial value was the composition-of-matter protection for fluticasone furoate and related solid forms. The patent is no longer an active US exclusion right. Public patent records generally identify September 5, 2021, as the adjusted expiration date for US 7,101,866, subject to the official USPTO term calculation and any applicable regulatory extensions. [1][2] What drug does US Patent 7,101,866 protect?The compound of formula (I) is fluticasone furoate, a synthetic glucocorticoid corticosteroid. Fluticasone furoate has the following structural characteristics:
Fluticasone furoate is a highly potent topical corticosteroid used principally for allergic rhinitis, asthma, and chronic obstructive pulmonary disease in combination products.
The claims supplied omit the actual structures for formulas I through XXIII. The claim architecture, cited products, fluoromethylation chemistry, polymorph provisions, and inhalation disclosures identify formula (I) as fluticasone furoate. When did US Patent 7,101,866 expire?US 7,101,866 issued on September 5, 2006. Public patent databases report an expiration date of September 5, 2021, reflecting patent-term adjustment from the underlying US application history. [1][2]
The expiration of this patent removed the principal US composition-of-matter barrier created by the patent. It did not automatically eliminate later patents directed to specific inhaler devices, combination products, formulations, dosage regimens, or manufacturing processes. US patent expiration should be distinguished from FDA regulatory exclusivity. FDA approval dates and Orange Book listings may continue to affect generic approval timing even after a patent has expired. [3] What are the main claim groups in US 7,101,866?The 207 claims fall into several functional groups.
The patent therefore combines a broad first-filed steroid compound claim with extensive fallback positions directed to solid-state chemistry, pulmonary delivery, manufacturing, and disease treatment. How broad is claim 1 for fluticasone furoate?Claim 1 is the principal composition claim. It covers a compound of formula (I) and solvates of that compound. For an accused product to fall within claim 1, the product generally would need to contain the claimed chemical entity or a covered solvate. A formulation containing fluticasone furoate would ordinarily remain within the compound claim regardless of whether it is delivered as:
Claim 1 is materially stronger than the formulation and method claims because it does not depend on a particular excipient, device, dose, route, disease, or manufacturing step. Claim 2 narrows the compound to unsolvated material. Claims 3 through 5 further address three claimed solid forms. Claims 6 and 7 cover essentially stoichiometric isopropanol and methyl ethyl ketone solvates. What polymorphs and solvates are protected?The patent claims three solid forms and two solvent-associated forms. Form 1Claim 3 identifies Form 1 as an unsolvated polymorph characterized by an XRPD peak at approximately 18.9 degrees 2Theta. Claims 76 through 119 repeat the Form 1 composition, formulation, method, combination, and inhaler claims. Form 2Claim 4 covers an unsolvated Form 2 polymorph. Claim 39 describes preparation by dissolving fluticasone furoate in methanol or dry dichloromethane followed by recrystallization. Form 3Claim 5 covers a Form 3 polymorph. Claim 40 describes preparation using dichloromethane in the presence of water. SolvatesClaims 6 and 7 cover crystalline solvates with:
These provisions are important because corticosteroid solid forms can affect particle engineering, storage stability, dissolution, aerosol performance, and manufacturing reproducibility. The supplied text contains internal drafting inconsistencies. Claims 4 and 5 refer to Form 2 and Form 3 but repeat language referring to "Form 1 polymorph." Claim 40 refers to a "solvated Form 3 polymorph" and then describes production of an "unsolvated Form 3 polymorph." Those errors require review of the issued patent, certificate of correction, prosecution history, and claim-construction record before relying on the literal text. What inhalation formulations are covered?Claims 8 through 18 cover compositions and aerosol systems containing fluticasone furoate or a physiologically acceptable solvate. The principal formulation categories are:
Claims 76 onward duplicate much of this coverage for Forms 1, 2, and 3. The formulation claims are narrower than claim 1. A competing product containing the same active compound could avoid a particular formulation claim by using a different polymorph, carrier, propellant system, particle-engineering approach, or device configuration. That product would still have faced claim 1 while the composition patent was active. What manufacturing processes are claimed?The process claims address both the final fluorinated corticosteroid and key intermediates. Fluoromethylation and alkylationClaims 22 and 23 cover alkylation of compound (II), including reaction with a fluoromethyl halide. This is directed to formation of the fluoromethyl-containing portion of fluticasone furoate. FluorinationClaims 41 and 45 cover reaction of intermediates with a fluorine source. These claims are directed to installing fluorine atoms or converting a leaving group into a fluorinated product. Protection and deprotectionClaims 42 through 46 cover protection, masking, deprotection, and unmasking of the 11-beta-hydroxyl and 3-carbonyl groups. Intermediate productionClaims 26 through 38 cover compound (II), compound (IIA), and additional protected or functionalized intermediates. Claims 29 through 31 describe a process involving:
Process claims can create manufacturing risk even where a competitor does not market the same solid form. Their practical value depends on whether the accused manufacturing route is observable and whether the process limitations are met. What diseases and routes of administration are claimed?Claims 21 and 48 through 62 cover treatment of inflammatory and allergic disorders. The listed conditions include:
The claimed routes include inhalation, nebulization, topical administration, oral administration, buccal administration, sublingual administration, parenteral administration, local administration, and rectal administration. Claims 50, 62, 93, 105, 137, 149, 181, and 193 specify once-daily administration. These method claims were commercially relevant to once-daily inhaled corticosteroid products. Their practical enforcement value is narrower than a compound claim because an infringement case may require proof concerning the approved indication, label, prescribing behavior, or induced infringement. What combinations are covered?Claims 19 and 20 cover combinations with another therapeutically active agent and, more specifically, with a PDE4 inhibitor. Claims 68 through 70 identify antihistamines, NSAIDs, antiinfectives, and selected PDE4 inhibitors. The later claim sets directed to Forms 1, 2, and 3 include beta-2 agonists such as:
These claims provided a platform for combination strategies involving an inhaled corticosteroid and a bronchodilator. Later GSK product patents, rather than US 7,101,866 alone, are more important for the current exclusivity analysis of Breo Ellipta and Trelegy Ellipta. What was the Orange Book status?US 7,101,866 has been associated with FDA-approved fluticasone furoate products and combination products. The relevant FDA products include Arnuity Ellipta, Breo Ellipta, and related fluticasone furoate products. [3][4] The Orange Book significance of this patent was greatest before its reported 2021 expiration. After expiration, a generic applicant could no longer be blocked by this patent alone, although other listed patents could remain relevant. Orange Book analysis should distinguish:
An Orange Book listing does not establish validity or infringement. It records patents submitted by the NDA holder and associated with an approved drug product. Were there Paragraph IV challenges?Generic applicants seeking approval before patent expiration could have submitted Paragraph IV certifications against listed patents. The supplied information does not establish a complete list of applicants, certification dates, notices, or litigation outcomes. For fluticasone furoate products, the relevant competitive pathways included:
Because US 7,101,866 expired in 2021, a later ANDA applicant no longer needed to challenge this patent to obtain approval after expiration. Remaining barriers would have been later-listed patents, product-specific device patents, formulation patents, and FDA requirements for demonstrating pharmaceutical equivalence and equivalent performance. How strong was the patent estate?
The estate's strongest commercial position came from the compound claim. The extensive formulation and process claims improved defensive coverage but were more dependent on technical evidence and claim-specific proof. How does US 7,101,866 compare with later fluticasone furoate patents?US 7,101,866 is an early foundational patent. Later patents generally shifted toward:
The competitive patent question therefore changed after 2021. Before expiration, a generic fluticasone furoate product faced a direct composition claim. After expiration, the central issue became whether the generic product or substitute product practiced later product, device, formulation, or combination patents. What generic launch risks existed?Nasal sprayGeneric fluticasone furoate nasal spray presented the clearest post-expiration opportunity. Regulatory issues included:
Dry powder inhalerGeneric inhaled fluticasone furoate products face greater technical barriers because approval depends on the interaction between the powder, inhaler, emitted dose, aerodynamic particle-size distribution, and device operation. Combination inhalersBreo Ellipta and Trelegy Ellipta have more complex patent exposure because the relevant product includes multiple active ingredients and a proprietary delivery device. A generic applicant may need to address patents covering the combination, dose, device, formulation, or method of use even after expiration of US 7,101,866. ManufacturingAlternative routes may reduce process-patent exposure, but they must produce the same active ingredient at pharmaceutical quality. The process claims in US 7,101,866 were more relevant to suppliers and manufacturers than to a finished-product distributor. Key Takeaways
FAQsWhat is US Patent 7,101,866 commonly associated with?It is commonly associated with fluticasone furoate, an inhaled and intranasal corticosteroid developed by GlaxoSmithKline. Does US 7,101,866 cover fluticasone propionate?No. The claim architecture identifies fluticasone furoate, which is chemically distinct from fluticasone propionate. Does expiration of US 7,101,866 permit generic Breo Ellipta?No. Expiration of this patent removes one barrier but does not eliminate later patents covering vilanterol combinations, the Ellipta device, formulation characteristics, dosage strengths, or approved methods of use. Are Forms 1, 2, and 3 still patent-protected in the United States?The forms were protected by US 7,101,866 only for the patent's term. Any continuing protection would need to arise from separate, later-expiring patents. Is a fluticasone furoate nasal spray automatically bioequivalent to Veramyst?No. FDA approval requires the applicable regulatory showing for the dosage form and device, including pharmaceutical equivalence and relevant local-delivery performance criteria. [3] References
More… ↓ |
Drugs Protected by US Patent 7,101,866
| 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: 7,101,866
| Foriegn Application Priority Data | ||
| Foreign Country | Foreign Patent Number | Foreign Patent Date |
| United Kingdom | 0019172 | Aug 05, 2000 |
| PCT Information | |||
| PCT Filed | August 03, 2001 | PCT Application Number: | PCT/GB01/03495 |
| PCT Publication Date: | February 14, 2002 | PCT Publication Number: | WO02/12265 |
International Family Members for US Patent 7,101,866
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| European Patent Office | 1305329 | ⤷ Start Trial | 91429 | Luxembourg | ⤷ Start Trial |
| European Patent Office | 1305329 | ⤷ Start Trial | CA 2008 00022 | Denmark | ⤷ Start Trial |
| European Patent Office | 1305329 | ⤷ Start Trial | 300343 | Netherlands | ⤷ Start Trial |
| European Patent Office | 1305329 | ⤷ Start Trial | SPC011/2008 | Ireland | ⤷ Start Trial |
| European Patent Office | 1305329 | ⤷ Start Trial | 08C0014 | France | ⤷ Start Trial |
| European Patent Office | 1305329 | ⤷ Start Trial | C01305329/01 | Switzerland | ⤷ Start Trial |
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
