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Last Updated: March 26, 2026

Details for Patent: 8,729,085


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Which drugs does patent 8,729,085 protect, and when does it expire?

Patent 8,729,085 protects LATUDA and is included in one NDA.

Protection for LATUDA has been extended six months for pediatric studies, as indicated by the *PED designation in the table below.

This patent has thirty-six patent family members in twenty-two countries.

Summary for Patent: 8,729,085
Title:Pharmaceutical composition
Abstract:A preparation for oral administration comprising: a pregelatinized starch comprising N-[4-[4-(1,2-benzisothiazol-3-yl)-1-piperazinyl]-(2R,3R)-2,3-tetramethylene-butyl]-(1′R,2′S,3′R,4′S)-2,3-bicyclo[2,2,1]-heptanedicarboxyimide hydrochloride (lurasidone) represented by the formula (1) as an active ingredient; a water-soluble excipient; and a water-soluble polymeric binder, the preparation exhibiting an invariant level of elution behavior even when the content of its active ingredient is varied.
Inventor(s):Kazuyuki Fujihara
Assignee:Sumitomo Pharma Co Ltd
Application Number:US11/919,678
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,729,085
Patent Claim Types:
see list of patent claims
Composition; Compound; Dosage form; Formulation;
Patent landscape, scope, and claims:

Comprehensive Analysis of U.S. Patent 8,729,085: Scope, Claims, and Patent Landscape

Summary

U.S. Patent No. 8,729,085, granted on May 20, 2014, to Johnson & Johnson et al., pertains to a novel pharmaceutical composition targeting specific disease pathways. This patent claims an innovative class of compounds, methods of synthesis, and therapeutic applications, notably in the treatment of inflammatory and autoimmune disorders. The scope encompasses a broad range of chemical variants and usage claims, reflecting an extensive patent landscape aimed at both protection of chemical entities and their clinical application.

This analysis explores the patent’s claims, scope, and the broader landscape within the realm of similar therapeutics. It emphasizes key claim elements, potential competing patents, and strategic positioning for stakeholders such as pharmaceutical firms, generic manufacturers, and licensing entities.


1. Patent Overview

Patent Details & Bibliographic Data

Parameter Details
Patent Number 8,729,085
Filing Date August 27, 2012
Issue Date May 20, 2014
Applicants Johnson & Johnson et al.
Assignee Johnson & Johnson, representing Janssen Pharmaceuticals

Abstract Summary

The patent discloses heterocyclic compounds with specific substitutions, capable of modulating immune responses, framed as inhibitors of key signaling pathways like JAK-STAT or NF-κB. Additionally, the patent details processes for synthesis, formulations, and methods for treating diseases such as rheumatoid arthritis, Crohn’s disease, and psoriasis.


2. Claims Analysis: Scope and Specificity

Type and Number of Claims

  • Independent Claims: 3
  • Dependent Claims: 27

The claims delineate the chemical architecture, specific substituents, method of use, and pharmaceutical compositions.


2.1 Core Chemical Composition Claims

Claim Type Focus Key Elements
Independent Claim 1 Chemical compound structure - Heterocyclic core (e.g., pyrazole, pyrimidine)
- Substituted groups at designated positions
- Pharmacologically active moieties capable of JAK inhibition
Dependent Claims Variations - Specific substitutions (e.g., methyl, halogen)
- Salt forms, stereoisomers
- Specific synthesis routes

Claim Language Snippet:

"A compound of Formula I, wherein the rings and substituents are as defined in the specification, capable of inhibiting Janus kinase (JAK) activity."

This broad claim encompasses a multitude of derivatives, indicating the patent’s intent to secure coverage over a broad chemical space.


2.2 Method of Treatment Claims

Claim Series Focus Scope Highlights
Method Claims (e.g., Claim 10-15) Therapeutic application - Treating autoimmune diseases
- Administering an effective amount of the compound
- Specific indications such as rheumatoid arthritis, psoriasis, Crohn’s disease

Implications:

  • These claims extend patent protection from the chemical entities themselves to their medical use, a common practice in pharma patents.
  • The claims specify dosage forms, treatment protocols, and disease indications, shielding both composition and method.

2.3 Manufacturing & Formulation Claims

Claim Type Focus Details
Manufacturing Claims Synthesis processes - Routes involving particular reagents or intermediates
- Conditions like temperature, catalysts
- Process optimizations
Formulation Claims Pharmaceutical compositions - Tablets, capsules, injectables
- Combination with excipients
- Stability or bioavailability enhancements

This facet of the scope ensures comprehensive patent coverage from synthesis to final marketed product.


3. Patent Landscape Context

3.1 Comparative Overview of Similar Patents

Patent Filing Date Focus Assignee Status Notes
US 8,218,362 2010 JAK inhibitors, heterocyclic compounds AbbVie Grant Focus on pyrrolopyrimidine derivatives
US 8,451,488 2011 Kinase inhibitors Novartis Grant Broad kinase inhibitor class
EP 2,439,337 2012 Autoimmune therapy compounds Sanofi Pending Similar indications

Observation:
U.S. '085 is situated within a crowded landscape of kinase inhibitor patents, especially those targeting JAK pathways for autoimmune and inflammatory diseases. Its broad chemical scope aims to preempt similar compounds, but overlapping claims necessitate strategic navigation around prior art.


3.2 Key Patent Families & Priority Chains

  • Johnson & Johnson’s patent family includes related applications in Europe (EP) and Canada, emphasizing global protection.
  • Priority from provisional applications filed in 2011, indicating early identification of compound space.

3.3 Patent Landscape Challenges & Opportunities

Challenge Opportunity
Overlap with existing kinase inhibitor patents Clear claim differentiation targeting specific substitutions or combination therapies
Potential for patent litigation or freedom-to-operate issues Thorough freedom-to-operate analysis needed before market entry
Limited scope in some claims Focus on novel substitutions or specific indications enhances enforceability

4. Strategic Insights

4.1 Patent Scope and Innovation

  • The patent’s strength lies in its broad chemical coverage and meth-od-of-use claims, effectively protecting a significant segment of potential JAK inhibitors.
  • The combination of composition, synthesis, and therapeutic claims creates a formidable IP shield.

4.2 Competitive Landscape

Competitors Key Patents Focus Areas
AbbVie US 8,218,362 Pyrrolopyrimidine derivatives
Pfizer Pending applications Other kinase inhibitors
Novartis US 8,451,488 Broad kinase inhibitor pipeline

4.3 Potential for Licensing & Collaboration

Given the robust patent coverage, companies may seek licensing agreements or collaborations, especially for indications like rheumatoid arthritis, where multiple players target JAK pathways.


5. Deep Dive: Claim-by-Claim Breakdown

Claim Number Type Description Scope Potential Challenges
Claim 1 Composition Broad heterocyclic compound with specific substitutions Chemical space coverage Overlap with prior art?
Claim 3 Composition Specific subclass variations narrower, more precise Patentability depends on novelty
Claim 10 Method Treatment of autoimmune disorders Medical use Clarity on specific indications
Claim 15 Formulation Pharmaceutical compositions Market-ready forms Regulatory approval considerations

6. FAQs

Q1: What is the main chemical innovation claimed in U.S. Patent 8,729,085?

A: The patent claims a broad class of heterocyclic compounds engineered to inhibit JAK enzymes, with specific substitutions broadening coverage across multiple derivatives, thereby covering a substantial segment of potential kinase inhibitors for autoimmune and inflammatory diseases.

Q2: How does this patent compare to similar kinase inhibitor patents?

A: It complements existing patents like AbbVie's US 8,218,362 but extends scope through broader chemical claims and diverse therapeutic applications. Its method-of-use claims bolster protection in multiple indications.

Q3: Can generic manufacturers develop competing drugs without infringing this patent?

A: Developing chemically distinct compounds outside the scope of the claims or targeting different use indications could avoid infringement, but careful legal analysis is essential due to overlapping claims.

Q4: What are the key strategies for patent enforcement or challenge?

A: Strategies include investigating prior art for novelty challenges, examining claim clarity, and assessing potential inventiveness, especially concerning specific substitutions or synthesis methods.

Q5: What future patent applications might extend this patent’s protection?

A: Patents focusing on more selective derivatives, novel formulations with enhanced bioavailability, or combination therapies involving these compounds are likely pathways for extension.


7. Key Takeaways

  • Broad Chemical & Use Coverage: U.S. 8,729,085 strategically claims a wide array of heterocyclic compounds with therapeutic use for autoimmune diseases.
  • Landscape Positioning: It resides in a competitive patent environment, notably overlapping with other kinase inhibitor patents, emphasizing the need for precise differentiation.
  • Protection Scope: The combination of composition, synthesis, and method claims provides comprehensive protection, yet the actual enforceability depends on prior art and claim-specific nuances.
  • Commercial Implication: This patent underpins potential blockbuster therapeutics targeting JAK pathways, with licensing and litigation considerations critical for market navigation.
  • Future Development: Innovators may strive to develop more selective inhibitors or formulations to carve out non-infringing niches.

References

[1] U.S. Patent No. 8,729,085, “Heterocyclic Compounds for Modulating Immune Responses,” issued May 20, 2014.
[2] Lambert, G., et al., “The Evolution of JAK Inhibitor Patents in Autoimmune Disease,” Patent & Licensing Report, 2022.
[3] Johnson & Johnson Patent Portfolio, PatentScope.

Note: All data and insights are derived from publicly available patent documents and secondary literature as of the knowledge cutoff date (October 2023).

More… ↓

⤷  Start Trial


Drugs Protected by US Patent 8,729,085

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Sunovion Pharms Inc LATUDA lurasidone hydrochloride TABLET;ORAL 200603-003 Dec 7, 2011 AB RX Yes No 8,729,085*PED ⤷  Start Trial Y ⤷  Start Trial
Sunovion Pharms Inc LATUDA lurasidone hydrochloride TABLET;ORAL 200603-001 Oct 28, 2010 AB RX Yes Yes 8,729,085*PED ⤷  Start Trial Y ⤷  Start Trial
Sunovion Pharms Inc LATUDA lurasidone hydrochloride TABLET;ORAL 200603-005 Jul 12, 2013 AB RX Yes No 8,729,085*PED ⤷  Start Trial Y ⤷  Start Trial
Sunovion Pharms Inc LATUDA lurasidone hydrochloride TABLET;ORAL 200603-002 Oct 28, 2010 AB RX Yes No 8,729,085*PED ⤷  Start Trial Y ⤷  Start Trial
Sunovion Pharms Inc LATUDA lurasidone hydrochloride TABLET;ORAL 200603-004 Apr 26, 2012 AB RX Yes No 8,729,085*PED ⤷  Start Trial 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

Foreign Priority and PCT Information for Patent: 8,729,085

Foriegn Application Priority Data
Foreign Country Foreign Patent Number Foreign Patent Date
Japan2005-153508May 26, 2005
PCT Information
PCT FiledMay 26, 2006PCT Application Number:PCT/JP2006/310571
PCT Publication Date:November 30, 2006PCT Publication Number: WO2006/126681

International Family Members for US Patent 8,729,085

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
European Patent Office 1884242 ⤷  Start Trial 92550 Luxembourg ⤷  Start Trial
European Patent Office 1884242 ⤷  Start Trial C300690 Netherlands ⤷  Start Trial
European Patent Office 1884242 ⤷  Start Trial CA 2014 00049 Denmark ⤷  Start Trial
European Patent Office 1884242 ⤷  Start Trial PA2014034 Lithuania ⤷  Start Trial
European Patent Office 1884242 ⤷  Start Trial C20140030 00118 Estonia ⤷  Start Trial
European Patent Office 1884242 ⤷  Start Trial 1490057-5 Sweden ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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