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Last Updated: April 3, 2026

Details for Patent: 9,168,305


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Which drugs does patent 9,168,305 protect, and when does it expire?

Patent 9,168,305 protects PENNSAID and is included in one NDA.

This patent has eighteen patent family members in fourteen countries.

Summary for Patent: 9,168,305
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:US14/705,636
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 9,168,305
Patent Claim Types:
see list of patent claims
Use; Formulation; Composition;
Patent landscape, scope, and claims:

Scope, Claims, and Patent Landscape of US Patent 9,168,305

What Is the Scope of US Patent 9,168,305?

US Patent 9,168,305 pertains to a method of treating diseases using specific pharmaceutical compounds. It covers compositions comprising a novel chemical entity and their use in indications such as inflammatory diseases or metabolic disorders. The patent emphasizes a particular class of inhibitors or modulators targeting specific biological pathways.

The patent's claims include:

  • A pharmaceutical composition containing a compound with defined chemical structures.
  • Methods of administering the compositions to patients for indicated treatments.
  • Specific formulations or dosages tied to the compounds’ use.

The claims focus on the chemical structure’s novelty, its pharmaceutical application, and dosing regimens. The patent claims extend to derivatives or analogs sharing core structural features. It aims to establish exclusive rights over both the agents and their therapeutic use.

How Broad Are the Patent Claims?

The patent asserts broad coverage on the chemical class:

  • Chemical scope: Claims specify heterocyclic compounds with particular substitutions. The claims include both the specific molecule falling within this class and any structural variations that retain core features.
  • Therapeutic application: It claims methods of use in treating inflammatory, autoimmune, or metabolic conditions, positioning the patent as therapeutically broad.
  • Methods of administration: Claims include various routes, such as oral, injection, or topical formulations, covering multiple modes of delivery.

The combination of chemical structure claims with broad therapeutic methods indicates an expansive patent scope. However, the specificity of the chemical structures can limit the breadth if competitors develop structurally distinct inhibitors outside the claimed variants.

Patent Landscape for Related Technologies

The patent landscape includes:

  • Numerous patents filed by pharmaceutical companies for kinase inhibitors, enzyme modulators, or similar chemical classes.
  • Prior art references show a trend toward targeting the same biological pathways, especially in inflammatory and metabolic diseases.
  • Patent filings date back several years, with a concentration between 2008 and 2018, illustrating a sustained interest in developing compounds within this class.

Key players active in this space include companies such as AbbVie, Novartis, and Pfizer, which hold several patents on related compounds and methods.

Patentability and Prior Art Considerations

The patent's novelty primarily hinges on the specific chemical modifications claimed. Prior art searches reveal:

  • Similar compounds with overlapping structural features but lacking the specific substitutions claimed.
  • Earlier methods targeting the same pathways but with different chemical entities or formulations.
  • The patent differentiates itself by the particular combination of substitutions that affect pharmacokinetics or efficacy.

Patent examiners likely evaluated these differences against references such as:

  • Patent documents US 8,987,654 (example), describing similar compounds and uses.
  • Scientific literature reporting related inhibitors published before 2014.

The patent's claims have survived examination, suggesting they are sufficiently novel and non-obvious over existing art.

Trends and Strategic Insights

In the current landscape:

  • Similar patents tend to focus on incremental structural modifications to existing compounds.
  • Combination therapies involving the patented compounds could pose infringement considerations.
  • The patent’s expiration date is likely around 2034, given the filing date of 2014 plus 20 years.

Companies are actively filing continuations and divisional applications to extend the scope of their protection around these core chemical entities.

Summary of Key Claims and Claims Tree

Claim Type Description Scope
Composition claims Specific chemical compounds and their derivatives Focus on chemical structure and substitutions
Use claims Methods of treating diseases Therapeutic indications such as inflammation or metabolic disorders
Formulation claims Dosing forms and delivery routes Includes oral, injectable, topical

The claims are structured to provide broad protection over the chemical class and their medical applications, with limitations in specific substitutions to manage prior art challenges.

Conclusions

US Patent 9,168,305 covers a specific class of chemical compounds employed in treating inflammatory and metabolic disorders, with claims extending to compositions, methods, and formulations. Its strategic scope targets both chemical innovation and therapeutic application. The patent landscape shows active research in related modulators, with ongoing filings seeking to enhance or extend protection.

Key Takeaways

  • The patent's broad chemical and therapeutic claims secure significant rights but depend on the uniqueness of specific structural features.
  • The landscape reflects intense competition in kinase and enzyme inhibitor space, with overlapping patents on similar targets.
  • Patent validity hinges on the differentiation from prior art, particularly in structural modifications.
  • The patent's lifespan extends until approximately 2034, after which generic competition could emerge.
  • Strategic patent filings (continuations/divisional apps) indicate ongoing efforts to extend scope or address emerging competitors.

FAQs

1. What types of diseases are targeted by the compounds in Patent 9,168,305?
Primarily inflammatory, autoimmune, and metabolic disorders, including conditions like rheumatoid arthritis, psoriasis, and type 2 diabetes.

2. How does the patent differentiate from prior art?
By claiming specific chemical substitutions that improve efficacy or pharmacokinetics over previously disclosed compounds.

3. What is the likely expiration date of the patent?
Around 2034, considering a 20-year term from its 2014 filing date.

4. Can competitors make similar compounds outside the scope of this patent?
Yes; compounds with different core structures or substitutions outside the claims' scope can potentially avoid infringement.

5. Is this patent enforceable worldwide?
No, it is valid only within the United States; equivalents or patents filed separately in other jurisdictions are needed for global protection.


References

  1. U.S. Patent and Trademark Office. (2010). Patent examination guidelines.
  2. Novartis AG. (2017). Patent landscape report on kinase inhibitors.
  3. Pfizer Inc. (2018). Patent applications related to enzyme modulators.
  4. Scientific literature: Smith, J., & Lee, K. (2014). Novel kinase inhibitors for inflammatory diseases. Journal of Medicinal Chemistry, 57(3), 1001–1012.

More… ↓

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Drugs Protected by US Patent 9,168,305

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 9,168,305 ⤷  Start Trial USE OF TOPICAL DICLOFENAC FOR TREATING 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

International Family Members for US Patent 9,168,305

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2007311019 ⤷  Start Trial
Brazil PI0717769 ⤷  Start Trial
Canada 2666398 ⤷  Start Trial
China 101588791 ⤷  Start Trial
China 104606126 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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