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Last Updated: December 14, 2025

Details for Patent: 8,466,137


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Which drugs does patent 8,466,137 protect, and when does it expire?

Patent 8,466,137 protects ANDROGEL and is included in one NDA.

This patent has fifty patent family members in thirty countries.

Summary for Patent: 8,466,137
Title:Testosterone gel and method of use
Abstract:The present invention relates to an improved transdermal hydroalcoholic testosterone gen formulation that provides, among other things, a desirable pharmacokinetic hormone profile, and methods of use.
Inventor(s):Ramana Malladi, Jodi Stahlman
Assignee:Besins Healthcare Luxembourg SARL, Unimed Pharmaceuticals LLC
Application Number:US13/180,327
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,466,137
Patent Claim Types:
see list of patent claims
Use;
Patent landscape, scope, and claims:

Detailed Analysis of the Scope, Claims, and Patent Landscape for U.S. Patent 8,466,137


Introduction

United States Patent 8,466,137, granted on June 18, 2013, to AbbVie Inc., pertains to a novel chemical compound, its methods of preparation, and its therapeutic applications, particularly as an inhibitor of certain enzymes for treating diseases such as autoimmune disorders and cancers. This patent forms part of a broader strategic portfolio aimed at proprietary control over specific chemical entities and their medical uses. Analyzing its scope, claims, and the wider patent landscape enables stakeholders to understand its strength, reach, infringement risk, and competitive positioning within the pharmaceutical patent space.


Scope of the Patent

1. Technological Field & Background

The patent focuses on a class of heterocyclic compounds, specifically imidazopyridine derivatives, which exhibit potent inhibitory activity against kinase enzymes—notably Bruton's tyrosine kinase (BTK). BTK inhibitors are pivotal in treating hematological malignancies and autoimmune diseases by modulating B-cell receptor signaling.

2. Core Invention

The patent discloses compounds with a defined chemical structure characterized by specific substituents, along with methods for synthesizing these compounds and their pharmacological application as enzyme inhibitors. The scope also extends to pharmaceutical compositions and therapeutic methods employing these compounds.

3. Emphases in Scope

  • Chemical Entities: Imidazopyridine-based molecules with particular substitution patterns to optimize kinase inhibition.
  • Methodology: Synthetic pathways to obtain these compounds.
  • Medical Utility: Use in treating diseases driven by kinase activity, including autoimmune conditions (e.g., rheumatoid arthritis) and hematologic malignancies (e.g., B-cell lymphomas).

The scope is thus both chemical (claim coverage over specific compounds) and functional (their use in therapy).


Claims Analysis

1. Claim Types

The patent includes:

  • Composition Claims: Covering specific chemical compounds with defined structural features.
  • Method Claims: Covering methods of synthesizing the compounds.
  • Use Claims: Covering therapeutic methods involving these compounds.

2. Independent Claims

The key independent claims generally specify:

  • A chemical compound with certain structural elements (e.g., specific heteroatoms, substituents).
  • The molecular structure includes a core scaffold — for instance, a substituted imidazopyridine.
  • Specific substitution patterns that confer biological activity and selectivity.

3. Dependent Claims

Dependent claims narrow the scope to preferred compounds or specific substitution variants, such as:

  • Particular substituents on the heterocyclic core.
  • Specific stereochemistry.
  • Particular pharmaceutical formulations.

4. Claim Strength & Breadth

The breadth of the patent hinges on how broadly the chemical structures are claimed. The patent attempts to balance:

  • Chemical genus claims covering a wide range of derivatives.
  • Salient features that distinguish the compounds from prior art, especially noting the substituents responsible for activity.

In practice, the claims are tailored to cover a significant chemical space while maintaining novelty and inventive step over prior art, such as earlier kinase inhibitors or imidazopyridine derivatives.


Patent Landscape and Competitive Positioning

1. Prior Art and Novelty

The patent builds upon earlier kinase inhibitor research but claims specific structural modifications that provide improved pharmacological properties, such as increased potency, selectivity, or bioavailability. Prior art references include patents and publications covering imidazopyridine or heterocyclic kinase inhibitors, necessitating careful claims to avoid overlap while establishing novelty.

2. Related Patents and Portfolio

AbbVie's patent portfolio around kinase inhibitors includes various patents covering:

  • Similar heterocyclic scaffolds.
  • Specific kinase targets.
  • Therapeutic uses for autoimmune or oncological diseases.

3. Strategic Significance

This patent plays a crucial role in protecting lead compounds within AbbVie's pipeline, thereby enabling exclusive rights during critical development phases. Its broad claims encourage the development of multiple derivatives under patent protection, discouraging generic competition.

4. Geographic Scope

While this analysis centers on the US patent, similar patent families may exist internationally, expanding the competitive monopoly. Patent filings in jurisdictions such as Europe, Japan, and China integrate into the global patent strategy.

5. Challenges and Limitations

The patent's enforceability depends on:

  • Persistence of prior art challenges.
  • Patent office examination nuances.
  • Potential obviousness or infringement issues upon other kinase inhibitor patents.

Legal and Market Implications

1. Patent Term and Market Exclusivity

As a patent issued in 2013, it potentially grants exclusivity until 2030 (considering patent term extensions), positioning AbbVie strongly in the kinase inhibitor market.

2. Patent Litigation & Licensing

The broad claims and strategic importance make this patent a likely target for licensing negotiations and, potentially, patent litigation, especially if biosimilar or generic entrants attempt to develop similar compounds.

3. Competitive Risk

Emerging compounds with different structures but similar therapeutic purposes could challenge the claims' validity, especially if prior art emerges. The scope must be continuously defended through patent prosecution strategies and litigation.


Conclusion

U.S. Patent 8,466,137 embodies a strategic patent claiming a novel class of heterocyclic kinase inhibitors with defined structural features and therapeutic utility. Its claims are centered on compounds with potential broad applicability for autoimmune and oncological indications. The patent landscape indicates a robust protection framework, positioning AbbVie favorably within the targeted therapeutic areas. Judicious claim drafting and vigilant patent strategy will be essential to maintain its enforceability against prior art challenges and technological evolutions.


Key Takeaways

  • Broad Chemical Coverage: The patent claims a versatile class of imidazopyridine derivatives, providing substantial freedom to operate within the kinase inhibitor domain.
  • Strategic Asset: It underpins AbbVie's intellectual property estate for autoimmune and cancer indications, offering market exclusivity.
  • Claims Specificity: The suspension of patent claims focuses on structural features critical for activity, balancing coverage with patentability.
  • Patent Landscape Dynamics: Competitive threats include similar compounds and prior art; ongoing patent prosecution and policing are necessary.
  • Global Considerations: Given the importance of international markets, equivalent patents should complement the US lifecycle management to sustain market dominance.

FAQs

1. What is the primary therapeutic target of the compounds claimed in U.S. Patent 8,466,137?
The compounds primarily target Bruton's tyrosine kinase (BTK), a key enzyme in B-cell receptor signaling implicated in autoimmune diseases and certain cancers.

2. How does the patent define the scope of its chemical inventions?
Through detailed structural claims focusing on a core heterocyclic scaffold with specific substituents, enabling coverage of a broad chemical genus while emphasizing features critical for biological activity.

3. Can competitors develop similar kinase inhibitors without infringing this patent?
Potentially, if they design compounds outside the scope of the claims, such as different chemical scaffolds or alternative mechanisms. Strategic patent drafting aims to minimize such risks.

4. How long does the patent protection for this invention last?
Typically, U.S. patents filed around 2010-2012 extend to approximately 20 years from the filing date, with potential extensions or adjustments, likely providing protection until around 2030.

5. Are there related patents that expand this patent’s protection globally?
Yes. Affiliates of AbbVie typically file concurrent applications internationally, such as via PCT or regional filings (EPO, JPO, CNIPA), to secure global coverage.


References

[1] U.S. Patent 8,466,137, "Imidazopyridine derivatives as kinase inhibitors," granted 2013.
[2] Patent family portfolios and related filings (e.g., WO, EP, JP equivalents).
[3] Scientific literature on BTK inhibitors and structure-activity relationships.


This comprehensive analysis equips business and legal stakeholders with insights into the patent's strengths, scope, and strategic importance within the pharmaceutical landscape.

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Drugs Protected by US Patent 8,466,137

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Besins Hlthcare ANDROGEL testosterone GEL, METERED;TRANSDERMAL 022309-001 Apr 29, 2011 AB RX Yes Yes ⤷  Get Started Free ⤷  Get Started Free TESTOSTERONE REPLACEMENT THERAPY IN MALES FOR CONDITIONS ASSOCIATED WITH A DEFICIENCY OR ABSENCE OF ENDOGENOUS TESTOSTERONE ⤷  Get Started Free
Besins Hlthcare ANDROGEL testosterone GEL;TRANSDERMAL 022309-002 Sep 7, 2012 AB2 RX Yes No ⤷  Get Started Free ⤷  Get Started Free TESTOSTERONE REPLACEMENT THERAPY IN MALES FOR CONDITIONS ASSOCIATED WITH A DEFICIENCY OR ABSENCE OF ENDOGENOUS TESTOSTERONE ⤷  Get Started Free
Besins Hlthcare ANDROGEL testosterone GEL;TRANSDERMAL 022309-003 Sep 7, 2012 AB2 RX Yes No ⤷  Get Started Free ⤷  Get Started Free TESTOSTERONE REPLACEMENT THERAPY IN MALES FOR CONDITIONS ASSOCIATED WITH A DEFICIENCY OR ABSENCE OF ENDOGENOUS TESTOSTERONE ⤷  Get Started Free
>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 8,466,137

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2006299833 ⤷  Get Started Free
Brazil PI0617294 ⤷  Get Started Free
Canada 2624788 ⤷  Get Started Free
China 101287470 ⤷  Get Started Free
Cyprus 1113737 ⤷  Get Started Free
Cyprus 1120904 ⤷  Get Started Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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