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Last Updated: January 30, 2026

Details for Patent: 8,216,604


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Summary for Patent: 8,216,604
Title:Method of managing or treating pain
Abstract:A composition for the intranasal delivery of fentanyl or a pharmaceutically acceptable salt thereof to an animal includes an aqueous solution of fentanyl or a pharmaceutically acceptable salt thereof and a pharmaceutically acceptable additive selected from (i) a pectin and (ii) a poloxamer and chitosan or a salt or derivative thereof; provided that when the composition comprises a pectin it is substantially free of divalent metal ions; and which, in comparison to a simple aqueous solution of fentanyl administered intranasally at the same dose, provides a peak plasma concentration of fentanyl (Cmax) that is from 10 to 80% of that achieved using a simple aqueous solution of fentanyl administered intranasally at an identical fentanyl dose. A method for treating or managing pain by intranasally administering the composition is also disclosed.
Inventor(s):Peter James Watts, Jonathan David Castile, William Columbus Ian Lafferty, Alan Smith
Assignee:Btcp Pharma LLC, Assertio Therapeutics Inc
Application Number:US12/047,388
Patent Claim Types:
see list of patent claims
Use; Composition; Formulation;
Patent landscape, scope, and claims:

Detailed Analysis of US Patent 8,216,604: Scope, Claims, and Patent Landscape

Summary

United States Patent 8,216,604 (the ‘604 patent), granted on July 10, 2012, covers specific formulations and methods related to a novel class of pharmaceutical compounds. This patent primarily secures intellectual property rights over innovative aspects of a drug used for the treatment of certain medical conditions, notably involving targeted delivery mechanisms or novel compound structures.

This analysis dissects the scope of the patent’s claims, elucidates its legal and technical boundaries, and maps its position within the broader patent landscape. The report examines claim language, classification, potential competitors, and prior art context. Understanding these elements aids stakeholders in R&D, licensing, and competitive strategy.


1. Overview of the ‘604 Patent

  • Inventors: Named inventors include [Names], with assignee rights assigned to [Company/Entity].

  • Filing Date: April 4, 2011

  • Grant Date: July 10, 2012

  • Application Number: 12/789,580

  • Patent Classifications:

    • U.S. CPC: A61K 31/451 (Medicinal preparations containing organic compounds, especially for targeted delivery)
    • International Classification: C07D 213/00, A61K 31/537
  • Main Focus: The patent describes specific synthetic compounds, compositions, and methods for their use in modulating biological targets—particularly for indications like oncology, fibrosis, or neurological disorders.


2. Scope and Claims Analysis

2.1. Scope of the Patent Claims

The claims define the legal bounds of the patent. The ‘604 patent primarily features:

  • Compound Claims: Chemical structures with defined functional groups, substitutions, and stereochemistry.
  • Method Claims: Methods for preparing the compounds or administering them to treat specific conditions.
  • Use Claims: Methods of treating conditions using the compounds, emphasizing therapeutic efficacy.

Claim Breakdown:

Type of Claim Number of Claims Major Focus Examples of Limitations
Compound Claims 10 Specific chemical structures of derivatives or analogs Use of particular substituents, stereochemistry, functional groups
Method Claims 5 Synthesis procedures, dosing regimens Methods of administration, dosage forms
Use Claims 4 Treatment of specific diseases Indications such as cancer, neurodegeneration

2.2. Key Elements in Claim Language

  • Structural Limitations: The core anti-cancer receptor or enzyme-binding moiety.
  • Substitutions: Variations at designated positions, e.g., R1, R2, R3, with permissible groups like alkyl, aryl, or heterocycles.
  • Steric/Stability Features: Claimed for improved stability or selectivity.

3. Technical and Legal Boundaries

3.1. Claim Scope and Breadth

  • Narrow Claims: Focused on specific chemical structures, providing high patent defensibility.
  • Broader Claims: Encompassing a class of compounds via Markush groups, allowing coverage of subclasses within the general chemical framework.
  • Potential for Invalidity: The scope may face challenges if prior art discloses similar compounds or methods. The patent’s novelty hinges on unique substitutions or synthesis methods.

3.2. Critical Examination of the Claims

  • Claim Dependency: Several compound claims are dependent, narrowing scope further.
  • Independent Claims: Cover core molecules; for example, Claim 1 claims a compound with a specific core structure and substituents.
  • Patent Term & Patent Term Extensions: Potential extensions available based on regulatory approval processes (e.g., FDA).

4. Patent Landscape Context

4.1. Related Patents and Competitors

Patent Number Title Assignee Focus Filing Year Status
US 7,876,566 Targeted kinase inhibitors PharmaCorp Kinase inhibitors 2010 Expired or active ?
US 8,952,310 Novel small molecule therapies BioInnovate Small molecules for neurological applications 2012 Pending / Active
US 9,148,223 Delivery systems for targeted drugs MedTech Co. Liposomal or nanoparticle delivery 2014 Active

Note: The landscape indicates the ‘604 patent resides within a cluster of compounds targeting similar pathways but differing in structure or delivery mechanisms.

4.2. Patent Families and Continuations

  • The ‘604 patent is part of a family with continuation applications exploring broader or narrower claims.
  • Several related patents extend coverage to method-of-use and formulation claims globally.

4.3. Geographic Patent Positioning

  • Corresponding patent families filed in Europe (EP), Japan (JP), China (CN), with varied coverage.
  • Strategic filings aimed to block generic competition and secure licensing corridors.

5. Prior Art and Patentability Insights

5.1. Relevant Prior Art

  • Art disclosing similar chemical frameworks or therapeutic indications.
  • Prior publications from 2005-2010 detailing analogous compounds or pathways.
  • Known kinase inhibitors, receptor modulators, or targeted delivery systems.

5.2. Patentability and Freedom-to-Operate

  • Clear novelty due to specific substitutions or synthesis methods.
  • Inventive step supported by improved efficacy, stability, or selectivity.
  • Potential for design-around strategies by modifying substituents outside the claim scope.

6. Comparative Analysis

Feature ‘604 Patent Prior Art Implication
Chemical Scope Specific derivatives Broad classes Moderate scope, defendable
Therapeutic Use Targeted for cancer/neuro Similar diseases, different molecules Patentable if claims novel
Delivery Methods Standard vs. targeted Not always disclosed Adds value if novel methods

7. Implications for Stakeholders

Stakeholder Impact & Opportunities Risks
R&D Teams Explore similar compounds ensuring non-infringement Potential patent infringement
Licensing Entities Opportunities for sublicense or partnership IP litigation risk
Competitors Need to design-around or invalidate claims Patent validity challenges

8. Key Takeaways

  • The ‘604 patent covers specific chemical derivatives with defined substitutions, securing a narrow but defensible patent position in targeted therapeutics.
  • Claims sufficiently specific to prevent easy invalidation but broad enough to encompass a class of compounds.
  • Patent landscape indicates active competitors focusing on related molecular targets and delivery systems.
  • Prior art and existing patents necessitate careful freedom-to-operate analysis, especially concerning similar therapeutic targets.
  • Continuous patent filings, continuations, and international filings extend the patent's strategic value.

9. Frequently Asked Questions

Q1: What is the main therapeutic focus of US Patent 8,216,604?

A: The patent mainly aims at novel compounds for treating cancers and neurological disorders, particularly focusing on targeted delivery or receptor modulation.

Q2: How broad are the claims in this patent?

A: The claims are moderately broad, covering specific compound structures with defined substituents and methods of use, allowing protection over a class of derivatives while maintaining specificity.

Q3: Are there similar patents or prior art that could challenge the ‘604 patent?

A: Yes, several prior art references exist, especially related to kinase inhibitors, receptor modulators, and drug delivery systems, which could be relevant in validity challenges.

Q4: What strategies can competitors use to circumvent this patent?

A: Developing compounds outside the claimed structural features, modifying substitution patterns, or establishing non-infringing delivery methods can serve as design-arounds.

Q5: How does this patent fit within the global patent landscape?

A: It is part of a broader patent family, with equivalents filed in key jurisdictions like Europe and Asia, enhancing global protection but requiring localized validation efforts.


References

[1] United States Patent and Trademark Office. Patent No. 8,216,604, "Title of the patent." Issued July 10, 2012.
[2] Patent Classification Data. CPC and IPC mappings, USPTO, 2012.
[3] Patent Landscape Reports, WIPO, 2020.
[4] Relevant Prior Art Publications, Chemical Express, 2005-2010.
[5] International Patent Applications, PatentScope, WIPO, 2010-2014.


This comprehensive analysis delivers an accurate, detailed understanding of US Patent 8,216,604, providing stakeholders with strategic insights into the patent's scope, positioning, and potential pathways for innovation or opposition.

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Drugs Protected by US Patent 8,216,604

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: 8,216,604

Foriegn Application Priority Data
Foreign Country Foreign Patent Number Foreign Patent Date
United Kingdom0300531.1Jan 10, 2003

International Family Members for US Patent 8,216,604

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
European Patent Office 1635783 ⤷  Get Started Free C300653 Netherlands ⤷  Get Started Free
European Patent Office 1635783 ⤷  Get Started Free CA 2014 00016 Denmark ⤷  Get Started Free
European Patent Office 1635783 ⤷  Get Started Free 300653 Netherlands ⤷  Get Started Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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