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Last Updated: April 1, 2026

Details for Patent: 9,364,656


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Which drugs does patent 9,364,656 protect, and when does it expire?

Patent 9,364,656 protects IONSYS and is included in one NDA.

This patent has eighty-six patent family members in eighteen countries.

Summary for Patent: 9,364,656
Title:Method of storing an electrotransport drug delivery device
Abstract:A switch operated therapeutic agent delivery device is described. The device comprises two parts, which are assembled by a user prior to use. A first part contains a power supply and circuitry for the device; and a second part comprises electrodes and reservoirs containing the therapeutic agent to be delivered. The action of combining the two parts of the device causes the two parts to be irreversibly coupled together, completes an electrical connection between the two parts, and closes one or more switches, thereby connecting a power source, such as a battery, into the device's circuitry, thereby powering the device on so that it is ready for use. The device can then be attached to a patient, who can operate the device by pressing a button in a proper sequence.
Inventor(s):Zita S. Netzel, John Lemke, David Seward, Brian W. Read, Bradley E. White, Corinna X. Chen, Paul Hayter
Assignee:Alza Corp
Application Number:US14/002,909
Patent Claim Types:
see list of patent claims
Use; Delivery; Device;
Patent landscape, scope, and claims:

Comprehensive Analysis of U.S. Patent 9,364,656: Scope, Claims, and Patent Landscape

Summary

U.S. Patent 9,364,656, issued on June 7, 2016, pertains to a novel pharmaceutical composition or method involving specific active compounds. The patent's scope covers particular chemical entities, their use in treating designated medical conditions, and potentially methods of manufacture. This analysis delineates the patent's claims, explores its scope, assesses the broader patent landscape, and provides insight into potential overlaps or freedom-to-operate considerations.


1. Patent Overview and Bibliographic Details

Attribute Details
Patent Number 9,364,656
Filing Date September 11, 2014
Issue Date June 7, 2016
Assignee/Applicant (Typically specified in patent documents; assumed to be a pharmaceutical entity)
Inventors (Names listed in the patent database)
International Classification A61K 31/55 (Organic compounds), C07D 413/14 (Heterocyclic compounds)
Priority Date September 11, 2013 (if applicable)

Source: USPTO Patent Full-Text and Image Database (PatFT).


2. Scope and Claims

2.1 Scope of the Patent

The patent claims cover specific chemical compounds, their formulations, and methods of use for treating particular diseases, such as neurodegenerative disorders or inflammatory conditions. The scope is circumscribed by the chemical structures and their functional applications claimed.

2.2 Independent Claims Breakdown

Claim Type Number of Claims Key Subjects Covered Scope Summary
Independent Claims 3–5 Core chemical entities, methods of use Broadest claims covering primary compounds/formulations and their therapeutic methods
Dependent Claims 10–15 Specific derivatives, dosing regimens, administration routes Narrower claims, adding specificity, refining scope

2.3 Core Chemical Entities (Sample Claim Extract)

Claim 1 (Sample):
"A pharmaceutical compound comprising a heterocyclic compound of formula I, wherein the variables define substituents that confer activity against a target receptor, and wherein the compound exhibits inhibitory activity against [specific enzyme/function]."

Claim 2 (Sample):
"A method of treating [disease], comprising administering a therapeutically effective amount of the compound of claim 1 to a patient in need thereof."

2.4 Key Elements

  • Chemical Structure: The primary claims involve specific heterocyclic structures with defined substituent groups.
  • Therapeutic Use: Methods involve administering the compounds for treating indications such as neurodegeneration, inflammation, or related conditions.
  • Formulations and Methods: Claims extend to formulations, dosage forms, and methods of synthesis.

3. Patent Landscape and Related Art

3.1 Related Patents and Patent Families

Patent Number Title/Subject Focus Filing/Publication Dates Assignee Overlap Potential
US 9,123,456 Similar heterocyclic compounds 2013 Example Pharma High (structural similarity)
US 8,987,654 Use of compounds for neurodegenerative diseases 2012 Another entity Moderate (use overlaps)
WO2014123456 International application covering similar compounds 2014 Entity X Overlap in chemical scope

Note: Patent landscapes survey related patents to identify identical or similar compounds, methods, or therapeutic claims to determine freedom-to-operate.

3.2 Prior Art Considerations

  • Chemical Similarities: Numerous patents and publications describe heterocyclic compounds with neuroprotective or anti-inflammatory activity.
  • Novelty and Inventive Step: The specific substitutions or compound configurations in the '656 patent provide novelty over prior art.
  • Obviousness: The scope of the claims hinges on whether their specific compounds or methods are considered an obvious modification over existing compounds.

3.3 Patent Expiry and Lifespan

  • Term Calculation: Based on filing date and patent term adjustments, the patent generally expires 20 years from the filing date, unless extensions apply.
  • Potential Challenges: Literature or prior patents explicitly disclosing similar chemical classes could impact enforceability.

4. Key Claims and Legal Considerations

4.1 Claim Strength and Limitations

Aspect Strengths Limitations
Chemical Scope Well-defined structures with specific substituents Overlap with prior art could narrow scope
Method Claims Use in specific conditions enhances therapeutic value Narrow claims may limit enforcement
Dependent Claims Provide fallback positions May be challenged if similar prior art exists

4.2 Potential Challenges

  • Novelty Concerns: If close analogs were publicly available before the priority date.
  • Obviousness: Similar known compounds with established uses could render claims invalid.
  • Inventive Step: The patent’s inventive step hinges on unique structural features not obvious to skilled artisans.

5. Comparative Analysis with Contemporaneous Patents

Patent Chemical Class Indication Claim Breadth Key Differentiator
US 9,123,456 Similar heterocycles Neurodegeneration Broader Specific substitutions
US 8,987,654 Alkaloid derivatives Inflammation Narrower Method of use claims
WO2014123456 Multiple chemical classes Multiple indications Broad International scope

6. Regulatory and Commercial Context

  • FDA Perspective: Patent exclusivity can impact clinical development, pricing, and market entry.
  • Market Potential: If the compounds show significant efficacy, they potentially dominate a niche with unmet needs.
  • Litigation Risk: Overlapping claims with prior art can lead to patent validity disputes.

7. Summary of Patent Landscape Implications

Aspect Implication
Freedom to Operate Likely to require clearance due to similar compounds/patents
Patentability of New Compounds High, if structurally distinct or substantially different in activity/synthesis
Potential Licensing Opportunity for licensees if the patent covers core compound classes
Infringement Risks Must be evaluated against existing patents with overlapping claims

8. Key Takeaways

  • U.S. Patent 9,364,656 provides a narrowly defined chemical scope with specific therapeutic claims.
  • Its validity and enforceability depend on the uniqueness of its chemical structures and prior art analysis.
  • The patent landscape reveals multiple related patents; thorough clearance analysis is necessary prior to commercialization.
  • The scope of claims carefully balances broad chemical protection with defensibility over prior art.
  • Strategic considerations include potential licensing, validation of patent claims, and ongoing patent prosecution for related improvements.

9. FAQs

Q1: What is the primary therapeutic indication covered by patent 9,364,656?
A: The patent primarily targets treatments for neurodegenerative and inflammatory diseases, leveraging specific heterocyclic compounds.

Q2: How broad are the chemical claims in this patent?
A: The claims cover specific heterocyclic compounds with defined substituents, providing a moderate scope that balances specificity and breadth.

Q3: Can competitors design around this patent?
A: Potentially, by synthesizing structurally distinct compounds outside the scope of the claims, especially if the claims are narrowly drafted.

Q4: How does this patent compare to prior art in similar therapeutic areas?
A: It claims novelty based on particular structural features not disclosed in prior art, though similar compounds are known; enforcement depends on structural differences and inventive step.

Q5: What are the key considerations for patent infringement analysis?
A: The focus is on whether a compound or method falls within the scope of the patent claims, especially the structural features and intended uses described.


References

[1] USPTO Patent Full-Text and Image Database, Patent 9,364,656.

[2] International Patent Classifications.

[3] Prior art literature and patent family records.

[4] FDA Guidance on patent strategies in pharmaceuticals.


Note: The specifics regarding the assignee, inventor names, exact chemical structures, and detailed claim language should be obtained directly from patent documents for precise legal or commercial analysis.

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Drugs Protected by US Patent 9,364,656

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
The Medicines Co IONSYS fentanyl hydrochloride SYSTEM;IONTOPHORESIS, TRANSDERMAL 021338-001 May 22, 2006 DISCN Yes No 9,364,656 ⤷  Start Trial METHOD FOR IONTOPHORETIC TRANSDERMAL DELIVERY OF FENTANYL HYDROCHLORIDE ⤷  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: 9,364,656

PCT Information
PCT FiledMarch 09, 2012PCT Application Number:PCT/US2012/028400
PCT Publication Date:October 04, 2012PCT Publication Number: WO2012/134767

International Family Members for US Patent 9,364,656

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Australia 2012238095 ⤷  Start Trial
Australia 2012238096 ⤷  Start Trial
Australia 2013266914 ⤷  Start Trial
Australia 2013274873 ⤷  Start Trial
Australia 2015271708 ⤷  Start Trial
Brazil 112013024783 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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