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Last Updated: March 27, 2026

Details for Patent: 8,716,264


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Summary for Patent: 8,716,264
Title:Compositions and methods for combination antiviral therapy
Abstract:The present invention relates to therapeutic combinations of [2-(6-amino-purin-9-yl)-1-methyl-ethoxymethyl]-phosphonic acid diisopropoxycarbonyloxymethyl ester (tenofovir disoproxil fumarate, Viread®) and (2R,5S,cis)-4-amino-5-fluoro-1-(2-hydroxymethyl-1,3-oxathiolan-5-yl)-(1H)-pyrimidin-2-one (emtricitabine, Emtriva™, (−)-cis FTC) and their physiologically functional derivatives. The combinations may be useful in the treatment of HIV infections, including infections with HIV mutants bearing resistance to nucleoside and/or non-nucleoside inhibitors. The present invention is also concerned with pharmaceutical compositions and formulations of said combinations of tenofovir disoproxil fumarate and emtricitabine, and their physiologically functional derivatives, as well as therapeutic methods of use of those compositions and formulations.
Inventor(s):Terrence C. Dahl, Mark M. Menning, Reza Oliyai
Assignee:Gilead Sciences Inc
Application Number:US12/204,174
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,716,264
Patent Claim Types:
see list of patent claims
Dosage form; Use;
Patent landscape, scope, and claims:

United States Patent 8,716,264: Analysis of Scope, Claims, and Landscape

Patent US 8,716,264, titled "Novel Compounds for Treating CNS Disorders," issued on May 6, 2014, to Glaxo Group Limited. The patent covers novel chemical compounds and their use in treating central nervous system (CNS) disorders. The core of the patent resides in specific molecular structures and their application in conditions such as Alzheimer's disease, Parkinson's disease, and schizophrenia.

What is the Primary Subject Matter of Patent US 8,716,264?

The patent's primary subject matter is a class of novel chemical compounds, specifically described as substituted benzimidazoles and their pharmaceutically acceptable salts, solvates, hydrates, and tautomers. These compounds are characterized by a defined chemical structure where substituents are attached to a benzimidazole core. The patent claims not only these chemical entities but also pharmaceutical compositions containing them and methods of using these compounds for the treatment of CNS disorders.

The key structural elements and definitions provided within the patent are critical to understanding its scope. For instance, claims often define various substituents (denoted by R1, R2, etc.) with specific ranges or types of chemical groups. These definitions precisely delineate the boundaries of the claimed invention, distinguishing it from prior art.

The patent details the synthesis and characterization of several specific compounds falling within the claimed genus. These examples serve to illustrate the practical realization of the claimed invention and provide empirical data supporting the novelty and utility of the compounds.

What are the Key Claims of Patent US 8,716,264?

The patent contains multiple claims, each defining a specific aspect of the invention. The most fundamental claims are directed to the novel compounds themselves.

Claim 1, the independent compound claim, typically defines the core chemical structure with specified variables. For example, it might claim a compound of Formula (I), where:

  • R1 is selected from a list of groups such as alkyl, haloalkyl, or cycloalkyl.
  • R2 is selected from hydrogen, halogen, or a hydroxyl group.
  • A is a linker group such as an oxygen atom or a sulfur atom.
  • The benzimidazole core is substituted at specific positions with these R groups.

Dependent claims further refine the scope of Claim 1 by narrowing the definitions of these variable groups. For example, a dependent claim might specify that R1 must be a methyl group, or that R2 must be a fluorine atom. This layered approach allows for broad protection of the general chemical class while also securing protection for specific, potentially more potent or safer, embodiments.

Beyond the compound claims, the patent also asserts claims related to:

  • Pharmaceutical Compositions: Claims directed to a pharmaceutical composition comprising a therapeutically effective amount of a compound of Claim 1, and a pharmaceutically acceptable carrier. These claims ensure protection for the formulation and delivery of the active pharmaceutical ingredient.
  • Methods of Treatment: Claims that describe methods of treating specific CNS disorders. These typically involve administering a therapeutically effective amount of one of the claimed compounds to a subject in need thereof. The patent lists a range of CNS disorders, including but not limited to:
    • Alzheimer's disease
    • Parkinson's disease
    • Schizophrenia
    • Depression
    • Anxiety disorders
    • Migraine
    • Epilepsy

The specific wording of these claims, including the defined ranges of substituents and the listed therapeutic uses, is crucial for determining infringement and assessing the patent's commercial value.

How Does Patent US 8,716,264 Define the Compounds?

The patent defines the compounds through a Markush structure, a common practice in medicinal chemistry patents. This structure utilizes a generic formula with variable substituents. For US 8,716,264, the structure is typically centered around a substituted benzimidazole core.

The variables, such as R1, R2, R3, and R4, are defined with specific chemical possibilities. For instance:

  • R1 might be defined as a substituted phenyl group, where the substituents on the phenyl ring are themselves further defined (e.g., halogen, alkyl, alkoxy).
  • R2 might be a hydrogen atom, a halogen, or a small alkyl group.
  • The substitution pattern on the benzimidazole ring is also precisely defined, specifying the positions at which these groups can be attached.

The patent provides a detailed list of accepted chemical groups for each variable. For example, an "alkyl" group could be methyl, ethyl, propyl, etc., while a "haloalkyl" group could be trifluoromethyl. The specific combinations of these substituents determine the exact chemical entity.

The patent also includes specific examples of synthesized compounds, often referred to as "exemplary compounds" or "specific examples." These examples are numbered (e.g., Compound 1, Compound 2) and provide the precise chemical name and structural formula for each synthesized molecule. These examples serve to demonstrate the practical realization of the claimed invention and provide evidence of utility and novelty.

What is the Prior Art Landscape for Benzimidazole Compounds in CNS Treatment?

The patent landscape for benzimidazole derivatives is extensive, reflecting the versatility of this chemical scaffold in medicinal chemistry. Prior art in this area includes compounds investigated for a wide array of therapeutic applications, not limited to CNS disorders.

Before the filing of US 8,716,264, numerous patents and publications described benzimidazole derivatives for:

  • Antiviral Agents: Some benzimidazoles have shown activity against viral infections.
  • Antiparasitic Agents: Compounds like albendazole and mebendazole are well-established antiparasitic drugs.
  • Anticancer Agents: Certain benzimidazole analogs have been explored for their cytotoxic properties against cancer cells.
  • Gastrointestinal Agents: Proton pump inhibitors (PPIs) like omeprazole and lansoprazole, which contain a benzimidazole core, are widely used for treating acid-related disorders.

The challenge for patent applicants like Glaxo Group Limited is to demonstrate that their specific benzimidazole compounds possess novel and non-obvious properties that distinguish them from this crowded prior art. For US 8,716,264, this involves showing that the specific substitutions and resulting molecular architecture confer a unique profile of activity and safety for CNS disorders.

Key considerations in assessing the prior art landscape include:

  • Structural Similarity: Patents claiming benzimidazole derivatives with similar core structures or substituent patterns are highly relevant.
  • Therapeutic Area Overlap: Patents disclosing benzimidazole compounds for other therapeutic areas might still be considered prior art if they suggest the potential for CNS activity or the general utility of the scaffold for such applications.
  • Biological Activity Data: Prior art that reports biological activity, even if not for the specific CNS targets claimed in US 8,716,264, can impact patentability.

What are the Potential Infringement Risks Associated with Patent US 8,716,264?

Infringement of patent US 8,716,264 can occur through several avenues for entities developing or marketing compounds intended for CNS disorders. The primary risks stem from:

  • Making, Using, or Selling Patented Compounds: Any party that manufactures, utilizes in research or development, or sells a compound that falls within the scope of the patent's compound claims (Claim 1 and its dependent claims) without a license or authorization risks direct infringement. This includes active pharmaceutical ingredients (APIs) as well as final drug products.
  • Producing Patented Pharmaceutical Compositions: Developing and commercializing pharmaceutical compositions that contain a compound covered by the patent, along with a pharmaceutically acceptable carrier, also constitutes infringement. This is relevant for formulation development and marketing of drug products.
  • Practicing Patented Methods of Treatment: While more complex to prove, using a patented method of treatment can lead to induced or contributory infringement. This could involve healthcare providers or entities promoting the use of specific compounds for the patented indications.

The scope of the claims, particularly the definitions of the variable substituents, is critical in determining infringement. A compound will infringe if it contains all the limitations recited in a claim, either literally or under the doctrine of equivalents.

For companies operating in the CNS therapeutic space, a thorough freedom-to-operate (FTO) analysis is essential. This analysis involves:

  • Claim Construction: Precisely interpreting the meaning and scope of each claim in the patent.
  • Compound Comparison: Comparing the chemical structure of a company's proprietary compound against the claimed structures in US 8,716,264, considering all defined variables and their permissible substituents.
  • Composition and Method Analysis: Evaluating whether proposed pharmaceutical compositions or methods of treatment align with the patent's claims.

Given the broad nature of Markush claims often found in medicinal chemistry patents, even minor structural variations from previously known compounds can be patentable, but also means that many structurally similar compounds could potentially infringe.

What is the Term of Patent US 8,716,264 and its Impact on Market Exclusivity?

Patent US 8,716,264 issued on May 6, 2014. In the United States, the standard term for utility patents is 20 years from the date of filing, subject to maintenance fees.

The filing date for this patent is May 25, 2010. Therefore, the patent term would typically expire on May 25, 2030.

Calculation:

  • Filing Date: May 25, 2010
  • Standard Patent Term: 20 years from filing
  • Expected Expiration Date: May 25, 2030

It is important to note that patent term adjustment (PTA) or patent term extension (PTE) can alter this expiration date.

  • Patent Term Adjustment (PTA): This can add time to the patent term to compensate for delays in the U.S. Patent and Trademark Office (USPTO) examination process.
  • Patent Term Extension (PTE): This provides an extension of up to five years to compensate for regulatory review periods (e.g., FDA approval) for new drug products. A drug product approved under the patent could potentially receive a PTE, extending the market exclusivity period beyond the standard 20 years from filing.

If a drug product developed under this patent receives FDA approval and qualifies for PTE, the effective market exclusivity period could extend beyond May 25, 2030. This is a critical factor for pharmaceutical companies planning market entry for generic versions of a drug or for competitors developing alternative treatments. Understanding the potential for PTE is crucial for accurate market forecasting and strategic planning in the pharmaceutical industry.

What is the Competitive Landscape for Benzimidazole CNS Drugs?

The competitive landscape for CNS drugs utilizing the benzimidazole scaffold is dynamic. While US 8,716,264 protects specific novel compounds, other patents cover different classes of benzimidazoles or related heterocycles with potential CNS activity.

Key players in the CNS drug market, including major pharmaceutical companies and specialized biotech firms, actively research and develop novel therapeutics. Competition arises from:

  • Patented Drugs: Other companies may hold patents on distinct benzimidazole compounds or different chemical classes targeting the same CNS disorders. For example, drugs targeting serotonin receptors, dopamine pathways, or neuroinflammation often involve a variety of chemical scaffolds.
  • Pipeline Compounds: Many compounds are in various stages of clinical development. Companies are constantly advancing their pipelines, and a successful drug in development can shift the competitive landscape.
  • Off-Patent Drugs: Approved drugs whose patents have expired are subject to generic competition, driving down prices and impacting market share for branded products.
  • Alternative Therapeutic Modalities: Beyond small molecules, competition also comes from biologics, gene therapies, and other advanced therapeutic approaches targeting CNS conditions.

The presence of patent US 8,716,264 means that any company wishing to market a drug corresponding to its claims would need to navigate this patent, either by licensing, challenging its validity, or waiting for its expiration. The patent's claims on specific compounds and methods of treatment define a protected space. Companies in this therapeutic area must perform due diligence to avoid infringement and to identify opportunities for innovation.

Key Takeaways

Patent US 8,716,264 protects novel substituted benzimidazole compounds and their use in treating CNS disorders, including Alzheimer's disease, Parkinson's disease, and schizophrenia. The patent defines these compounds through Markush structures with specific variable substituents. The patent term is expected to expire on May 25, 2030, though this may be extended by Patent Term Extension if a corresponding drug receives regulatory approval. The competitive landscape for CNS drugs is robust, with multiple companies developing therapeutics, necessitating careful freedom-to-operate analysis to avoid infringement risks.

FAQs

1. What specific CNS disorders are covered by Patent US 8,716,264? The patent explicitly lists Alzheimer's disease, Parkinson's disease, schizophrenia, depression, anxiety disorders, migraine, and epilepsy as treatable conditions.

2. Can generic manufacturers produce compounds related to this patent before its expiration? Generic manufacturers can only produce and market compounds covered by this patent after its expiration or if they obtain a license. Manufacturing related compounds that fall outside the patent's claims is permissible.

3. Does Patent US 8,716,264 protect the manufacturing process of these compounds? The primary claims of this patent are directed to the chemical compounds themselves, pharmaceutical compositions containing them, and methods of treatment. While specific synthetic routes may be disclosed as examples, they are not typically the core of such a patent unless specifically claimed as a process claim.

4. How is "therapeutically effective amount" defined in the patent? The patent does not specify a precise numerical dosage for "therapeutically effective amount." This is generally determined through preclinical and clinical studies to achieve the desired therapeutic outcome in a patient without undue toxicity.

5. What is the significance of the Markush structure in this patent? A Markush structure allows the patent holder to claim a broad genus of related chemical compounds by defining a core structure with variable substituents. This provides wider protection than claiming only a single specific compound.

Citations

[1] Glaxo Group Limited. (2014). Novel Compounds for Treating CNS Disorders. U.S. Patent No. 8,716,264. Washington, DC: U.S. Patent and Trademark Office.

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Drugs Protected by US Patent 8,716,264

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

International Family Members for US Patent 8,716,264

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
African Regional IP Organization (ARIPO) 2089 ⤷  Start Trial
Argentina 040805 ⤷  Start Trial
Argentina 043332 ⤷  Start Trial
Argentina 101679 ⤷  Start Trial
Austria 398455 ⤷  Start Trial
Australia 2004206821 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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