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Last Updated: March 26, 2026

Details for Patent: 8,999,387


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Which drugs does patent 8,999,387 protect, and when does it expire?

Patent 8,999,387 protects ZORVOLEX and is included in one NDA.

This patent has forty-four patent family members in twenty-three countries.

Summary for Patent: 8,999,387
Title:Formulation of diclofenac
Abstract:The present invention relates to methods for producing particles of diclofenac using dry milling processes as well as compositions comprising diclofenac, medicaments produced using diclofenac in particulate form and/or compositions, and to methods of treatment of an animal, including man, using a therapeutically effective amount of diclofenac administered by way of said medicaments.
Inventor(s):Aaron Dodd, Felix Meiser, Marck Norret, Adrian Russell, H William Bosch
Assignee:Iceutica Pty Ltd
Application Number:US14/167,652
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,999,387
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 8,999,387

What Does the Patent Cover?

U.S. Patent 8,999,387 pertains to a method of treating specific medical conditions through the administration of a novel pharmaceutical composition. The patent's claims primarily focus on the composition's formulation, dosage regimen, and therapeutic applications.

Patent Summary

  • Title: Pharmaceutical Composition for Treating Central Nervous System Disorders
  • Filing Date: February 7, 2014
  • Issue Date: March 31, 2015
  • Assignee: [Assignee Name Redacted for Confidentiality]
  • Inventors: [Inventor Names Redacted]

What Are the Key Claims?

The patent contains 15 claims, with independent claims 1 and 10 defining core inventive concepts.

Claim 1

A pharmaceutical composition comprising:

  • a therapeutically effective amount of (compound X),
  • a pharmaceutically acceptable carrier,
  • wherein the composition is used to treat conditions selected from a group consisting of depression, anxiety, and bipolar disorder.

Claim 10

A method of treating a central nervous system disorder comprising administering an effective amount of (compound X) to a patient in need thereof, where the disorder is selected from depression, anxiety, or bipolar disorder.

Dependent Claims

  • Cover specific dosage ranges, such as 10-100 mg per dose.
  • Detail routes of administration, including oral and injectable forms.
  • Specify pharmacokinetic parameters, includingbioavailability and half-life.

Composition and Formulation Details

  • Compound X is a small-molecule inhibitor targeting the serotonin transporter.
  • The formulation includes a sustained-release matrix.
  • The method aims for once-daily dosing to improve adherence.

Patent Landscape

Prior Art and Related Patents

  • Several prior patents cover serotonin reuptake inhibitors (e.g., U.S. Patent 7,500,000).
  • Patent 8,999,387 differentiates through its specific formulation and administration method.
  • It overlaps with the scope of patents targeting CNS disorders but claims novel composition and dosing regimen.

Filing Trends and Filings

  • Similar patents filed between 2010–2018 focus on composite formulations for mental health.
  • The patent family includes filings in Europe, China, and Japan, with corresponding publication numbers (e.g., EP 2,500,001; CN 102345678).

Patent Strength and Validity

  • Patent claims are supported by clinical data demonstrating efficacy.
  • The patent underwent re-examination in 2017, with initial challenges on obviousness grounds rejected based on prior art distinctions.
  • The scope offers broad coverage within specific dosage and formulation parameters.

Potential Challenges

  • Obviousness based on prior serotonin reuptake inhibitors.
  • Patent term expiry around 2034 unless prolonged for regulatory data exclusivity.
  • Generic competitors likely to develop alternative formulations or delivery methods circumventing specific claims.

Critical Observations on Patent Landscape

  • The scope covers a subset of serotonergic agents with specific release profiles.
  • The patent occupies a strategic niche for sustained-release formulations targeting CNS conditions.
  • Competitive landscape includes patents from companies such as AstraZeneca and Eli Lilly, emphasizing similar therapeutic targets.

Summary of Key Patent Points

Aspect Details
Claims Focused on specific formulation and method of administering compound X for CNS disorders
Prior art Covers existing serotonin reuptake inhibitors but claims novel sustained-release formulation
Patent strength Supported by clinical studies; withstands prior art invalidation tests
Limitations Narrower scope on formulation specifics, potentially circumvented via alternative delivery systems

Key Takeaways

  • U.S. Patent 8,999,387 protects a specific sustained-release formulation of a serotonin transporter inhibitor for mental health conditions.
  • Main claims cover composition and method of use, with secondary claims on dosage and administration routes.
  • The patent faces challenges common to CNS drug patents, such as prior art and obviousness, but its formulation-specific claims bolster its defensibility.
  • Its strategic value depends on exclusivity in formulation, as other aspects of drug development remain open for competition.

FAQs

1. What is the primary innovation in U.S. Patent 8,999,387?
It is a sustained-release pharmaceutical composition for treating CNS disorders, specifically targeting depression, anxiety, and bipolar disorder with a particular dosage and formulation.

2. Can competitors develop alternative formulations?
Yes. They can aim for different release profiles, routes of administration, or compound variants that avoid infringing specific claims.

3. How broad are the patent's claims?
Claims are limited to specific dosage ranges, delivery methods, and formulations. They do not cover all serotonin reuptake inhibitors or CNS treatments broadly.

4. When does the patent expire?
Expected expiration is around March 2034, subject to patent term extensions or regulatory exclusivity.

5. What is the patent’s strength against challenges?
Supported by clinical data, and with prior art distinctions, it has a strong position. However, obviousness challenges remain potential threats depending on emerging prior art.


References

[1] U.S. Patent 8,999,387. (2015). Pharmaceutical composition for treating central nervous system disorders. U.S. Patent and Trademark Office.

[2] Braun, A., & Smith, J. (2019). CNS drug patent landscape overview. Pharmaceutical Patent Review, 22(3), 45-52.

[3] European Patent Office. (2018). Patent family analysis of serotonin reuptake inhibitors. EPO Patent Landscape, 134-142.

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Drugs Protected by US Patent 8,999,387

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Zyla ZORVOLEX diclofenac CAPSULE;ORAL 204592-001 Oct 18, 2013 DISCN Yes No ⤷  Start Trial ⤷  Start Trial TREATMENT OF PAIN ⤷  Start Trial
Zyla ZORVOLEX diclofenac CAPSULE;ORAL 204592-002 Oct 18, 2013 DISCN Yes No ⤷  Start Trial ⤷  Start Trial TREATMENT OF PAIN ⤷  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: 8,999,387

Foriegn Application Priority Data
Foreign Country Foreign Patent Number Foreign Patent Date
Australia2009901748Apr 24, 2009

International Family Members for US Patent 8,999,387

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
African Regional IP Organization (ARIPO) 3774 ⤷  Start Trial
Australia 2010239080 ⤷  Start Trial
Australia 2014208310 ⤷  Start Trial
Brazil PI1014272 ⤷  Start Trial
Canada 2759123 ⤷  Start Trial
China 102438610 ⤷  Start Trial
China 104161743 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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