US Patent 7,265,099: Scope, Claims, Expiration, and Sugammadex Patent Landscape

US Patent 7,265,099 is a foundational Organon patent covering the use of cyclodextrins, particularly modified gamma-cyclodextrins, to reverse neuromuscular blockade caused by rocuronium, vecuronium, and related neuromuscular blocking agents. The patent issued September 4, 2007, and its principal US patent term expired in December 2020, subject to any applicable pediatric extension. The claims are method-of-treatment claims, not composition-of-matter claims, and are centered on parenteral administration of a cyclodextrin capable of forming a guest-host complex with the blocking agent.

The commercial product most closely associated with the patent is sugammadex sodium, marketed by Merck as Bridion. Sugammadex is a modified gamma-cyclodextrin designed to encapsulate rocuronium and, to a lesser extent, vecuronium. Because US Patent 7,265,099 has expired, it does not currently block an ANDA applicant from practicing the claimed reversal method. Later formulation, manufacturing, dosing, or use patents require separate analysis.

What does US Patent 7,265,099 cover?

The patent covers parenteral administration of a gamma-cyclodextrin or beta-cyclodextrin derivative to reverse neuromuscular blockade caused by specified acetylcholine-receptor antagonists.

The core technical concept is host-guest complexation:

The neuromuscular blocking drug binds reversibly to the acetylcholine receptor.
A cyclodextrin derivative is administered intravenously or by another parenteral route.
The cyclodextrin forms a complex with the blocking drug in the extracellular compartment.
Free drug concentration falls.
Neuromuscular transmission is restored.

This mechanism differs from acetylcholinesterase inhibition. Neostigmine increases acetylcholine concentration and indirectly competes with the blocking agent. Sugammadex directly removes rocuronium or vecuronium from pharmacologic availability through encapsulation.

The patent is therefore directed to pharmacologic reversal by molecular sequestration rather than enzymatic or receptor-level antagonism.

How do the three claims differ?

Claim	Cyclodextrin class	Covered blocking agents	Principal limitation
1	Gamma-cyclodextrin or derivative	Rocuronium, vecuronium, pancuronium, rapacuronium, mivacurium, cis-atracurium, tubocurarine	Parenteral reversal using a qualifying gamma-cyclodextrin derivative
2	Gamma-cyclodextrin or derivative	Rocuronium or vecuronium	Narrowed version of claim 1
3	Beta-cyclodextrin or derivative	Rocuronium	Separate method category directed to beta-cyclodextrins

Claim 1: broad gamma-cyclodextrin method

Claim 1 is the principal broad method claim. It requires all of the following:

A patient with drug-induced neuromuscular block.
A clinically used neuromuscular blocking agent.
The blocking agent must act through reversible binding to the acetylcholine receptor.
The agent must be one of seven listed compounds.
Parenteral administration of an effective amount of gamma-cyclodextrin or a derivative.
The cyclodextrin must be capable of forming a guest-host complex with the causative blocking agent.
The purpose must be reversal of the neuromuscular block.

The list of blocking agents is closed. A later-developed neuromuscular blocking agent outside the list would not literally satisfy the enumerated-agent limitation, absent a doctrine-of-equivalents theory.

Rocuronium and vecuronium are the commercially important members of the list. Rapacuronium was withdrawn from the US market, and mivacurium, atracurium, pancuronium, and tubocurarine have substantially smaller current commercial relevance in the United States.

Claim 2: narrowed rocuronium and vecuronium claim

Claim 2 depends on claim 1 and narrows the blocking agent to rocuronium or vecuronium. It retains every other limitation of claim 1, including:

gamma-cyclodextrin or a derivative;
parenteral administration;
guest-host complex formation; and
reversal of an established neuromuscular block.

Claim 2 is commercially aligned with the principal clinical use of sugammadex. It is narrower in drug coverage but remains broad as to the particular gamma-cyclodextrin derivative, provided the derivative satisfies the complexation and functional requirements.

Claim 3: beta-cyclodextrin and rocuronium

Claim 3 is structurally separate from claim 1. It requires:

beta-cyclodextrin or a derivative;
rocuronium as the neuromuscular blocking agent;
parenteral administration; and
reversal through guest-host complexation.

Because sugammadex is a modified gamma-cyclodextrin, claim 3 is not the principal claim that maps to commercial sugammadex. It captures an alternative cyclodextrin architecture and may have been important during early discovery work or for protecting non-gamma-cyclodextrin approaches.

What products and technologies fall within the claims?

Sugammadex and modified gamma-cyclodextrins

Sugammadex is the most commercially significant molecule within the claim scope. It is a modified gamma-cyclodextrin with hydrophobic substituents that improve binding to steroidal neuromuscular blocking agents, especially rocuronium.

The claimed technology is broader than sugammadex itself. Claim 1 does not recite a specific chemical structure. It covers a gamma-cyclodextrin derivative if the derivative is:

administered parenterally;
effective in reversing the block; and
capable of forming a guest-host complex with the relevant neuromuscular blocking agent.

That functional scope could encompass multiple derivatives, subject to written-description, enablement, anticipation, obviousness, and claim-construction limits.

Rocuronium reversal

Rocuronium is the strongest commercial fit. It is a steroidal neuromuscular blocking agent and the principal target of sugammadex. A product administered to reverse rocuronium-induced neuromuscular blockade would have been a direct infringement risk during the patent term if it used a qualifying gamma-cyclodextrin or beta-cyclodextrin derivative.

Vecuronium reversal

Vecuronium is also expressly covered. Sugammadex can reverse vecuronium-induced blockade, although its clinical development and commercial positioning have focused primarily on rocuronium.

Other listed agents

The remaining agents have different commercial and technical relevance:

Agent	Claim relevance	Current commercial significance
Pancuronium	Expressly listed in claim 1	Limited compared with rocuronium
Rapacuronium	Expressly listed in claim 1	Withdrawn from the US market
Mivacurium	Expressly listed in claim 1	Limited
Cis-atracurium	Expressly listed in claim 1	Used in selected clinical settings
Tubocurarine	Expressly listed in claim 1	Historical or limited use

The claim does not require that the blocking agent be approved in the United States at the time of infringement. The phrase "clinically-used" could raise a claim-construction issue, but the listed agents provide substantial context for interpreting the term.

What are the principal claim-construction issues?

Several phrases define the practical boundaries of the patent.

"Parenterally administering"

This limitation requires administration by a non-enteral route. Intravenous administration is the commercially relevant route for sugammadex. Oral or other enteral administration would not literally satisfy this limitation.

An accused product administered intravenously would meet this element if the remaining limitations were satisfied.

"Effective amount"

The claim does not specify a fixed dose, concentration, dose-to-weight ratio, or administration time. The relevant amount is the amount effective to reverse the neuromuscular block in the patient.

This provides flexibility across patient populations and dosing regimens but may create disputes over whether a particular dose is clinically effective.

"Capable of forming a guest-host complex"

This is a functional limitation directed to molecular interaction. The cyclodextrin must be capable of complexing with the blocking agent responsible for the paralysis.

The limitation is narrower than merely administering any cyclodextrin. A derivative without relevant affinity or without demonstrated ability to reverse the block would not automatically fall within the claim.

"Reversal of drug-induced neuromuscular block"

The claimed method requires treatment of an existing block. Prophylactic administration before neuromuscular blockade, or use for a purpose unrelated to reversal, presents a different infringement analysis.

"Neuromuscular blocking agent which acts by reversible binding to the acetylcholine receptor"

This limitation ties the claims to a particular pharmacology. The blocking drug must act through reversible receptor binding rather than through an unrelated mechanism such as irreversible receptor modification or a nonreceptor pathway.

What is the patent term and US exclusivity history?

Event	Date or status
US patent issued	September 4, 2007
Patent number	US 7,265,099 B2
Original assignee	Organon-related entity
Commercial product associated with technology	Sugammadex sodium, Bridion
FDA approval of Bridion	December 15, 2015
Standard US patent term	Generally 20 years from the earliest effective nonprovisional filing date
Principal patent expiration	December 2020
Possible pediatric extension	Up to six additional months if granted and applicable
Current status	Expired; no active exclusion based solely on this patent

The exact enforceability period must be distinguished from FDA regulatory exclusivity. Bridion received FDA approval in 2015. Any new-chemical-entity or other regulatory exclusivity period was separate from the patent term and did not extend the patent itself. FDA approval, patent expiry, and pediatric exclusivity are separate legal events under the Hatch-Waxman framework [2, 3].

What was the Orange Book status of US Patent 7,265,099?

US Patent 7,265,099 was associated with the US regulatory protection for Bridion and was listed in FDA Orange Book materials for the product. The relevant commercial product was sugammadex injection.

An Orange Book listing can support a reference-product sponsor’s patent certification framework when an ANDA applicant seeks approval. During the patent term, an ANDA applicant could have been required to submit:

a Paragraph III certification stating that the applicant would wait for patent expiry;
a Paragraph IV certification alleging that the patent was invalid, unenforceable, or not infringed; or
another certification where applicable.

After patent expiration, the patent no longer independently prevents approval or commercial launch. An applicant still must satisfy FDA requirements for pharmaceutical equivalence, bioequivalence, labeling, manufacturing, and quality.

Were Paragraph IV challenges and litigation material to this patent?

The relevant litigation risk during the active term would have centered on an ANDA applicant seeking approval for generic sugammadex injection or a therapeutically equivalent product.

A Paragraph IV case would likely have focused on:

whether the proposed product was intended to reverse rocuronium or vecuronium block;
whether the active ingredient was a gamma-cyclodextrin derivative;
whether the proposed use was parenteral administration;
whether the derivative was capable of guest-host complex formation;
whether the claims were anticipated or obvious in view of prior cyclodextrin and neuromuscular-blockade research; and
whether the patent adequately described and enabled the full functional scope.

Because US 7,265,099 expired in 2020, a current Paragraph IV dispute involving only this patent would have little commercial blocking value. A later entrant would focus instead on any unexpired patents covering formulation, manufacturing, dosage, stability, impurity control, or narrower patient-treatment protocols.

No settlement agreement can be inferred merely from an Orange Book listing. A settlement would require a separate litigation or regulatory record.

How strong was the patent estate?

Strengths

The patent had several features favorable to enforcement during its term:

It targeted a clinically important reversal method.
It covered the commercially central rocuronium and vecuronium indications.
Claim 2 aligned closely with the commercial use of sugammadex.
The claims were not limited to a single named compound.
The guest-host mechanism provided a technical distinction from neostigmine-based reversal.
Parenteral administration matched the approved clinical route.

Limitations

The patent also had structural limitations:

It contained method claims rather than a pure composition claim.
The agent list in claim 1 was closed.
The claims depended on functional language such as "effective amount" and "capable of forming."
The patent did not, based on the supplied claims, independently claim every formulation, manufacturing process, crystalline form, impurity profile, or dosing schedule.
Expiration removed the primary exclusionary effect.

The strongest historical claim was claim 2 because it combined the commercial drug targets with the gamma-cyclodextrin class used by sugammadex. Claim 3 was technically broader as to beta-cyclodextrin derivatives but commercially less aligned with the marketed product.

What generic entry risks exist after patent expiration?

Patent expiry removes the principal method-of-use barrier, but generic or follow-on manufacturers still face several regulatory and commercial requirements.

FDA requirements

A generic applicant may need to demonstrate:

pharmaceutical equivalence to the reference injection;
bioequivalence or an FDA-accepted alternative pathway;
equivalent active ingredient strength;
appropriate inactive ingredients;
sterility and injectable-product controls;
container-closure compatibility;
stability over the labeled shelf life; and
compliance with current good manufacturing practice.

Sugammadex is a small-molecule drug, not a biologic. Biosimilar approval under the Public Health Service Act is therefore not the relevant pathway. The relevant pathway is generally an ANDA or, depending on the product and regulatory strategy, a 505(b)(2) application.

Commercial risks

The principal commercial risks after expiry are:

injectable manufacturing capacity;
hospital contracting and formulary access;
pricing pressure;
supply reliability;
competition from neostigmine and glycopyrrolate;
physician familiarity with sugammadex;
residual unexpired patents in other patent families; and
potential differences in labeling or approved presentations.

What later patents could still matter?

US Patent 7,265,099 should not be treated as the entire sugammadex patent estate. A freedom-to-operate review should separately examine patents directed to:

specific sugammadex chemical structures;
synthetic intermediates;
manufacturing and purification processes;
crystalline or solid-state forms;
injectable formulations;
concentration and pH control;
stability and storage;
dosing by depth of neuromuscular blockade;
reversal of rocuronium versus vecuronium;
use in renal impairment or special populations;
combination treatment with other anesthetic agents; and
manufacturing impurity specifications.

A generic product may avoid an expired method claim yet face risk under an unexpired process or formulation patent. Conversely, process patents generally do not prevent a manufacturer from using a different noninfringing manufacturing route.

How does US Patent 7,265,099 compare with the broader competitive landscape?

Technology	Mechanism	Patent relevance	Current competitive position
Sugammadex	Direct encapsulation of rocuronium or vecuronium	Closely aligned with US 7,265,099	Direct reversal option
Neostigmine plus anticholinergic	Increases acetylcholine and competitively reverses block	Outside the cyclodextrin claims	Lower-cost alternative with different clinical profile
Modified beta-cyclodextrins	Guest-host complexation	Addressed by claim 3 for rocuronium	Alternative technical platform
New cyclodextrin derivatives	Encapsulation of steroidal blockers	May implicate later composition or use patents	Potential follow-on innovation
Biosimilars	Not applicable	Sugammadex is a small molecule	Generic, not biosimilar, pathway

Key Takeaways

US Patent 7,265,099 covers parenteral reversal of neuromuscular blockade using cyclodextrin derivatives capable of forming guest-host complexes with specified blocking agents.
Claim 1 covers gamma-cyclodextrin derivatives and seven listed neuromuscular blocking agents.
Claim 2 narrows claim 1 to rocuronium or vecuronium and is the most commercially relevant claim for sugammadex.
Claim 3 covers beta-cyclodextrin derivatives used to reverse rocuronium-induced blockade.
Sugammadex is the principal commercial technology associated with the patent, but the patent claims are not limited to the sugammadex structure.
The patent issued in 2007 and expired in December 2020, subject to any applicable pediatric extension.
Current generic entry is not blocked by this expired patent alone.
Sugammadex is a small molecule, so generic ANDA analysis, not biosimilar analysis, is the relevant regulatory framework.
Later formulation, manufacturing, dosing, and composition patents may still affect freedom to operate.
The historical patent strength was greatest for claim 2 because it matched the principal rocuronium and vecuronium reversal use of sugammadex.

FAQs About US Patent 7,265,099 and Sugammadex

Does US Patent 7,265,099 cover sugammadex itself?

No. The supplied claims are method claims. They cover specified therapeutic use of cyclodextrin derivatives, including the use of a qualifying modified gamma-cyclodextrin to reverse rocuronium or vecuronium blockade. They do not recite the complete chemical structure of sugammadex.

Can a generic manufacturer launch sugammadex after expiration of US 7,265,099?

Expiration removes the blocking effect of this patent. Launch still depends on FDA approval, compliance with applicable Orange Book certifications, and the absence of other enforceable patents or regulatory barriers.

Is claim 3 relevant to commercial sugammadex?

Claim 3 is less directly aligned with commercial sugammadex because it requires a beta-cyclodextrin or derivative, while sugammadex is a modified gamma-cyclodextrin. It protects an alternative cyclodextrin approach for rocuronium reversal.

Does the patent cover reversal with neostigmine?

No. Neostigmine does not satisfy the cyclodextrin limitation. The claims require parenteral administration of a gamma- or beta-cyclodextrin or derivative capable of forming the specified guest-host complex.

Could a new neuromuscular blocker fall within claim 1?

Only if it satisfies the claim's listed-agent limitation. Because claim 1 identifies specific compounds, a new agent outside that list would not literally fall within the claim.

What patent category presents the greatest residual risk for generic sugammadex?

The greatest residual risk would ordinarily come from unexpired patents directed to the active pharmaceutical ingredient, injectable formulation, manufacturing process, impurity control, or a commercially necessary dosing or use limitation, rather than from US Patent 7,265,099 itself.

References

United States Patent and Trademark Office. (2007). U.S. Patent No. 7,265,099 B2: Cyclodextrin derivatives for the reversal of neuromuscular block.
U.S. Food and Drug Administration. (2015). Bridion (sugammadex sodium) injection prescribing information.
U.S. Food and Drug Administration. (2024). Approved drug products with therapeutic equivalence evaluations, Orange Book.
United States Code, 35 U.S.C. § 154. Patent term.
United States Code, 21 U.S.C. § 355. New drug applications and abbreviated applications.

Foriegn Application Priority Data
Foreign Country	Foreign Patent Number	Foreign Patent Date
	99306411	Aug 13, 1999

PCT Information
PCT Filed	August 07, 2000	PCT Application Number:	PCT/EP00/07694
PCT Publication Date:	February 22, 2001	PCT Publication Number:	WO01/12202

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
Argentina	025103	⤷ Start Trial
Australia	7508900	⤷ Start Trial
Australia	780416	⤷ Start Trial
Brazil	0013126	⤷ Start Trial
>Country	>Patent Number	>Estimated Expiration	>Supplementary Protection Certificate	>SPC Country	>SPC Expiration

Summary for Patent: 7,265,099