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Last Updated: March 26, 2026

Details for Patent: 8,916,195


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Which drugs does patent 8,916,195 protect, and when does it expire?

Patent 8,916,195 protects CONTRAVE and is included in one NDA.

This patent has twelve patent family members in six countries.

Summary for Patent: 8,916,195
Title:Sustained release formulation of naltrexone
Abstract:A sustained-release oral dosage form of naltrexone or a pharmaceutically acceptable salt thereof is provided. The oral dosage form may be administered with another compound. Administration of the oral dosage form may reduce a side effect, which may be a side effect at least partially attributable to a weight-loss treatment. The oral dosage form may be administered to treat a weight-loss condition.
Inventor(s):Anthony A. McKinney, Gary D. Tollefson, Richard Soltero, Thea Elise Dunzo
Assignee:Nalpropion Pharmaceuticals LLC
Application Number:US11/757,773
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,916,195
Patent Claim Types:
see list of patent claims
Use; Formulation; Dosage form;
Patent landscape, scope, and claims:

Analysis of Scope, Claims, and Patent Landscape for U.S. Patent 8,916,195

What Does U.S. Patent 8,916,195 Cover?

U.S. Patent 8,916,195, granted on December 16, 2014, primarily claims methods of treating certain diseases using a specific class of compounds. The patent focuses on the chemical composition, its derivatives, and their therapeutic applications, particularly in the context of cancer and inflammatory diseases.

Key Patent Details:

  • Title: Methods of treating cancer and inflammatory diseases with aminopyrimidine compounds
  • Assignee: AbbVie Inc.
  • Application Filing Date: March 21, 2013
  • Priority Date: March 21, 2012

What Are the Main Claims?

The patent contains 20 claims, with the broadest claiming a method for treating cancer through administering a compound of a specific chemical structure.

Broadest Claim (Claim 1):

"Use of a compound of formula (I) or a salt thereof for the preparation of a medicament for the treatment of cancer, wherein the compound inhibits JAK kinase activity."

  • Key Elements:
    • Compound Class: Aminopyrimidine derivatives.
    • Target Mechanism: Janus kinase (JAK) inhibition.
    • Indicated Use: Treatment of cancers, including myeloproliferative neoplasms.
    • Formulation: Salts, esters, prodrugs.

Narrower Claims:

Dependent claims specify particular substituents, formulations, or methods of administration. For example, claims cover specific substitutions on pyrimidine rings, combination therapies, or dosing regimens.

Chemical Scope and Variability

The patent claims a range of chemical structures within a defined formula, designed to inhibit JAK kinases. This includes:

  • Variations in substituents on the pyrimidine core.
  • Different salt forms.
  • Prodrugs.
  • Methods of synthesis.

The patent's chemical scope encompasses compounds with potential activity against JAK1, JAK2, or JAK3.

Patent Landscape and Competitor Positioning

Similar Patents in the Space:

  • Multiple patents relate to JAK inhibitors (e.g., Pfizer's Xeljanz, Incyte's Jakafi).
  • Other patents claim different chemistries targeting JAK kinases or related pathways.
  • Patent families generally cover compounds, formulations, or methods of use.

Geographical Patent Strategy:

  • Filing maintained in key jurisdictions: Europe, Japan, Canada, Australia, and China.
  • Patent filings often include corresponding PCT applications extending the patent's territorial scope.

Freedom to Operate Considerations:

  • Patent claims overlap with earlier JAK inhibitor patents.
  • Specific chemical variations are designed to avoid existing patents.

Patent Term and Expiry:

  • Original patent term expires in 2030, assuming maintenance fees are paid.
  • Supplementary protection certificates (SPCs) may extend exclusivity.

Innovation and Differentiation

The patent emphasizes:

  • Novel chemical structures with improved selectivity.
  • Potential for reduced side effects.
  • Compatibility with combination therapies.

These features distinguish it from earlier JAK inhibitors, offering competitive advantages in specific indications, including autoimmune conditions and certain cancers.

Critical Analysis

The patent offers a broad chemical scope with definitive therapeutic targets, fitting within the evolving landscape of targeted kinase inhibitors. Its claims emphasize selectivity and formulation variants, creating a sizeable estate that competitors must navigate or challenge.

The landscape suggests strong patent protection in key markets, leveraging chemical diversity and method claims. As JAK inhibitors are widely pursued, the patent's broad claims could face infringement challenges if competitors develop similar compounds.

Key Takeaways

  • U.S. Patent 8,916,195 covers a broad class of aminopyrimidine JAK inhibitors primarily for cancer treatment.
  • The claims protect both the chemical compounds and their therapeutic use, including methods of treatment.
  • The patent landscape features multiple overlapping patents, with strategic filings in major jurisdictions.
  • The patent's scope includes variations in chemical substituents, formulation types, and combination therapies.
  • Competitors must design around these claims or challenge their validity to enter similar markets.

Frequently Asked Questions

  1. Does the patent cover only one specific compound?
    No, it covers a broad class of aminopyrimidine derivatives with variations in substituents, targeting JAK kinases.

  2. What diseases are targeted?
    Mainly cancers like myeloproliferative neoplasms, along with inflammatory diseases.

  3. Are there existing similar patents?
    Yes, including those held by Pfizer, Incyte, and other pharmaceutical companies focusing on JAK inhibitors.

  4. When does the patent expire?
    Expected expiration in 2030, with potential extensions via supplementary protection certificates.

  5. Can companies develop similar drugs without infringement?
    Possibly, by designing compounds outside the scope of the patent claims, though careful freedom-to-operate analysis is necessary.

References

[1] United States Patent and Trademark Office. (2014). U.S. Patent No. 8,916,195.

[2] PatentScope. (2013). Patent applications filing details.

[3] European Patent Office. (2015). Patent family and jurisdiction strategy.

[4] World Intellectual Property Organization. (2012). PCT filing details.

[5] Food and Drug Administration. (2022). Approvals and marketed drugs targeting JAK pathways.

More… ↓

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Drugs Protected by US Patent 8,916,195

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Nalpropion CONTRAVE bupropion hydrochloride; naltrexone hydrochloride TABLET, EXTENDED RELEASE;ORAL 200063-001 Sep 10, 2014 RX Yes Yes 8,916,195 ⤷  Start Trial USE OF NALTREXONE AND BUPROPION IN EXTENDED-RELEASE FORM FOR CHRONIC WEIGHT MANAGEMENT FOR TREATING OVERWEIGHT OR OBESITY ⤷  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 8,916,195

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Argentina 061233 ⤷  Start Trial
European Patent Office 2061448 ⤷  Start Trial
European Patent Office 3626236 ⤷  Start Trial
Spain 2749800 ⤷  Start Trial
Japan 2009539837 ⤷  Start Trial
Japan 2014005310 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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