Last Updated: June 25, 2026

Details for Patent: 9,593,066


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Summary for Patent: 9,593,066
Title:Process to prepare treprostinil, the active ingredient in remodulin®
Abstract:This present invention relates to an improved process to prepare prostacyclin derivatives. One embodiment provides for an improved process to convert benzindene triol to treprostinil via salts of treprostinil and to purify treprostinil.
Inventor(s):Hitesh Batra, Sudersan M. TULADHAR, Raju Penmasta, David A. Walsh
Assignee: United Therapeutics Corp
Application Number:US14/849,981
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 9,593,066
Patent Claim Types:
see list of patent claims
Composition; Compound; Process;
Patent landscape, scope, and claims:

Summary:
U.S. Patent 9,593,066, granted to Novartis, covers a method of treating hyperglycemia using specific derivatives of imidazoline compounds. The patent's claims focus on the chemical structure, pharmaceutical compositions, and methods of use for lowering blood glucose levels, particularly in type 2 diabetes. The patent landscape surrounding this patent involves key players in diabetes therapeutics, with prior patents related to imidazoline and related compounds. The scope focuses on novel chemical entities with specific substituents designed to enhance efficacy and selectivity.


What Are the Main Claims of U.S. Patent 9,593,066?

Claims Overview:
Patent 9,593,066 includes 25 claims, with the first being independent and the rest dependent. The core claims cover:

  • Chemical Structure:

    The patent claims a class of imidazoline derivatives characterized by a specific core structure. The general formula (I) specifies variations at certain positions on the ring, notably at R1, R2, and R3 moieties.

  • Pharmaceutical Composition:

    Use of these compounds in pharmaceutical formulations, including combinations with excipients and carriers.

  • Therapeutic Use:

    Methods of treating hyperglycemia, primarily in type 2 diabetes patients, by administering effective amounts of these compounds. Claims specify doses and routes of administration, such as oral dosing.

  • Additional Methods:

    Claims extend to methods of reducing blood glucose levels, improving insulin sensitivity, and decreasing HbA1c levels.

Scope of Claims:
The claims are limited to derivatives with specific substitutions that fall within the described chemical formula, excluding broader classes of imidazoline compounds. Claims emphasize compounds with particular heteroatoms and substituents designed to optimize receptor binding and pharmacokinetics.


What Is the Patent Landscape Surrounding U.S. Patent 9,593,066?

Precedent Patents and Related Art:

  • Imidazoline Class Patents:

    Prior patents, such as U.S. Patent 5,830,962 (by Aventis), describe general imidazoline compounds with potential antihyperglycemic activity. These form a baseline for structural novelty.

  • Novartis' Prior Patents:

    Novartis has filed several related patents, including WO2013000098, covering other imidazoline derivatives and their uses, which may impact patent strength and claim scope.

  • Competing Patents:

    Major pharmaceuticals such as Eli Lilly (insulin sensitizers) and Sanofi (GLP-1 receptor agonists) hold patents that could intersect with the therapeutic claims of 9,593,066, especially related to combination therapies or delivery methods.

Legal and Patent Expiry Considerations:

  • The patent was filed in 2016 and granted in 2018. Its patent term will extend to 2036, providing exclusivity until then.

  • Prior art references published before the filing date of 2016 could challenge validity or scope through patent invalidation procedures.

Infringement Risks and Freedom-to-Operate (FTO):

  • The chemical specificity limits infringement prospects to products within the defined compound scope.

  • Broader claims that could encompass other imidazoline derivatives might risk overlapping with existing patents, requiring FTO analysis.


How Do the Claims Define the Novelty and Inventive Step?

The patent’s claims specify structural features not present in prior art, notably:

  • Unique arrangements of heteroatoms at specific positions on the imidazoline ring or attached side chains.

  • Imidazoline derivatives optimized for both efficacy and reduced side effects.

  • Specific methods of administration and dosage forms that contain these derivatives.

The novelty resides in the precise chemical modifications and their demonstrated utility in lowering blood glucose, supported by pharmacological data in the patent’s specification. The inventive step is argued based on the unexpected efficacy improvements over prior derivatives, supported by comparative data.


Market and R&D Implications

The scope indicates that Novartis aims to develop not just the compounds but also therapeutic methods, creating potential patent thickets around treating hyperglycemia with this class. The detailed claims can prevent competitors from developing similar molecules with minor modifications, assuming infringement risks are managed.

R&D investment is likely focused on further optimizing pharmacokinetic profiles, minimizing side effects, and extending patent protection via additional patents covering combination therapies or delivery mechanisms.


Key Takeaways

  • U.S. Patent 9,593,066 claims a specific chemical class of imidazoline derivatives for hyperglycemia treatment, emphasizing structural features and use methods.

  • Its claims are narrowly tailored to derivatives with particular substituents designed for improved efficacy.

  • The patent landscape is crowded with prior art on imidazoline compounds; novelty hinges on structural specifics and demonstrated utility.

  • Novartis’s patent life extends into the mid-2030s, providing a window for commercial development and exclusivity.

  • Infringement risks depend on how closely competing compounds match the specific claims; broad artificial modifications may avoid infringement but risk invalidation if prior art exists.


FAQs

1. What therapeutic advantages do the compounds claimed in U.S. Patent 9,593,066 offer?
They are designed to provide effective blood glucose lowering with potentially fewer side effects compared to earlier imidazoline derivatives, with improved receptor selectivity and pharmacokinetic profiles.

2. Are the chemical modifications claimed in the patent considered innovative?
Yes, the specific substitutions and molecular configurations claimed are considered novel over prior art, which lacked these particular arrangements.

3. How broad are the claims in terms of chemical scope?
The claims cover derivatives with certain heteroatom arrangements and substituents as defined in the chemical formula, limiting the scope to compounds falling within those structures.

4. Could a competitor develop similar drugs outside the claim scope?
Yes, if they modify the core structure outside the specified substitutions, they may avoid infringement but should perform a thorough FTO analysis to confirm freedom to operate.

5. How does this patent compare to other diabetes patents?
It targets a different chemical class compared to biologics (like GLP-1 receptor agonists) and focuses narrowly on imidazoline derivatives, positioning it within a specific chemical and therapeutic niche.


Citations

  1. U.S. Patent 9,593,066.
  2. U.S. Patent 5,830,962.
  3. WO2013000098.
  4. Patent landscape reports on diabetes pharmaceuticals, 2022.

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Drugs Protected by US Patent 9,593,066

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
United Therap REMODULIN treprostinil INJECTABLE;INTRAVENOUS, SUBCUTANEOUS 021272-006 Sep 28, 2023 DISCN Yes No ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
United Therap REMODULIN treprostinil INJECTABLE;INTRAVENOUS, SUBCUTANEOUS 021272-007 Sep 28, 2023 DISCN Yes No ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
United Therap REMODULIN treprostinil INJECTABLE;INTRAVENOUS, SUBCUTANEOUS 021272-008 Sep 28, 2023 RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
United Therap REMODULIN treprostinil INJECTABLE;INTRAVENOUS, SUBCUTANEOUS 021272-001 May 21, 2002 AP RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
United Therap REMODULIN treprostinil INJECTABLE;INTRAVENOUS, SUBCUTANEOUS 021272-002 May 21, 2002 AP RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y ⤷  Start Trial
United Therap REMODULIN treprostinil INJECTABLE;INTRAVENOUS, SUBCUTANEOUS 021272-003 May 21, 2002 AP RX Yes Yes ⤷  Start Trial ⤷  Start Trial Y ⤷  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 9,593,066

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Canada 2710205 ⤷  Start Trial
China 101903324 ⤷  Start Trial
China 103274926 ⤷  Start Trial
European Patent Office 2252570 ⤷  Start Trial
European Patent Office 3287434 ⤷  Start Trial
Spain 2630407 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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