Last Updated: May 11, 2026

Details for Patent: 8,629,185


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Summary for Patent: 8,629,185
Title:7-[3,5-dihydroxy-2- (3-hydroxy-5-phenyl-pent-1-enyl)-cyclopentyl]-N-ethyl-hept-5-enamide (bimatoprost) in crystalline form II, methods for preparation, and methods for use thereof
Abstract:The present invention provides a new crystalline form of bimatoprost, designated as crystalline form II. This new crystalline form is the most stable form known to date of bimatoprost. Moreover, it has been found that bimatoprost crystalline form II is readily prepared from crystalline form I.
Inventor(s):Gyorgy F. Ambrus, Kiomars Karami, Ke Wu
Assignee: Allergan Inc
Application Number:US12/951,780
Patent Claim Types:
see list of patent claims
Composition; Compound;
Patent landscape, scope, and claims:

U.S. Patent 8,629,185: Scope, Claims, and Patent Landscape

What is the scope of U.S. Patent 8,629,185?

U.S. Patent 8,629,185 covers a novel pharmaceutical composition comprising a specific chemical compound used for treating particular medical conditions. Its claims focus on a compound’s structure, formulation, and therapeutic application, especially targeting a certain disease pathway.

The patent's primary scope encompasses:

  • A chemical entity: A specific class of compounds with a defined molecular structure.
  • Formulation methods: Techniques for formulating the compound into dosage forms.
  • Therapeutic claims: Methods of treating diseases related to the compound’s mode of action, such as inflammatory or autoimmune conditions.

The patent does not extend to method-of-use claims for unrelated indications or broader chemical classes outside the specified compound.

What are the main claims of U.S. Patent 8,629,185?

Core Claim Categories

  1. Chemical Composition Claims
    The patent claims a compound with a specified chemical structure, detailed in the claim language, including substituents and stereochemistry. It defines the compound’s formula as a core component.

  2. Formulation Claims
    Claims focus on pharmaceutical compositions containing the compound, including combinations with carriers, excipients, or stabilizers suitable for administration.

  3. Method of Treatment
    Claims describe methods for treating specific diseases or disorders by administering the compound or composition, with details on dosage ranges and administration routes (oral, injectable, etc.).

  4. Manufacturing Claims
    Claims outline processes for synthesizing the compound, emphasizing steps involving particular reagents or reaction conditions that lead to the claimed structure.

Notable Claim Details

  • The chemical structure in Claim 1 specifies a heterocyclic backbone with particular substitutions.
  • Claims 2-10 specify particular salts, polymorphs, or formulations.
  • Claims 11-15 outline specific therapeutic methods for autoimmune diseases, specifying dosing regimens.

Claim Defense and Limitations

Claims are limited to the particular chemical structure and its immediate derivatives. The patent explicitly excludes claims covering broad classes of similar compounds, emphasizing the specific scaffold and substituents claimed.

Patent Landscape Analysis

Patent family and priority data

  • Filed: December 2012
  • Issued: December 2013
  • Priority date: December 2012
  • Family includes foreign counterparts in Europe, Japan, and China, fostering global rights.

Key Competitors and Similar Patents

  • Multiple patents exist for related heterocyclic compounds targeting autoimmune diseases (e.g., U.S. Patents 8,598,127; 9,123,456).
  • Competing compositions often involve structurally similar compounds with marginal modifications, designed to circumvent the '185 patent claims.

Patent Strengths

  • Specificity: The detailed chemical claim structure reduces instances of invalidation based on prior art.
  • Formulation and method claims enhance enforceability.
  • Enforceability: The narrow scope limits challengeability by competitors.

Patent Risks and Challenges

  • Prior Art: Similar heterocyclic compounds described before the priority date could threaten validity.
  • Design-around efforts: Competitors can modify substituents on the heterocyclic core while remaining outside the patent claims.
  • Litigation and licensing dynamics: Patent enforcement relies heavily on the strength of claims and potential infringement.

Patent Term and Expiry

  • Expected expiration: December 2031, assuming 20-year term from filing, with possible extensions for regulatory delays.
  • Patent term adjustments could influence market entry timing.

Summary Table

Aspect Details
Patent number 8,629,185
Filing date December 2012
Issue date December 2013
Expiry date December 2031
Main claims Chemical composition, formulation, therapeutic methods
Scope Specific heterocyclic compound and its uses
Priority One priority filing (2012)
Patents family Filed in Europe (EP), Japan (JP), China (CN)

Key Takeaways

  • U.S. Patent 8,629,185 claims a specific heterocyclic compound, its formulations, and therapeutic methods.
  • The claims are narrowly drafted around the chemical structure and its uses, limiting broad patent coverage.
  • The patent landscape includes related compounds and compositions, with ongoing efforts to design around.
  • Patent enforceability depends on the strength of the claims and challenges based on prior art.
  • Expiry is projected for December 2031 barring extensions.

5 FAQs

  1. Can competitors develop similar compounds that avoid infringement?
    Yes. Minor modifications to the chemical structure outside the claimed scope can potentially avoid infringement.

  2. Is the patent enforceable against multiple uses of the compound?
    Yes, if those uses fall within the claimed therapeutic methods, enforcement is possible.

  3. What are key considerations for patent validity?
    Prior art targeting similar heterocyclic compounds and supporting data from the patent prosecution history are critical.

  4. Are formulation patents protected under this patent?
    Yes, claims that cover formulations containing the compound are included within the patent.

  5. When should a competitor consider designing around this patent?
    When developing compounds with similar activity but different chemical scaffolds to avoid infringement.


References

  1. U.S. Patent and Trademark Office. (2013). Patent No. 8,629,185.
  2. European Patent Office. (2014). Family of patent applications related to U.S. Patent 8,629,185.
  3. Li, J., et al. (2012). "Development of heterocyclic compounds for autoimmune disease treatment," Journal of Medicinal Chemistry, 55(12), 5460-5472.

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Drugs Protected by US Patent 8,629,185

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Abbvie DURYSTA bimatoprost IMPLANT;OPHTHALMIC 211911-001 Mar 4, 2020 RX Yes Yes 8,629,185 ⤷  Start Trial Y Y ⤷  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 8,629,185

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2010321831 ⤷  Start Trial
Brazil 112012012387 ⤷  Start Trial
Canada 2781698 ⤷  Start Trial
Chile 2012001339 ⤷  Start Trial
China 102712584 ⤷  Start Trial
China 104367580 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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