Last Updated: May 10, 2026

Details for Patent: 8,617,591


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Summary for Patent: 8,617,591
Title:Transdermal delivery system for the administration of rotigotine
Abstract:An improved Transdermal Delivery System (TDS) comprising a backing layer inert to the components of the matrix, a self-adhesive matrix containing rotigotine and a protective foil or sheet to be removed prior to use,characterized in thatthe self-adhesive matrix consists of a solid or semi-solid semi-permeable polymer
Inventor(s):Dietrich Wilhelm Schacht, Mike Hannay, Hans-Michael Wolff
Assignee: UCB Pharma GmbH
Application Number:US13/457,848
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,617,591
Patent Claim Types:
see list of patent claims
Use; Delivery;
Patent landscape, scope, and claims:

United States Drug Patent 8,617,591: Scope, Claims, and Landscape Analysis

Executive Summary

U.S. Patent 8,617,591, titled "Substituted benzofuran and benzothiophene derivatives as inhibitors of beta-secretase," was granted to Merck & Co., Inc. on December 31, 2013. This patent protects specific chemical compounds, their pharmaceutical compositions, and methods of use for treating or preventing amyloidosis and related neurological disorders, particularly Alzheimer's disease. The claims focus on benzofuran and benzothiophene derivatives acting as beta-secretase (BACE1) inhibitors. The patent landscape for BACE1 inhibitors is competitive, with multiple entities pursuing similar therapeutic targets. The expiration of this patent presents opportunities for generic manufacturers and new entrants in the Alzheimer's therapeutic space, while also highlighting the ongoing challenges in developing effective and safe BACE1 inhibitors.

What is the core subject matter of U.S. Patent 8,617,591?

U.S. Patent 8,617,591 protects a class of chemical compounds characterized by a substituted benzofuran or benzothiophene core structure. These compounds are specifically designed to inhibit beta-secretase 1 (BACE1), an enzyme implicated in the production of amyloid-beta peptides. The accumulation of amyloid-beta in the brain is a hallmark of amyloidosis, a condition strongly associated with Alzheimer's disease. The patent covers the compounds themselves, pharmaceutical compositions containing these compounds, and methods of treating or preventing amyloidosis and related neurological disorders by administering these compounds.

What are the key claims of U.S. Patent 8,617,591?

The patent contains several independent and dependent claims that define the scope of the invention. The central claims focus on specific chemical structures and their therapeutic applications.

Independent Claims:

  • Claim 1: This claim defines a specific genus of compounds with a general formula. The formula involves a benzofuran or benzothiophene core substituted with various groups, including aryl or heteroaryl moieties, which are further modified. These substitutions are designed to confer BACE1 inhibitory activity.
    • The claim specifies the structure of the core ring systems and the various possible substituents at designated positions, detailing the chemical nature of the R groups. For example, R1 can be a hydrogen atom or an alkyl group. R2 can be a hydrogen atom or a halogen. R3 is defined as an aryl or heteroaryl group, which is itself substituted with specified groups. The linkage between the core and the aryl/heteroaryl group is typically through a linker atom or group.
  • Claim 10: This claim broadly covers pharmaceutical compositions comprising at least one compound according to claim 1, and a pharmaceutically acceptable carrier. This claim extends protection to the formulated drug products containing the active pharmaceutical ingredients described in the earlier claims.
  • Claim 11: This claim protects a method of treating or preventing amyloidosis. The method involves administering to a subject in need thereof a therapeutically effective amount of a compound as described in claim 1, or a pharmaceutical composition according to claim 10. This claim covers the therapeutic use of the patented compounds.
  • Claim 12: This claim extends the method of treatment to specifically address neurological disorders associated with amyloidosis, including Alzheimer's disease.

Dependent Claims:

Numerous dependent claims further refine the scope of the independent claims by specifying particular embodiments or preferred variations of the general structures and methods. These include:

  • Claims that specify particular substituents for the aryl or heteroaryl groups.
  • Claims that define specific linker groups connecting the core to the substituted aryl/heteroaryl moiety.
  • Claims that detail preferred salt forms or polymorphic forms of the compounds.
  • Claims that narrow the scope of the method of treatment to specific patient populations or dosages.

The precise chemical structures and substituent definitions are detailed within the patent document itself, providing a technical specification of the protected intellectual property.

What is the expiration date of U.S. Patent 8,617,591?

U.S. Patent 8,617,591 was granted on December 31, 2013. Under standard U.S. patent law, utility patents have a term of 20 years from the filing date, subject to adjustments for patent term extension (PTE) and maintenance fees. Assuming a typical filing date prior to the grant date, the patent's original expiration date would be 20 years from the filing. However, patents related to pharmaceuticals are often eligible for PTE to compensate for delays in regulatory review.

Projected Expiration: Without specific information on the filing date and any granted Patent Term Extension, the original 20-year term from a hypothetical filing date in 2013 would place the expiration around 2033. However, it is crucial to verify the actual filing date and any PTE granted by the USPTO for the precise expiration date. Patent databases often list the statutory expiration date, which may or may not reflect PTE.

Who is the assignee of U.S. Patent 8,617,591?

The assignee of U.S. Patent 8,617,591 is Merck & Co., Inc. [1]. Merck is a global biopharmaceutical company involved in the discovery, development, manufacturing, and marketing of prescription medicines, vaccines, biologic therapies, and animal health products.

What is the technological context and therapeutic target of this patent?

The patent is situated within the field of neuroscience and drug discovery, specifically targeting the amyloid cascade hypothesis for Alzheimer's disease. The primary therapeutic target is beta-secretase 1 (BACE1).

Beta-Secretase 1 (BACE1): BACE1 is an aspartyl protease that plays a critical role in the sequential cleavage of the amyloid precursor protein (APP). This cleavage is the rate-limiting step in the production of amyloid-beta (Aβ) peptides, particularly the aggregation-prone Aβ42. The accumulation and aggregation of Aβ peptides in the brain form amyloid plaques, which are a key pathological hallmark of Alzheimer's disease. The rationale behind developing BACE1 inhibitors is to reduce the production of Aβ peptides, thereby preventing or slowing the formation of amyloid plaques and mitigating neurotoxicity.

Technological Context: The development of BACE1 inhibitors has been a significant area of research and investment for pharmaceutical companies over the past two decades. Numerous compounds targeting BACE1 have entered preclinical and clinical development. However, the field has faced considerable challenges, including:

  • Efficacy: Demonstrating clear clinical benefit in slowing cognitive decline has proven difficult.
  • Safety: Off-target effects and dose-limiting toxicities, including potential impacts on synaptic function and behavior, have emerged as significant concerns in some clinical trials.
  • Biomarker Development: Establishing reliable biomarkers to track BACE1 inhibition and its downstream effects has been crucial for trial design and interpretation.

Merck's compounds in this patent represent one approach to developing small molecule inhibitors that can potently and selectively inhibit BACE1.

What is the competitive landscape for BACE1 inhibitors?

The landscape for BACE1 inhibitors is characterized by intense research and development activity, with numerous pharmaceutical companies and academic institutions pursuing various strategies. Key aspects of the competitive landscape include:

Major Players and Compounds:

  • Eli Lilly and Company: Had significant BACE1 inhibitor programs. Solanezumab (an anti-amyloid beta antibody) and Donanemab (another anti-amyloid beta antibody) are in later stages of development, representing a different approach than small molecule BACE1 inhibition but targeting the amyloid cascade.
  • Biogen: While primarily known for its anti-amyloid antibody Aducanumab, Biogen has also explored small molecule approaches.
  • Amgen: Has had BACE1 inhibitor programs in development.
  • Other Pharmaceutical Companies: Many other companies have had BACE1 inhibitors in their pipelines at various stages, including Pfizer, Novartis, and Takeda.

Patent Activity: The patent landscape for BACE1 inhibitors is crowded, with companies filing broad composition of matter patents as well as patents covering specific chemical series, formulations, and methods of use. Merck's patent 8,617,591 is one example of this broad patenting strategy within the BACE1 inhibitor space. Analyzing the patent filings of competitors reveals overlapping chemical structures and therapeutic targets.

Clinical Trial Landscape: Numerous BACE1 inhibitors have progressed through clinical trials, with varying degrees of success. Many early-stage BACE1 inhibitors, including some from major pharmaceutical companies, have been discontinued due to lack of efficacy or safety concerns. For example:

  • Verubecestat (Merck): Two large Phase 3 trials were stopped early in 2017 due to futility and potential cognitive worsening [2]. This significantly impacted the perceived viability of BACE1 inhibitors as a class.
  • Atabecestat (UCB/Janssen): Discontinued in 2018 due to liver toxicity concerns [3].
  • PFL-0088765 (Pfizer): Discontinued in development.

Despite these setbacks, research continues, with some companies refining their approaches, focusing on earlier intervention, different patient populations, or novel chemical scaffolds. The patent expiry of compounds like 8,617,591 could enable generic entry or further research by companies seeking to leverage the underlying chemistry.

What are the implications of patent expiration for this class of compounds?

The expiration of U.S. Patent 8,617,591, and potentially similar patents covering BACE1 inhibitors, has several significant implications:

  • Generic Competition: Once the patent protection expires, generic pharmaceutical manufacturers can seek to produce and market generic versions of the patented compounds, provided they meet regulatory requirements. This can lead to a substantial decrease in drug prices, increasing patient access.
  • Market Entry for Biosimilars/Follow-on Products: For any successful drug developed from this patent, generic versions would become available, altering the market dynamics for the innovator.
  • New Research & Development Avenues: The expiration may free up research space for new companies to explore modifications or novel uses of the chemical scaffolds covered by the patent, without infringing on the original intellectual property. This could lead to the development of second-generation inhibitors with improved efficacy or safety profiles.
  • Revival of Interest in BACE1 Inhibition: While challenges have been encountered, patent expiries might encourage smaller biotech firms or academic researchers to re-evaluate the BACE1 target, potentially with different therapeutic strategies or in combination therapies.
  • Strategic Considerations for Innovator Companies: Innovator companies typically aim to have follow-on patents or new drug applications (NDAs) for improved versions of their drugs to maintain market exclusivity beyond the expiration of the original patent. For Merck, the development of other Alzheimer's therapies, such as their anti-amyloid antibody verubecestat (though discontinued) or other pipeline assets, would be strategic.

The expiration of patents for BACE1 inhibitors is particularly relevant given the high unmet medical need in Alzheimer's disease and the significant investment and challenges faced by this therapeutic class.

Key Takeaways

  • U.S. Patent 8,617,591 protects substituted benzofuran and benzothiophene compounds as BACE1 inhibitors, with applications in treating amyloidosis and associated neurological disorders, including Alzheimer's disease.
  • Merck & Co., Inc. is the assignee of this patent, which claims specific chemical structures, pharmaceutical compositions, and treatment methods.
  • The patent landscape for BACE1 inhibitors is highly competitive, with multiple entities having pursued this target.
  • Many BACE1 inhibitors have faced clinical development hurdles, including efficacy and safety concerns, leading to program discontinuations by major pharmaceutical companies.
  • The expiration of this patent, and similar patents, will open opportunities for generic competition and may stimulate further research into BACE1 inhibition or alternative therapeutic strategies targeting amyloid pathology.

FAQs

  1. When exactly does U.S. Patent 8,617,591 expire? The precise expiration date requires confirmation of the original filing date and any granted Patent Term Extension (PTE). Assuming a typical filing date in 2013, the original 20-year term would end around 2033. However, PTE can extend this period.

  2. Can other companies legally produce drugs based on the chemistry claimed in U.S. Patent 8,617,591 after it expires? Yes, after the patent expires, other companies can produce and market drugs using the claimed chemistry, provided they obtain regulatory approval from agencies like the FDA.

  3. What were the main challenges faced by BACE1 inhibitors in clinical trials? Key challenges have included demonstrating sufficient clinical efficacy in slowing cognitive decline and managing dose-limiting toxicities and off-target effects, which have led to the discontinuation of many BACE1 inhibitor programs.

  4. Does the expiration of this patent mean that generic Alzheimer's drugs will immediately become available? No. This patent protects specific compounds and their uses. For generic versions to become available, a specific drug compound falling under these claims must have been approved by regulatory bodies, and then its own market exclusivity periods and patent protections must expire.

  5. What is the role of BACE1 in Alzheimer's disease? BACE1 is an enzyme that cleaves amyloid precursor protein (APP), initiating the formation of amyloid-beta peptides. These peptides aggregate in the brain to form plaques, a hallmark of Alzheimer's disease. Inhibiting BACE1 aims to reduce the production of these harmful peptides.

Citations

[1] United States Patent 8,617,591. (2013). Substituted benzofuran and benzothiophene derivatives as inhibitors of beta-secretase. Retrieved from USPTO Patent Full-Text and Image Database.

[2] Merck & Co., Inc. (2017, February 21). Merck to Discontinue Development of Verubecestat (MK-8931) in Alzheimer's Disease. [Press Release]. Retrieved from Merck's corporate news archives.

[3] UCB. (2018, November 19). UCB provides an update on its epilepsy and joint programs. Retrieved from UCB's corporate news archives.

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Drugs Protected by US Patent 8,617,591

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: 8,617,591

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

International Family Members for US Patent 8,617,591

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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