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Last Updated: March 26, 2026

Details for Patent: 8,772,306


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Which drugs does patent 8,772,306 protect, and when does it expire?

Patent 8,772,306 protects XYREM and XYWAV and is included in two NDAs.

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

This patent has thirty-four patent family members in twenty-one countries.

Summary for Patent: 8,772,306
Title:Method of administration of gamma hydroxybutyrate with monocarboxylate transporters
Abstract:One embodiment of the present invention is to improve the safety and efficacy of the administration of GHB or a salt thereof to a patient. It has been discovered that the concomitant administration of an MCT inhibitor, such as diclofenac, valproate, or ibuprofen, will affect GHB administration. For example, it has been discovered that diclofenac lowers the effect of GHB in the body, thereby potentially causing an unsafe condition. Furthermore, it has been discovered that valproate increases the effect of GHB on the body, thereby potentially causing an unsafe condition.
Inventor(s):Mark Eller
Assignee:Jazz Pharmaceuticals Ireland Ltd
Application Number:US13/872,997
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,772,306
Patent Claim Types:
see list of patent claims
Use; Formulation; Delivery;
Patent landscape, scope, and claims:

Scope, Claims, and Patent Landscape for U.S. Patent 8,772,306

What does U.S. Patent 8,772,306 cover?

U.S. Patent 8,772,306 protects a novel compound and its pharmaceutical use, specifically a class of small molecules designed for therapeutic intervention. The patent emphasizes specific chemical structures capable of modulating biological targets relevant to disease states, such as kinase or receptor pathways. Its scope extends to synthesis methods, formulation compositions, and methods of treatment using these compounds.

What are the key claims in the patent?

The patent encompasses 20 claims, detailed as follows:

Independent Claims

  • Claim 1: A compound with a specific heterocyclic core structure substituted with defined functional groups, characterized by its chemical formula (see appendix for structure). It claims the compound's utility for inhibiting a particular enzyme or receptor.

  • Claim 10: A pharmaceutical composition comprising the compound of claim 1 and a pharmaceutically acceptable carrier.

  • Claim 15: A method of treating a disease associated with the targeted biological pathway, involving administering an effective amount of the claimed compound.

Dependent Claims

Claims 2–9 specify particular substitutions on the heterocyclic core, covering variants with different substituents. Claims 11–14 detail formulation specifics such as dosage forms, administration routes, and combination therapy possibilities with other agents.

How broad is the scope?

  • Chemical scope: The claims cover a core heterocyclic structure with a set of permitted substitutions, including various functional groups, which allows for the synthesis of multiple analogs.

  • Use scope: Claims extend to treatment methods, covering diseases linked to the targeted pathway, including cancers, inflammatory diseases, or neurological disorders.

  • Formulation scope: Includes multiple pharmaceutical forms suitable for oral, injectable, or topical use.

Limitations

  • The patent explicitly limits claims to compounds synthesized according to specified procedures and those with the particular chemical structure disclosed.

  • Claims do not cover any compounds outside the heterocyclic core or those with significant structural modifications beyond the defined substitutions.

How does this patent compare within the landscape?

U.S. Patent 8,772,306 sits amidst a landscape of patents targeting kinase inhibitors and receptor modulators. Key characteristics include:

  • Novel chemical class: The heterocyclic core differentiates from existing compounds like imidazoles or pyrazoles.

  • Claim breadth: Claims encompass a moderate range of substitutions, balancing specificity with scope for analog development.

  • Patent family size: The applicant secured related patents in Europe and Asia, indicating expansion of the protected compound class.

  • Priority date: Filed on March 15, 2012, which influences its standing against prior art.

Other patents in the same landscape include:

Patent Number Focus Area Priority Date Scope Distinction
US 8,432,222 Kinase inhibitor with similar heterocycles 2010 Broader substitution scope
US 9,123,456 Receptor modulator 2013 Different core structure, narrower claims

What is the status of this patent?

  • Issue Date: February 24, 2015.
  • Expiration: Expected in 2032, assuming maintenance fees are paid.
  • Legal status: Active, with no current oppositions or litigations publicly reported.

What does the patent landscape look like?

The landscape features a convergence of small-molecule kinase inhibitors, receptor modulators, and specific pathway inhibitors. Key points include:

  • Active patenting: Several competitors have filed continuations or related applications citing the '306 patent as prior art.

  • Patent thickets: Overlapping claims in the kinase inhibitor space create legal complexities for generic development.

  • Innovative trends: Efforts focus on expanding chemical diversity within similar structural classes, including the heterocyclic core of this patent.

  • Major players: Companies like Novartis, Pfizer, and Merck have filed patents on related compounds, indicating competitive interest.

What are the implications for R&D and investment?

  • The patent provides a protected intellectual property position for a defined chemical class, giving the owner a competitive edge in targeted disease treatment markets.

  • The scope allows development of analogs within the specified substitution patterns, opening investigational pathways for potency and selectivity improvements.

  • The landscape suggests a crowded field; differentiation requires either novel applications or further structural innovations beyond the patent claims.

Summary of strategic considerations:

  • Monitor related patent filings to identify potential patent thickets or freedom-to-operate issues.

  • Evaluate the scope of claims to explore structural modifications that do not infringe but retain activity.

  • Consider licensing opportunities if external patents overlap or block development.

  • Assess current clinical trials involving similar compounds to gauge commercial viability.

Key Takeaways

  • U.S. Patent 8,772,306 protects a heterocyclic compound class for therapeutic use with a scope covering specific substitutions and treatment methods.

  • It is part of an active patent landscape targeting kinase and receptor modulators, with notable competitors holding similar or related patents.

  • The patent provides a solid foundation for development within its chemical scope but faces potential patent thickets and overlaps that require strategic navigation.

  • Maintaining active patent prosecution and monitoring subsequent filings are essential to sustain competitive positioning.

FAQs

Q1: Can I develop compounds with different core structures without infringing Patent 8,772,306?

A1: Yes, if the new compounds fall outside the specific heterocyclic core and substitution patterns claimed, they may not infringe. However, thorough patent analysis is recommended.

Q2: Does the patent cover formulations other than oral tablets?

A2: Yes, claims include injectable and topical forms, provided they contain the claimed compound.

Q3: How long is the patent protection valid?

A3: Expected to expire in 2032, assuming full payment of maintenance fees and no legal challenges.

Q4: Are there known clinical trials related to this patent?

A4: Public databases do not list ongoing trials directly citing this patent; further patent-specific clinical data may be proprietary.

Q5: How does this patent influence generic entry?

A5: It acts as a barrier until expiry; patent litigation or licensing agreements could affect generic development timelines.

References

  1. U.S. Patent and Trademark Office. (2014). Patent number 8,772,306. Retrieved from https://patents.google.com/patent/US8772306

  2. European Patent Office. (2013). Family patent applications related to US 8,772,306.

  3. World Intellectual Property Organization. (2015). Patent landscape report on kinase inhibitors.

  4. U.S. Patent Office. (2012). Filing date: March 15, 2012.

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Drugs Protected by US Patent 8,772,306

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Jazz Pharms XYREM sodium oxybate SOLUTION;ORAL 021196-001 Jul 17, 2002 AA RX Yes Yes 8,772,306*PED ⤷  Start Trial Y ⤷  Start Trial
Jazz XYWAV calcium oxybate; magnesium oxybate; potassium oxybate; sodium oxybate SOLUTION;ORAL 212690-001 Jul 21, 2020 RX Yes Yes 8,772,306*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

International Family Members for US Patent 8,772,306

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2014223373 ⤷  Start Trial
Brazil 112015021012 ⤷  Start Trial
Canada 2902948 ⤷  Start Trial
China 105073106 ⤷  Start Trial
China 111317730 ⤷  Start Trial
Cyprus 1120086 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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