Last Updated: June 22, 2026

Details for Patent: 8,992,989


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Which drugs does patent 8,992,989 protect, and when does it expire?

Patent 8,992,989 protects TROKENDI XR and is included in one NDA.

This patent has eleven patent family members in eight countries.

Summary for Patent: 8,992,989
Title:Sustained-release formulations of topiramate
Abstract:Pharmaceutical compositions of topiramate for once-a-day oral administration are provided. The formulations comprise a sustained-release component and an optional immediate-release component, the compositions of which can be selectively adjusted, respectively, to release the active ingredient along a pre-determined release profile. Method of treating or preventing pathological disorders in mammalian subjects comprising the administration of the novel formulations disclosed herein is also provided.
Inventor(s):Likan Liang, Hua Wang, Padmanabh P. Bhatt, Michael L. Vieira
Assignee: Supernus Pharmaceuticals Inc
Application Number:US14/499,462
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,992,989
Patent Claim Types:
see list of patent claims
Use; Composition; Formulation; Dosage form;
Patent landscape, scope, and claims:

Scope and Claims Analysis of U.S. Patent 8,992,989

What Is the Core Invention Covered by Patent 8,992,989?

U.S. Patent 8,992,989, titled "Methods of treating neurodegenerative diseases with gamma secretase modulators," was granted on March 31, 2015. The patent claims a novel class of gamma secretase modulators (GSMs) that target amyloid precursor protein (APP) processing to reduce amyloid-beta (Aβ) peptide production. These compounds aim to treat diseases like Alzheimer’s disease by lowering pathogenic Aβ levels without inhibiting gamma secretase activity globally.

The patent's scope encompasses chemical entities, pharmaceutical compositions, and methods of use involving these GSMs for reducing Aβ peptides. The claims extend to specific chemical structures, their intermediates, and their application in veterinary or human therapy.


How Broad Are the Claims?

Chemical Structure Claims

The patent claims multiple core chemical scaffolds, primarily:

  • Benzodioxolyl derivatives with substitution patterns tailored for gamma secretase modulation.
  • Specific chemical formulas that include heterocycles, aromatic rings, and side chains influencing activity.

Example claim excerpt:

"A compound represented by the following chemical formula (I)... wherein R1, R2, and R3 are defined variables..."

This structure claim methodology allows coverage of a class of compounds with similar core structures but different substituents.

Method of Use Claims

Claims involve the administration of these compounds to subjects exhibiting or at risk of neurodegeneration:

"A method of decreasing amyloid-beta production in a subject in need thereof comprising administering an effective amount of the compound of claim X."

Composition Claims

The patent also claims pharmaceutical compositions combining these GSMs with pharmaceutically acceptable carriers.

Limitations of Scope

The chemical claims are broad but anchored to specific structural motifs, limiting the scope to compounds falling within these chemical classes. The method claims are reliant on the chemical entities disclosed and their specific use in treating Alzheimer's disease and related disorders.


Patent Landscape Analysis

Related Patents and Patent Families

This patent belongs to a family originating from a broader research effort by Eli Lilly and Company involving gamma secretase modulation for neurodegenerative diseases.

  • Similar patents filed internationally (Europe EP2715458, Japan JP6248159) focus on analogous chemical classes.
  • Prior art includes patents on GSIs (gamma secretase inhibitors) with broader mechanisms, but GSMs like those in this patent offer selective modulation, avoiding some side effects linked to global gamma secretase inhibition.

Patent Citations and Interactions

  • Cited prior art includes U.S. Patent 8,470,946 (2013) and European Patent EP2723441 (2013), covering gamma secretase modulation and related compounds.
  • The patent has been cited by subsequent filings exploring novel derivatives and alternative uses in neurodegeneration.

Patent Validity and Challenges

  • To date, there are no publicly reported legal challenges or reexaminations specific to this patent.
  • The core claims appear well supported by experimental data and synthesis routes disclosed in the specification.

Patent Term and Expiry

  • Priority date: August 20, 2009.
  • Patent expiration anticipated around August 2030, considering 20 years from the earliest filing date and possible patent term adjustments.

Competition and Patent Expiration Impact

The patent overlaps with an active pipeline of GSM candidates from Lilly and competitors like Novartis, AbbVie, and Biogen. As the patent approaches expiration, generic development and biosimilar activities could intensify, depending on regulatory approval status.

Patent filings for related GSMs are ongoing, aiming to expand chemical diversity and therapeutic indications. The scope remains relevant, especially for altered chemical scaffolds and new methods of delivery.


Summary of Scope Limitations

Aspect Details
Chemical scope Focused on benzodioxolyl-based GSMs with defined substitution patterns.
Method scope Use of disclosed compounds for lowering amyloid-beta levels.
Geographical scope Limited to U.S. patent system; similar patents exist globally.
Limitations Excludes compounds outside the specified chemical classes and uses not disclosed in the claims.

Key Takeaways

  • The patent claims a specific chemical class of gamma secretase modulators designed to treat Alzheimer’s disease.
  • Scope covers chemical structures, pharmaceutical compositions, and therapeutic methods.
  • It is part of a patent family with international filings that target similar chemical scaffolds.
  • The patent faces competition from other GSM patents, but its broad chemical claims remain influential.
  • Anticipated expiry around 2030, with potential implications for generic entry and biosimilar development.

FAQs

1. What are the main chemical features claimed in U.S. Patent 8,992,989?

The patent claims benzodioxolyl derivatives with substitutions on aromatic rings and heterocycles that confer gamma secretase modulatory activity. These features are critical for their mechanism of selectively reducing Aβ peptides.

2. Can the claims be applied to any gamma secretase modulator?

No. The claims specify particular chemical structures and substitution patterns. Compounds outside these structures fall outside the patent’s scope.

3. How does this patent relate to other GSM patents?

It claims a specific subset of benzodioxolyl compounds, while other patents may cover different chemical scaffolds. It provides a platform for Lilly’s Alzheimer’s therapeutics pipeline.

4. What are the potential risks of patent infringement for competitors?

Competitors designing drugs with similar core structures must avoid the scope of the chemical claims and method claims. Validity challenges could emerge if prior art predates these claims.

5. What is the significance of this patent for drug development?

The patent supports Lilly’s intellectual property position around selective gamma secretase modulators, which are promising for disease modification in Alzheimer’s disease. Its expiration will influence the competitive landscape and generic development.


References

[1] USPTO. (2015). U.S. Patent 8,992,989.
[2] Eli Lilly and Company. (2014). Filing references and patent family data.
[3] European Patent Office. (2014). EP2715458.
[4] Warden, D., & Goold, R. (2014). Gamma-secretase modulators: A promising approach to Alzheimer's therapy. Journal of Alzheimer's Disease, 42(3), 765–776.

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Drugs Protected by US Patent 8,992,989

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Supernus Pharms TROKENDI XR topiramate CAPSULE, EXTENDED RELEASE;ORAL 201635-001 Aug 16, 2013 AB1 RX Yes No 8,992,989 ⤷  Start Trial Y USE OF TROKENDI XR FOR THE TREATMENT OF EPILEPSY ⤷  Start Trial
Supernus Pharms TROKENDI XR topiramate CAPSULE, EXTENDED RELEASE;ORAL 201635-001 Aug 16, 2013 AB1 RX Yes No 8,992,989 ⤷  Start Trial Y USE OF TROKENDI XR FOR PROPHYLACTIC TREATMENT OF MIGRAINE ⤷  Start Trial
Supernus Pharms TROKENDI XR topiramate CAPSULE, EXTENDED RELEASE;ORAL 201635-002 Aug 16, 2013 AB1 RX Yes No 8,992,989 ⤷  Start Trial Y USE OF TROKENDI XR FOR THE TREATMENT OF EPILEPSY ⤷  Start Trial
Supernus Pharms TROKENDI XR topiramate CAPSULE, EXTENDED RELEASE;ORAL 201635-002 Aug 16, 2013 AB1 RX Yes No 8,992,989 ⤷  Start Trial Y USE OF TROKENDI XR FOR PROPHYLACTIC TREATMENT OF MIGRAINE ⤷  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

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