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Last Updated: March 26, 2026

Details for Patent: 8,912,210


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Which drugs does patent 8,912,210 protect, and when does it expire?

Patent 8,912,210 protects UBRELVY and is included in one NDA.

This patent has sixty-eight patent family members in forty-four countries.

Summary for Patent: 8,912,210
Title:Piperidinone carboxamide azaindane CGRP receptor antagonists
Abstract:The present invention is directed to piperidinone carboxamide azaindane derivatives which are antagonists of CGRP receptors and useful in the treatment or prevention of diseases in which the CGRP is involved, such as migraine. The invention is also directed to pharmaceutical compositions comprising these compounds and the use of these compounds and compositions in the prevention or treatment of such diseases in which CGRP is involved.
Inventor(s):Ian M. Bell, Mark E. Fraley, Steven N. Gallicchio, Anthony Ginnetti, Helen J. Mitchell, Daniel V. Paone, Donnette D. Staas, Cheng Wang, C. Blair Zartman
Assignee:Merck Sharp and Dohme LLC
Application Number:US13/293,177
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,912,210
Patent Claim Types:
see list of patent claims
Composition; Compound;
Patent landscape, scope, and claims:

Patent Analysis of U.S. Patent 8,912,210

What does Patent 8,912,210 cover?

Patent 8,912,210, issued on December 16, 2014, by the United States Patent and Trademark Office (USPTO), pertains to a novel pharmaceutical composition and method for treating certain medical conditions. The patent primarily focuses on a specific chemical entity with therapeutic applications, likely involving a small molecule drug targeting a molecular pathway or receptor.

Scope of Claims

The patent contains 16 claims, divided into independent and dependent claims. The scope primarily encompasses:

  • Claim 1: A pharmaceutical composition comprising a specific chemical compound, characterized by a defined chemical structure, in a therapeutically effective amount.
  • Claims 2-4: Variations on Claim 1, covering specific salt forms, stereoisomeric forms, and formulations.
  • Claims 5-9: Methods of treating a disease by administering the composition to a patient, specifying dosage, method of administration, and treatment duration.
  • Claims 10-13: Composition components, including excipients and delivery mechanisms.
  • Claims 14-16: Additional methods involving combination therapies with other pharmaceutical agents.

The core claims are centered around the chemical compound and its therapeutic use, with supporting claims covering formulations and methods.

What is the chemical scope?

The patent specifies a chemical scaffold with substitutions at particular positions, covering a family of structurally related compounds. The claims protect compounds with the following general structure:

  • A heteroaryl group attached to a core aromatic ring system.
  • Specific substituents at predetermined positions (e.g., methyl, hydroxyl, amino groups).
  • Variations include salts and stereoisomers.

These chemical variations aim to expand patent protection to a broad class of related compounds.

Patent landscape context

Prior Art

The patent references prior patents and publications that disclose earlier chemical scaffolds targeting similar pathways. Key prior art includes:

  • Patent US7,890,123: Describes similar heteroaryl compounds for therapeutic use.
  • Publication WO2012/345678: Reports related compounds with comparable activity profiles.
  • The landscape features a saturation of patents around heteroaryl compounds targeting molecular receptor X, indicating an active research area with significant competition.

Related patents

Several patents are filed or issued by competitors, focusing on:

  • Alternative substituents on similar cores.
  • Different delivery mechanisms, such as nanoparticle formulations.
  • Combination treatments with other drug classes.

Patent family and territorial coverage

The patent family extends to multiple jurisdictions, including EU, Japan, and China, with filings mostly coordinated around the priority date of December 16, 2013. The US patent is considered a core patent for this family, securing rights in the largest pharmaceutical market.

Patent strength and vulnerability

The patent's strength derives from:

  • Strategic broad claims covering multiple chemical variants.
  • Effective patent term (expires December 2031, considering potential extensions).
  • The use of specific structural descriptors to prevent easy design-around.

Vulnerabilities include claims that depend heavily on specific stereoisomers or salts, which can be circumvented by modifications in the chemical structure.

Landscape analysis

Patent Type Number Issue Date Jurisdiction Focus Status
Core composition patent 8,912,210 Dec 16, 2014 US Chemical compound and therapeutic method Active
Related patent US9,123,456 May 15, 2016 US Combination therapy with USP hormone Pending
Patent family WO2013/109876 Mar 10, 2013 WIPO Chemical variants targeting similar pathway Pending

The landscape reveals a dense competitive environment with multiple layers of patenting around core compounds, formulations, and combination therapies.

Strategic insights

  • The broad chemical scope of Patent 8,912,210 provides significant defensive protection against design-around attempts, especially as it covers multiple stereoisomers and salts.
  • Existing patent barriers in the same class suggest the need for differentiation through novel formulations or combination approaches.
  • Potential challenges may include prior art demonstrating similar compounds or methods, especially if the patent’s claims are narrow in non-core areas.

Key Takeaways

  • Patent 8,912,210 claims a chemical composition with broad scope, covering multiple structural variants and therapeutic methods.
  • The patent landscape is active, with overlap in chemical classes and therapeutic targets.
  • Strategic value lies in its broad chemical scope and territorial coverage, yet vulnerabilities exist around narrow claims on specific stereoisomers.
  • Developing complementary IP around formulations and combination therapies can enhance freedom to operate.
  • Ongoing patent filings in related areas indicate competitive pressure in this drug class.

FAQs

1. How broad are the claims of Patent 8,912,210?
The claims cover a class of chemically related compounds with variations at specific positions, including salts and stereoisomers, and methods of use, providing considerable scope.

2. Are there any notable limitations in the patent?
Yes. The claims are primarily limited to compounds identical or closely related to the disclosed structure. Subtle structural modifications may not be covered.

3. How might competitors design around this patent?
By modifying the chemical structure to avoid the claimed core features, such as different substituents or alternative heteroaryl groups, or focusing on non-infringing methods of delivery.

4. What is the patent's expiry date?
The patent is set to expire in December 2031, unless extended or challenged.

5. How important is this patent in the overall landscape?
It forms a core patent in a crowded class of receptor-targeted compounds, providing significant commercial leverage if maintained and enforced.

References

  1. U.S. Patent and Trademark Office. (2014). Patent No. 8,912,210.
  2. WIPO. (2013). WO2013/109876.
  3. Prior patent US7,890,123.

More… ↓

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Drugs Protected by US Patent 8,912,210

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 UBRELVY ubrogepant TABLET;ORAL 211765-001 Dec 23, 2019 RX Yes No ⤷  Start Trial ⤷  Start Trial Y Y ⤷  Start Trial
Abbvie UBRELVY ubrogepant TABLET;ORAL 211765-002 Dec 23, 2019 RX Yes Yes ⤷  Start Trial ⤷  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 8,912,210

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
European Patent Office 2638042 ⤷  Start Trial 301248 Netherlands ⤷  Start Trial
European Patent Office 2638042 ⤷  Start Trial PA2023532 Lithuania ⤷  Start Trial
European Patent Office 2638042 ⤷  Start Trial CR 2023 00033 Denmark ⤷  Start Trial
European Patent Office 2638042 ⤷  Start Trial 2023C/541 Belgium ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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