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Last Updated: December 16, 2025

Details for Patent: 9,101,591


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Which drugs does patent 9,101,591 protect, and when does it expire?

Patent 9,101,591 protects PENNSAID and is included in one NDA.

This patent has eighteen patent family members in fourteen countries.

Summary for Patent: 9,101,591
Title:Diclofenac topical formulation
Abstract:The present invention provides a gel formulation comprising diclofenac sodium which has superior transdermal flux properties, which may be used for the topical treatment of pain, such as in osteoarthritis.
Inventor(s):Ed Kisak, Jagat Singh
Assignee:Horizon Therapeutics Ireland DAC
Application Number:US14/596,919
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 9,101,591
Patent Claim Types:
see list of patent claims
Formulation; Compound; Use;
Patent landscape, scope, and claims:

Comprehensive Analysis of US Patent 9,101,591: Scope, Claims, and Patent Landscape

Introduction

United States Patent 9,101,591 (hereafter "the '591 patent") pertains to a novel pharmaceutical compound or formulation, with broad implications within the biopharmaceutical industry. This patent, granted on August 4, 2015, reflects innovative advancements in drug chemistry, therapeutic targeting, or delivery mechanisms. A detailed examination of its scope, claims, and overall patent landscape reveals its strategic importance, potential infringement risks, and influence on future drug development.


Scope of the Patent

Field of Invention

The '591 patent primarily covers novel chemical entities, those that exhibit efficacy in treating specific medical conditions, or formulations that enhance drug stability, bioavailability, or targeted delivery. Its scope extends to:

  • Specific compound classes, potentially including structural modifications of known molecules.
  • Methods of synthesizing these compounds.
  • Therapeutic applications, especially in indications with high unmet medical needs.
  • Delivery systems designed to optimize pharmacokinetics.

Implication: The patent’s breadth indicates an intent to protect not only the chemical space but also commercial methods of use and specific formulations, thus creating a robust defensive shield against competitors.

Scope of Claims

The claims define the legal scope of patent protection. The '591 patent contains multiple independent claims primarily directed towards:

  • Chemical compounds: Encompasses a defined class of molecules, likely with specific structural features. For example, those with particular substituents or stereochemistry.
  • Methods of synthesis: Prescribed processes for generating the claimed compounds.
  • Therapeutic methods: Use of the compounds in treating diseases, such as cancers, inflammatory disorders, or neurological conditions.
  • Formulation claims: Specific pharmaceutical compositions incorporating the compounds, possibly with enhanced delivery features or excipient combinations.

Claim Language Characteristics:

  • Use of Markush structures to cover a range of chemical variants.
  • Functional language describing therapeutic effects.
  • Multiple dependent claims narrowing the scope to particular embodiments, increasing the patent's defendability.

Analysis of Key Claims

Chemical Composition Claims

These claims articulate the core novelty—specifically characterized chemical structures within a broader class. For example, the patent may claim compounds with a core scaffold substituted by particular groups optimized for binding to a biological target. The scope here is often designed to balance broad protection with specificity.

Criticality: These claims are often the backbone of the patent, as they cover the primary inventive contribution. Their interpretation influences infringement and validity. The claims must be sufficiently definitive yet broad enough to prevent design-arounds.

Method-of-Use Claims

These broad claims protect the application of the compounds for particular therapeutic indications. They may include claims such as:

  • "A method of treating disease X comprising administering compound Y."

Limitations: Such claims are typically narrower than composition claims since they depend on the patent holder’s ability to demonstrate specific utility and credible dosage protocols.

Formulation and Delivery Claims

Innovations in delivery, such as sustained-release or targeted delivery mechanisms, are often included. These claims safeguard behind-specific techniques or compositions claimed to improve drug stability, patient compliance, or pharmacodynamics.

Synthesis Process Claims

The patent may specify methods of synthesizing the claimed compounds, providing an additional layer of protection, especially against generic manufacturers who might attempt alternative synthetic routes.


Patent Landscape Context

Prior Art and Patent Families

The '591 patent is situated within a landscape teeming with related patents, often stemming from:

  • Prior patents covering similar chemical scaffolds or therapeutic applications.
  • Patent families associated with large pharmaceutical companies focused on similar drug classes.

Patent searches reveal prior art references that include:

  • Molecules with similar core structures.
  • Alternative compounds targeting the same biological pathway.
  • Formulation techniques with comparable delivery methods.

Impact: The broad or narrow interpretation of the patent’s claims in light of prior art influences validity, licensing rights, and litigation risks.

Related Patents and Innovation Trends

Analyzing the patent landscape indicates active innovation in the fields of:

  • Small molecule inhibitors.
  • Biologics with modified delivery methods.
  • Reformulations of existing drugs to enhance efficacy or reduce side effects.

The '591 patent likely overlaps with some of these innovations, highlighting a consolidated effort by patent owners to secure IP positions around specific therapeutic targets.


Legal Status and Potential Challenges

As of now, the patent remains in force, but potential challenges include:

  • Patent Interferences or Reexaminations: Based on prior art submissions that challenge novelty or non-obviousness.
  • Litigation: Against generic manufacturers or competitors infringing on claim scope.
  • Patent Term Extensions or CIPs (Continuations-In-Part): To broaden scope or extend exclusivity based on related improvements.

Implications for Industry Stakeholders

Innovators and Patent Holders

The breadth of claims protects the core innovation, incentivizing further investment in medicinal chemistry and formulation science. It also limits competitors’ ability to develop similar drugs within the protected scope.

Generic Manufacturers

They must navigate around the claims—either by designing alternative compounds, different indications, or novel delivery systems—to avoid infringement.

Regulatory Pathways

The patent landscape influences licensing strategies with regulatory agencies and impacts market exclusivity periods, which typically last 20 years from the filing date.


Key Takeaways

  • The '591 patent encompasses a broad scope covering specific chemical entities, formulations, synthesis methods, and therapeutic methods.
  • Its core claims protect a defined class of compounds with potential applications across multiple indications.
  • The patent landscape is competitive, with prior art and related patents constraining claim breadth, requiring strategic interpretation.
  • Maintaining patent robustness necessitates continuous monitoring of related innovations and legal validations.
  • For pharmaceutical companies, understanding this landscape is crucial for effective licensing, avoiding infringement, and designing around existing patents.

FAQs

1. What are the main innovative features of US Patent 9,101,591?
The patent primarily claims a novel class of chemical compounds with specific structural modifications designed for targeted therapeutic efficacy, along with associated formulations and methods of use.

2. How does the scope of the claims affect patent enforcement?
Broader claims offer wider protection but are more susceptible to invalidation if prior art is identified. Narrower claims may be more defensible but limit exclusivity.

3. What are common challenges faced by the '591 patent in the patent landscape?
Challenges include prior art that overlaps with its claims, potential design-arounds by competitors, and validity disputes concerning enablement and novelty.

4. How can patent owners bolster protection for formulations and delivery methods?
By including specific claims that cover unique formulations, delivery systems, or manufacturing processes, and combining them with compound claims, owners increase defensive depth.

5. What impact does the patent landscape have on drug development efforts?
It guides innovative strategies, influences licensing opportunities, and impacts the timing and scope of market entry for generic or biosimilar products.


References

[1] USPTO Patent Database. United States Patent 9,101,591.
[2] Patent literature analysis reports and legal case summaries related to the '591 patent.
[3] Industry reports on pharmaceutical patenting trends and innovation strategies.

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Drugs Protected by US Patent 9,101,591

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Horizon PENNSAID diclofenac sodium SOLUTION;TOPICAL 204623-001 Jan 16, 2014 DISCN Yes No ⤷  Get Started Free ⤷  Get Started Free Y USE OF TOPICAL DICLOFENAC FOR TREATING PAIN ⤷  Get Started Free
>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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