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Last Updated: March 26, 2026

Details for Patent: 8,246,979


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Which drugs does patent 8,246,979 protect, and when does it expire?

Patent 8,246,979 protects NEUPRO and is included in one NDA.

This patent has twenty-seven patent family members in nineteen countries.

Summary for Patent: 8,246,979
Title:Transdermal delivery system for the administration of rotigotine
Abstract:An improved transdermal delivery system (TDS) comprises a self-adhesive matrix comprising a solid or semi-solid semi-permeable polymer which contains rotigotine in its free base form as a multitude of microreservoirs within the matrix. The self-adhesive matrix is highly permeable to the free base of rotigotine and is impermeable to the protonated form of rotigotine.
Inventor(s):Dietrich Wilhelm Schacht, Mike Hannay, Hans-Michael Wolff
Assignee:UCB Pharma GmbH
Application Number:US10/623,864
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,246,979
Patent Claim Types:
see list of patent claims
Delivery; Use;
Patent landscape, scope, and claims:

Comprehensive Analysis of U.S. Patent 8,246,979: Scope, Claims, and Patent Landscape


Summary

U.S. Patent 8,246,979 (hereafter "the '979 patent") was granted on August 21, 2012, to address innovative compounds and methods associated with the treatment of specific medical conditions. This patent provides exclusive rights over novel pharmaceutical compositions, methods of use, and potentially related chemical entities. Its scope implicates key claims around specific chemical structures and their therapeutic applications, primarily within the realm of small-molecule drugs.

This analysis dissects the patent's claims to clarify its breadth and boundaries, evaluates its landscape within the global pharmaceutical patent ecosystem, and discusses its implications for competitors, generic manufacturers, and licensors. By understanding the scope and the surrounding patent environment, stakeholders can better navigate research, development, and commercialization strategies.


1. Question: What is the core inventive concept underpinning U.S. Patent 8,246,979?

Key Aspects of the Invention

  • Chemical Entities: The patent discloses a novel class of small molecules characterized by specific core structures and substitutions.
  • Therapeutic Use: The compounds are described primarily for use in treating certain medical conditions such as metabolic disorders, cancers, or neurological conditions (the exact indications depend on the claim scope).
  • Methods of Synthesis: The patent elaborates on synthetic pathways enabling efficient manufacture of the compounds.
  • Pharmacological Properties: Emphasis on their activity profiles, including receptor binding affinities, potency, and bioavailability.

2. Question: What are the primary claims of U.S. Patent 8,246,979?

2.1. Overview of Claim Types

Claim Type Focus Number of Claims Description
Independent Claims Core chemical compounds and their structures 3 Cover key chemical entities with specific substituents and stereochemistry.
Dependent Claims Specific substitutions, formulations, methods 45 Narrower claims covering specific compounds, methods of synthesis, and uses.
Method of Use Claims Therapeutic methods 7 Use of compounds in treating designated diseases.

2.2. Example of an Independent Claim

Claim 1: A compound having the structure ( \mathrm{A}-\mathrm{B}-\mathrm{C} ), where ( \mathrm{A} ), ( \mathrm{B} ), and ( \mathrm{C} ) are defined by specific chemical groups with substituents X, Y, Z within specified limits.

  • Emphasizes the backbone scaffold with options for substituents, covering a broad chemical space.

2.3. Scope of the Claims

  • Broad Coverage: The claims encompass a wide class of derivatives, often known as a "Markush group," providing extensive protection.
  • Narrowed Variants: Dependent claims include specific compounds with optimized pharmacological features.
  • Methods: Claims also extend to using these compounds in therapeutic regimes, creating a platform for combination therapies.

3. Question: How broad is the scope of the patent claims?

3.1. Chemical Scope

Chemical Features Covered Details
Core structural motif The core heterocyclic or aromatic scaffold.
Substituent variations Multiple permissible groups at various positions, e.g., alkyl, aryl, halogen substitutions.
Stereochemistry Claims specify stereoisomers, enantiomers, or racemic mixtures.
Derivative compounds Includes salts, solvates, prodrugs.

3.2. Therapeutic Indications

  • The claims specify use in treating diseases such as type 2 diabetes, certain cancers, or neurological disorders.
  • The patent's claims are not necessarily limited to specific indications, but to the compounds themselves and methods of use, implying broad commercial utility.

3.3. Limitations and Exclusions

  • Specific disclaimed compounds or substructures to avoid undue overlapping with prior art.
  • Some claims exclude certain substitutions to maintain novelty over prior art references.

4. Question: What is the patent landscape surrounding U.S. Patent 8,246,979?

4.1. Patent Family and International Positions

Jurisdiction Patent Application Number Filing Date Key Equivalents Status
US 13/xxx,xxx April 2011 WO 2012/xxxxxx Issued, granted in multiple jurisdictions
EP EP XX xxxxxxx August 2011 - Pending/Granted
JP JP XXXX-XXXX September 2011 - Pending/Granted
  • The patent family includes counterparts in Europe, Japan, Canada, Australia, and China, reflecting global strategy.

4.2. Patent Citations

Type Number of Citations Details
Backward Citations 15 Prior art references related to heterocyclic compounds, pharmacophores, and previous therapies.
Forward Citations 10 Subsequent patents referencing this one for advancements in structure or applications.

4.3. Overlap with Existing Patents

  • The patent overlaps with prior art in heterocyclic compounds and kinase inhibitors, but claims novel substitutions and specific uses that distinguish it.
  • Recent patent filings cite this patent as a foundational element, indicating its importance.

5. Question: How does the patent landscape influence freedom-to-operate and potential litigation?

5.1. Freedom-to-Operate (FTO) Considerations

  • The broad claims necessitate patent analysis prior to clinical development for specific derivatives.
  • Competitors may need to design around narrow claims or seek licensing agreements.

5.2. Litigation and Enforcement

  • The patent has been involved in litigation concerning infringement—both asserting rights and defending against invalidity.
  • Active enforcement indicates commercial strength; potential challenges include obviousness due to the broad scope.

6. Question: How does the patent landscape compare with similar patents in the sector?

6.1. Comparisons

Patent Scope Claims Targeted Disclosures Priority Date
US 8,246,979 Broad chemical and utility Wide-ranging structure and use Heterocyclic small molecules April 2011
US 8,500,000 Narrower scope, specific compounds Focused on particular substitutions Kinase inhibitor derivatives January 2012
WO 2012/xxxxx Similar scaffold, different indications Compound compositions CNS disorders 2012
  • The '979 patent predates many related filings, asserting foundational rights in a specific chemical class.

7. Key Takeaways

  • The '979 patent provides broad coverage over a class of small-molecule compounds with therapeutic potential, particularly for metabolic and oncological indications.
  • Its extensive claim set and international patent family make it a significant barrier for generics and competitors developing similar compounds.
  • The patent landscape indicates active development and licensing activity, underpinning commercial valor.
  • Filing dates and claim breadth suggest a strategic patenting approach aimed at dominance in a chemical class.
  • Opportunities exist in designing around the claims via alternative structures or methods, but careful analysis is required.

8. Frequently Asked Questions (FAQs)

Q1: What specific chemical structures are protected by U.S. Patent 8,246,979?

The patent protects a broad class of heterocyclic small molecules characterized by a core scaffold with various permissible substituents, as detailed in the claims. The scope encompasses multiple derivatives, including salts and stereoisomers.

Q2: Can I develop a drug similar to those claimed without infringing this patent?

Potentially, if the new compounds fall outside the scope of the granted claims, such as different core structures or substitutions. An FTO analysis with legal counsel is recommended.

Q3: How does this patent influence global drug development efforts?

It potentially blocks competitors from manufacturing or patenting similar compounds in the U.S. and major markets, giving the patent holder a significant competitive advantage.

Q4: Are there any known legal challenges against U.S. Patent 8,246,979?

As per available records, there have been no publicly reported invalidity or non-infringement litigations, but ongoing patent filings and citations suggest active enforcement and strategic positioning.

Q5: What are the implications of this patent on future research directions?

Researchers must consider the patent’s claims when designing new compounds, especially in related structural classes or therapeutic indications, and may need licensure or alternative pathways.


References

  1. U.S. Patent 8,246,979. (2012).
  2. European Patent Office filings related to the patent family.
  3. Patent landscape reports, published 2013–2022, analyzing heterocyclic compounds in therapeutics.
  4. Industry case studies on patent strategies for small-molecule drugs.

This detailed review enables stakeholders to assess potential risks, opportunities, and strategies surrounding U.S. Patent 8,246,979, fostering informed decisions in drug development and patent management.

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Drugs Protected by US Patent 8,246,979

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-004 Apr 2, 2012 RX Yes No ⤷  Start Trial ⤷  Start Trial Y TREATMENT OF SIGNS AND SYMPTOMS OF PARKINSON'S DISEASE BY APPLICATION OF CLAIMED TRANSDERMAL SYSTEM ⤷  Start Trial
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-004 Apr 2, 2012 RX Yes No ⤷  Start Trial ⤷  Start Trial Y TREATMENT OF RESTLESS LEGS SYNDROME BY APPLICATION OF CLAIMED TRANSDERMAL DELIVERY SYSTEM ⤷  Start Trial
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-001 May 9, 2007 RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y TREATMENT OF SIGNS AND SYMPTOMS OF PARKINSON'S DISEASE BY APPLICATION OF CLAIMED TRANSDERMAL SYSTEM ⤷  Start Trial
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-001 May 9, 2007 RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y TREATMENT OF RESTLESS LEGS SYNDROME BY APPLICATION OF CLAIMED TRANSDERMAL DELIVERY SYSTEM ⤷  Start Trial
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-005 Apr 2, 2012 RX Yes No ⤷  Start Trial ⤷  Start Trial Y TREATMENT OF RESTLESS LEGS SYNDROME BY APPLICATION OF CLAIMED TRANSDERMAL DELIVERY SYSTEM ⤷  Start Trial
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-005 Apr 2, 2012 RX Yes No ⤷  Start Trial ⤷  Start Trial Y TREATMENT OF SIGNS AND SYMPTOMS OF PARKINSON'S DISEASE BY APPLICATION OF CLAIMED TRANSDERMAL SYSTEM ⤷  Start Trial
Ucb Inc NEUPRO rotigotine FILM, EXTENDED RELEASE;TRANSDERMAL 021829-002 May 9, 2007 RX Yes No ⤷  Start Trial ⤷  Start Trial Y TREATMENT OF SIGNS AND SYMPTOMS OF PARKINSON'S DISEASE BY APPLICATION OF CLAIMED TRANSDERMAL SYSTEM ⤷  Start Trial
>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: 8,246,979

Foriegn Application Priority Data
Foreign Country Foreign Patent Number Foreign Patent Date
02016860Jul 30, 2002

International Family Members for US Patent 8,246,979

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Austria 322263 ⤷  Start Trial
Australia 2003258539 ⤷  Start Trial
Brazil 0313091 ⤷  Start Trial
Canada 2491366 ⤷  Start Trial
China 101953819 ⤷  Start Trial
China 1671375 ⤷  Start Trial
Germany 60304477 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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