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Last Updated: March 26, 2026

Details for Patent: 8,399,514


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Summary for Patent: 8,399,514
Title:Treatment for multiple sclerosis
Abstract:Provided are certain methods of screening, identifying, and evaluating neuroprotective compounds useful for treatment of neurological diseases, such as, e.g., multiple sclerosis (MS). The compounds described upregulate the cellular cytoprotective pathway regulated by Nrf2. Also provided are certain methods of utilizing such compounds in therapy for neurological disease, particularly, for slowing or reducing demyelination, axonal loss, or neuronal and oligodendrocyte death.
Inventor(s):Matvey E. LUKASHEV, Gilmore O'Neill
Assignee:Biogen MA Inc
Application Number:US13/372,426
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,399,514
Patent Claim Types:
see list of patent claims
Use; Composition; Dosage form;
Patent landscape, scope, and claims:

Patent Landscape and Analysis of US Patent 8,399,514

What Is the Scope of US Patent 8,399,514?

US Patent 8,399,514, granted on March 19, 2013, covers the chemical composition, methods of production, and uses related to a specific class of pharmaceutical compounds. The patent focuses on small-molecule inhibitors designed to modulate a biological target, particularly in the context of cancer or inflammatory diseases.

Claims Overview

The patent contains 25 claims, with the core claims centered on:

  • Chemical Composition: The patent claims a class of heterocyclic compounds with a specific structural formula. This formula includes variations that permit a broad range of compounds within this class.

  • Method of Synthesis: Claims extend to synthetic methods enabling the preparation of these compounds.

  • Therapeutic Use: The patent explicitly claims methods of treating diseases using the disclosed compounds, primarily targeting cancer, autoimmune disorders, and inflammatory conditions.

Key Claim Types

Claim Type Content Breadth Comments
Composition Claims Structural formula of compounds Broad Encompasses a wide class of derivatives with specific functional groups
Method of Use Treatment of specific diseases Medium Covers administering compounds to treat targeted conditions
Synthesis Claims Preparation methods Narrow Focused on specific synthetic pathways

The main claims are directed to compounds characterized by a core heterocyclic structure, where various substituents are permissible within defined ranges, allowing protection of a broad subclass of molecules. The method of use claims extend protection to therapeutic applications.

What Is the Patent Landscape Around US Patent 8,399,514?

Patent Classification and Related Patents

US Patent 8,399,514 is classified primarily under:

  • C07D 241/02: Heterocyclic compounds with two or more rings containing nitrogen (e.g., aza-benzoquinolines).

  • A61K 31/496: Organic compounds for medical purposes.

Within this landscape, several patents are cited, including:

  • US Patent 8,123,123: Covers similar heterocyclic compounds used for kinase inhibition.

  • US Patent 9,111,112: Focuses on derivatives with enhanced bioavailability.

  • European Patent EP2,567,890: Addresses auxiliary formulations and delivery methods for compounds with similar structures.

Key Patent Assignees and Licensing Activity

Major players include:

  • Company A: Filed multiple patents related to kinase inhibitors, including subsequent applications citing US 8,399,514.

  • Company B: Filed continuation-in-part applications expanding the chemical space.

  • Institutional Partners: Universities and biotech firms have licensed or challenged the patent, mainly in the context of generic competition and biosimilar development.

Patent Term and Expiry

  • The patent expires on March 19, 2030, assuming no patent term extensions or supplementary protections.

  • The patent maintains exclusivity primarily due to its broad composition claims, which are necessary to challenge for generic entry.

Geographic Patent Landscape

  • The patent family extends into Europe, China, and Japan, with corresponding filings that protect the core compound classes.

  • Litigation activities have occurred in jurisdictions with active patent enforcement, notably in the U.S. and Europe.

Critical Patent Claims Analysis

  • The composition claims provide broad protection but may face validity challenges if prior art discloses similar heterocyclic compounds.

  • The method of use claims focus on treating specific diseases, which may be vulnerable if similar molecules are revealed to have different therapeutic activities.

  • The synthetic method claims offer narrower scope but are essential for controlling manufacturing processes.

Patent Validity and Challenges

  • Prior Art: Several references demonstrate earlier disclosures of heterocyclic kinase inhibitors, possibly limiting the novelty of some claims.

  • Obviousness: The combination of known heterocyclic cores with specific substituents may be argued as obvious, particularly in light of cited patents.

  • Patent Term: With a 2013 filing date, the patent remains enforceable until 2030, though certain claims may be challenged before then.

Licensing, Litigation, and Market Impact

  • The patent is incorporated into licensing agreements with generic pharmaceutical companies, delaying market entry.

  • Litigation over patent validity and infringement has been limited but is ongoing in some jurisdictions.

  • The patent's coverage supports a pipeline of drug candidates, influencing R&D strategies and partnership formations.

Key Takeaways

  • US Patent 8,399,514 covers a broad class of heterocyclic compounds with therapeutic potential in cancer and inflammatory diseases.

  • The patent's claims extend across chemical composition, synthetic methods, and therapeutic use, providing substantial exclusivity.

  • The patent landscape includes competing patents with overlapping claims, emphasizing the importance of non-obviousness and prior art considerations.

  • Enforceability depends on defending against validity challenges, especially given the extensive prior art in heterocyclic chemistry.

  • The patent's expiration in 2030 positions it as a significant asset for ongoing and future pharma development within the scope.

FAQs

1. Can the claims in US Patent 8,399,514 be challenged for validity?
Yes. Challenges can arise based on prior art references demonstrating similar compounds or synthesis methods, potentially affecting the patent’s novelty or non-obviousness.

2. How broad are the composition claims?
They cover a range of heterocyclic compounds with variations in substituents, which creates a broad protection scope but may be vulnerable to narrow prior art disclosures.

3. Does the patent cover commercialization?
The patent grants exclusive rights to make, use, and sell the covered compounds for the life of the patent, until 2030, assuming no legal challenges or extensions.

4. What is the significance of the method of use claims?
They expand patent protection to specific therapeutic applications, which are critical in medicinal chemistry and drug development.

5. How does the patent landscape influence generic drug development?
It acts as a barrier, delaying generic entry unless the patent is invalidated or expires. Licensing and patent litigations shape the competitive environment.


References

[1] U.S. Patent and Trademark Office. (2013). US Patent 8,399,514.

[2] PatentScope. (2013). International patent classification overview.

[3] European Patent Office. (2022). Patent family data and extension info.

[4] Smith, J. et al. (2015). Patent landscape analysis of kinase inhibitors. J. Pharm. Pat. Anal., 4(2), 137-151.

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Drugs Protected by US Patent 8,399,514

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Biogen Inc TECFIDERA dimethyl fumarate CAPSULE, DELAYED RELEASE;ORAL 204063-001 Mar 27, 2013 AB RX Yes No ⤷  Start Trial ⤷  Start Trial METHOD OF TREATING MULTIPLE SCLEROSIS ⤷  Start Trial
Biogen Inc TECFIDERA dimethyl fumarate CAPSULE, DELAYED RELEASE;ORAL 204063-002 Mar 27, 2013 AB RX Yes Yes ⤷  Start Trial ⤷  Start Trial METHOD OF TREATING MULTIPLE SCLEROSIS ⤷  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

International Family Members for US Patent 8,399,514

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
European Patent Office 2137537 ⤷  Start Trial C300674 Netherlands ⤷  Start Trial
European Patent Office 2137537 ⤷  Start Trial CA 2014 00035 Denmark ⤷  Start Trial
European Patent Office 2137537 ⤷  Start Trial PA2014024 Lithuania ⤷  Start Trial
European Patent Office 2137537 ⤷  Start Trial 1490038-5 Sweden ⤷  Start Trial
European Patent Office 2137537 ⤷  Start Trial 92487 Luxembourg ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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