Details for Patent: 5,712,298

Summary for Patent: 5,712,298

Title:	Fluoroalkoxy-substituted benzamides and their use as cyclic nucleotide phosphodiesterase inhibitors
Abstract:	PCT No. PCT/EP94/02169 Sec. 371 Date Dec. 19, 1995 Sec. 102(e) Date Dec. 19, 1995 PCT Filed Jul. 2, 1994 PCT Pub. No. WO95/01338 PCT Pub. Date Jan. 12, 1995Compounds of formula (I), in which one of the substituents R1 or R2 stands for hydrogen, 1-6C-alkoxy, 3-7C-cycloalkoxy, 3-7C-cycloalkylmethoxy, benzyloxy or totally or partially fluorine-substituted 1-4C-alkoxy, and the other stands for totally or partially fluorine-substituted 1-4C-alkoxy, and R3 stands for phenyl, pyridyl, R31, R32 and R33-substituted phenyl or R34, R35, R36 and R37-substituted pyridyl, in which R31 stands for hydroxy, halogen, cyano, carboxyl, trifluoromethyl 1-4C-alkyl, 1-4C-alkoxy, 1-4C-alkoxycarbonyl, 1-4C-alkylcarbonyl, 1-4C-alkylcarbonyloxy, amino, mono- or di-1-4C-alkylamino or 1-4C-alkylcarbonylamino; R32 stands for hydrogen, hydroxy, halogen, amino, trifluoromethyl, 1-4C-alkyl or 1-4C-alkoxy; R33 stands for hydrogen, halogen, 1-4C-alkyl or 1-4C-alkoxy; R34 stands for hydroxy, halogen, cyano, carboxyl, 1-4C-alkyl, 1-4C-alkoxy, 1-4C-alkoxycarbonyl or amino; R35 stands for hydrogen, halogen, amino or 1-4C-alkyl; R36 stands for hydrogen or halogen; and R37 stands for hydrogen or halogen. These compounds constitute new effective bronchotherapeutic drugs.
Inventor(s):	Hermann Amschler
Assignee:	Nycomed Asset Management GmbH , Nycomed Germany Holding GmbH , AstraZeneca AB
Application Number:	US08/564,322
Patent Claim Types: see list of patent claims	Use; Composition;

United States Patent 5,712,298: Scope, Claims, Expiration, and Roflumilast Patent Landscape

U.S. Patent No. 5,712,298 covers a class of substituted benzamide phosphodiesterase-4, or PDE4, inhibitors. Its most commercially important embodiment is roflumilast, the active ingredient in Daliresp. Roflumilast falls within claims 1, 2, 3, 4, 5, and 7. Claim 7 is the narrow compound claim most directly aligned with roflumilast.

The patent issued on January 27, 1998, and the U.S. patent term expired in December 2015 based on the Orange Book listing. The patent therefore does not present a current U.S. composition-of-matter barrier to generic roflumilast. Its historical importance remains substantial because the patent covered the active molecule, pharmaceutical compositions, PDE4-inhibitor use, and airway-disorder and dermatosis formulations.

What drug does U.S. Patent 5,712,298 protect?

The principal drug protected by the claims is roflumilast.

Roflumilast structural element	Claim limitation
Difluoromethoxy substituent	R1 in claim 2
Cyclopropylmethoxy substituent	R2 in claim 2
3,5-Dichloropyrid-4-yl amide substituent	R3 in claim 7
Pharmacologic class	PDE4 inhibitor
Commercial product	Daliresp tablets
FDA dosage form	Oral tablets, 500 micrograms
Original U.S. sponsor	Takeda Pharmaceuticals

Roflumilast is chemically identified as 3-(cyclopropylmethoxy)-N-(3,5-dichloropyridin-4-yl)-4-(difluoromethoxy)benzamide. The molecule is a selective PDE4 inhibitor used for reducing the risk of chronic obstructive pulmonary disease exacerbations in patients with severe COPD associated with chronic bronchitis and a history of exacerbations.[2]

Claim 7 expressly narrows claim 2 to the 3,5-dichloropyrid-4-yl species. That limitation produces the roflumilast embodiment when R1 is difluoromethoxy and R2 is cyclopropylmethoxy.

How many claims are in U.S. Patent 5,712,298?

The patent contains eight claims. They divide into four legal categories:

Claim category	Claims	Subject matter
Compound claims	1, 2, 7, 8	Substituted benzamide molecules, salts, and pyridine N-oxides
Composition claim	3	Medicament containing a claimed compound and carrier
General treatment claim	4	Administration of a claimed compound as a PDE inhibitor
Formulation-method claims	5, 6	Compounding medicines for airway disorders or dermatoses

The claims list 17 alternative R3 aryl or heteroaryl groups. Claim 1 also permits multiple fluorinated C1-C4 alkoxy groups for R1 and 3- to 5-membered cycloalkylmethoxy or benzyloxy groups for R2.

The claim set is therefore broader than roflumilast, but it is not an unrestricted PDE4 patent. Every compound claim requires the specific substituted benzamide framework shown in Formula I and the defined R1, R2, and R3 substituent classes.

What is the scope of independent claim 1?

Claim 1 is the broadest compound claim. It requires:

1. A compound having the Formula I benzamide scaffold.
2. R1 as a C1-C4 alkoxy group completely or partially substituted by fluorine.
3. R2 as a C3-C5 cycloalkylmethoxy group or benzyloxy.
4. R3 as one of 17 specified aryl or heteroaryl groups.
5. The compound, a salt, or, for pyridine-containing embodiments, an N-oxide or salt of an N-oxide.

R1 scope

The R1 limitation covers fluorinated alkoxy substituents within the C1-C4 range. The wording potentially reaches:

• Fluoromethoxy;
• Difluoromethoxy;
• Trifluoromethoxy;
• Fluoroethoxy and related partially fluorinated ethoxy groups;
• Other partially fluorinated C1-C4 alkoxy variants supported by the patent disclosure.

The claim does not limit R1 to difluoromethoxy. That restriction appears in claim 2.

R2 scope

R2 covers:

• Cyclopropylmethoxy;
• Cyclobutylmethoxy;
• Cyclopentylmethoxy;
• Benzyloxy.

R2 is therefore a meaningful design-around axis. A compound retaining the roflumilast R1 and R3 groups but replacing cyclopropylmethoxy with a nonclaimed alkoxy or another linker could fall outside the literal scope of claims 1, 2, 7, and 8, subject to prosecution history and doctrine-of-equivalents analysis.

R3 scope

R3 is closed to the 17 expressly listed groups. The list includes substituted phenyl groups and substituted pyridyl groups. The claim does not generally cover every halogenated aryl or pyridyl substituent.

The R3 limitation is also central to the N-oxide language. Only pyridine-containing R3 groups can ordinarily generate the claimed pyridine N-oxide species.

What does claim 2 add to claim 1?

Claim 2 narrows claim 1 in two ways:

• R1 is fixed as difluoromethoxy.
• R2 is fixed as cyclopropylmethoxy.

R3 remains one of the 17 listed groups.

Claim 2 consequently covers roflumilast and 16 other R3 analogues, assuming the listed groups are counted as 17 distinct alternatives. It is materially narrower than claim 1 but still broad across the R3 substituent position.

What does claim 7 protect?

Claim 7 narrows claim 2 by limiting R3 to 3,5-dichloropyrid-4-yl.

The resulting compound is roflumilast:

Limitation	Claim 7 requirement	Roflumilast
R1	Difluoromethoxy	Matches
R2	Cyclopropylmethoxy	Matches
R3	3,5-Dichloropyrid-4-yl	Matches
Additional forms	Salt or pyridine N-oxide	Included

Claim 7 is the key narrow composition-of-matter claim for the commercial drug. It covers roflumilast itself, pharmaceutically acceptable salts, the corresponding pyridine N-oxide, and salts of the N-oxide.

What does claim 8 protect?

Claim 8 covers the cyclobutylmethoxy analogue with the same difluoromethoxy and 3,5-dichloropyrid-4-yl groups:

• R1: difluoromethoxy;
• R2: cyclobutylmethoxy;
• R3: 3,5-dichloropyrid-4-yl.

Claim 8 does not cover roflumilast because roflumilast has cyclopropylmethoxy, not cyclobutylmethoxy. Claim 8 is a separate analogue claim and does not materially expand the composition-of-matter protection for the commercial roflumilast molecule.

What pharmaceutical compositions are protected?

Claim 3 covers a medicament composition containing:

• An effective amount of a claim 1 compound; and
• A suitable carrier.

This is a conventional composition claim. It can cover oral tablets, capsules, powders, liquid preparations, and potentially other pharmaceutical presentations if the formulation contains a compound within claim 1.

The claim does not require a particular dose, excipient, release profile, tablet strength, or route of administration. Its scope is therefore broader at the formulation level than a claim limited to 500-microgram tablets, but it depends on the active ingredient falling within claim 1.

Does claim 3 cover Daliresp tablets?

Daliresp tablets contain roflumilast, which falls within claim 1. The tablets therefore fit the claimed composition category during the patent term, subject to the claim's construction and the formulation containing a suitable carrier.

The claim does not independently protect a formulation technology such as enteric coating, controlled release, particle size, solid-state form, or a particular excipient combination. It protects the presence of the claimed active compound in a medicament composition.

What method-of-use claims are included?

Claim 4: PDE inhibitor administration

Claim 4 covers administering an effective amount of a pharmacologically acceptable claim 1 compound to a subject in need of PDE inhibitor therapy.

This is a broad functional treatment claim. It is not limited to COPD, asthma, psoriasis, or another named disease. Its practical scope depends on:

• The administered compound meeting claim 1;
• The compound being pharmacologically acceptable;
• Administration to a subject needing PDE inhibitor therapy.

Claim 5: airway-disorder formulations

Claim 5 covers a method of compounding a medicament composition for treating an airway disorder where the active component is a claim 1 compound.

The claim is directed to compounding rather than a direct patient-treatment step. It requires:

• A suitable carrier;
• An effective amount of active component;
• An airway-disorder treatment purpose;
• A claim 1 compound as the active component.

The claim can reach formulations intended for COPD or other airway disorders, but it does not specify a particular airway disease, dosage form, strength, or delivery device.

Claim 6: dermatosis formulations

Claim 6 applies the same structure to compositions for treating a dermatosis. It covers compounding a medicament with a claim 1 compound for dermatologic use.

The claim is relevant to the patent's broader PDE4 portfolio but is not the principal historical basis for Daliresp's oral COPD indication. Later topical roflumilast products, including products developed for plaque psoriasis and seborrheic dermatitis, may implicate separate formulation, method-of-use, and topical-product patents depending on the specific product and jurisdiction.

When did U.S. Patent 5,712,298 expire?

The U.S. patent expired in December 2015. The FDA Orange Book identified U.S. Patent 5,712,298 for Daliresp with an expiration date of December 19, 2015.[3]

Event	Date
U.S. patent issuance	January 27, 1998
FDA approval of Daliresp	February 28, 2011
Listed patent expiration	December 19, 2015
U.S. composition-of-matter protection	Expired
Current Paragraph IV blocking value	None from this patent alone

The patent's term was governed by the post-1995 U.S. patent term regime, generally 20 years from the relevant earliest nonprovisional or international filing date, subject to patent-term adjustment and other statutory rules.[1]

FDA approval occurred approximately four years before patent expiration. The commercial product therefore had a relatively short period of post-approval patent life compared with products whose patents issue earlier in development or receive patent-term extension.

What was the Orange Book status of roflumilast?

Daliresp was approved by the FDA as an oral roflumilast tablet. The Orange Book listed U.S. Patent 5,712,298 against the product during the patent term.[2,3]

The patent was a drug-substance patent rather than a narrow tablet-formulation patent. That distinction matters:

• A generic applicant challenging the active ingredient would confront composition claims 1, 2, and 7.
• A generic applicant using the same roflumilast molecule in a tablet would also face the composition theory under claim 3 during the patent term.
• A product using a different compound would not necessarily infringe merely because it is a PDE4 inhibitor.
• After expiration, the patent no longer blocked FDA approval or commercial launch.

The Orange Book listing does not establish that every listed claim is valid or infringed. It identifies patents submitted by the NDA holder and accepted for listing under FDA procedures.

Were Paragraph IV challenges possible?

Yes. A generic applicant filing an ANDA before December 19, 2015 could have submitted a Paragraph IV certification against the listed patent. The principal legal targets would have been:

• Anticipation or obviousness of roflumilast and the claimed analogues;
• Written description and enablement across the Markush genus;
• Claim construction of the Formula I scaffold;
• Salt and N-oxide coverage;
• Infringement of composition claim 3 by a roflumilast tablet;
• Infringement of method claims based on the proposed labeling.

A Paragraph IV notice could have triggered a 30-month stay under the Hatch-Waxman Act if the NDA holder filed suit within the statutory period. That mechanism has no remaining blocking effect for this patent because the patent has expired.

No current generic launch can be enjoined on the basis of U.S. Patent 5,712,298 alone. A present-day launch analysis would instead depend on later, unexpired patents, regulatory exclusivity, product-specific formulation patents, or litigation unrelated to this expired patent.

Which later patents could matter for roflumilast products?

The original patent should be separated from later patent categories.

Patent category	Relevance to current risk
Original roflumilast compound patent	Expired
Oral tablet formulation patents	Relevant only if unexpired and listed or enforceable
Crystalline-form or solid-state patents	Potentially relevant to API or dosage-form manufacture
Topical formulation patents	Relevant to creams, foams, gels, or lotions
Dermatology method-of-use patents	Relevant to psoriasis, seborrheic dermatitis, or related indications
Manufacturing-process patents	May affect API production but generally do not block every generic formulation
Regulatory exclusivity	Separate from patent rights and usually time-limited

The commercial landscape expanded beyond Daliresp after topical roflumilast products entered development. Zoryve, developed by Arcutis Biotherapeutics, uses roflumilast in topical formulations and received FDA approvals for dermatologic indications.[4] Those products raise a different freedom-to-operate question from oral Daliresp because topical formulations may be protected by later patents directed to vehicle systems, concentration, delivery, tolerability, stability, or specific dermatologic uses.

A generic oral roflumilast developer would not automatically avoid a later formulation patent by showing that the original compound patent expired. Conversely, a topical product would not necessarily infringe the original patent today because the original patent is expired.

Is there biosimilar risk for roflumilast?

No. Roflumilast is a chemically synthesized small molecule, not a biologic. FDA approval of a competing product would proceed through the generic-drug framework, normally an ANDA under section 505(j) of the Federal Food, Drug, and Cosmetic Act, rather than through the biosimilar pathway under section 351(k) of the Public Health Service Act.

The relevant competitive risks are:

• ANDA filings;
• Paragraph IV certifications before patent expiry;
• Post-expiry generic launches;
• Formulation differentiation;
• Topical-product competition;
• Manufacturing-cost advantages.

The Purple Book biosimilar framework does not control the principal competition analysis for Daliresp or roflumilast tablets.[5]

How strong was the patent estate?

The original patent estate was strong against direct copies of roflumilast during its term because claim 7 is a narrowly defined compound claim covering the marketed molecule. Composition-of-matter claims generally provide stronger protection than formulation or method claims because they can reach the compound regardless of the dosage form or indication.

Its main strengths were:

• Direct coverage of roflumilast;
• Coverage of salts and pyridine N-oxide forms;
• A broader genus claim in claim 1;
• A species-level claim in claim 7;
• Composition and method claims that provided additional infringement theories.

Its main limitations were:

• A finite 2015 expiration date;
• A claim set tied to the specific Formula I scaffold;
• No continuing protection after expiry;
• No evident protection from this patent for every later topical formulation;
• No general monopoly over PDE4 inhibition;
• No automatic coverage of compounds outside the listed R1, R2, and R3 definitions.

The patent was therefore commercially powerful during the launch and early commercialization period but has no remaining blocking strength as an active U.S. patent.

What geographic coverage did the patent provide?

U.S. Patent 5,712,298 provided rights only in the United States. Corresponding foreign patent rights would have depended on separate national filings, prosecution outcomes, maintenance payments, and expiration dates.

The U.S. patent did not create worldwide protection. A global freedom-to-operate review would require review of:

• European patent family members;
• Canada;
• Japan;
• China;
• Australia;
• Brazil;
• India;
• Countries where roflumilast products were marketed or manufactured.

The expiration of the U.S. patent does not establish that all foreign counterparts expired on the same date. Nor does it eliminate process patents or later product patents in other jurisdictions.

What manufacturing barriers remain after patent expiration?

The original compound claims no longer block U.S. API manufacture. Manufacturing risk can still arise from:

• Later process patents;
• Undisclosed or proprietary crystallization methods;
• Impurity-control methods;
• Particle engineering;
• Stability processes;
• Supplier-specific know-how;
• Regulatory requirements for API equivalence and finished-product quality.

These are commercial and operational barriers rather than a continuation of the expired composition-of-matter monopoly. A generic manufacturer can lawfully produce roflumilast after patent expiry, but it must still establish pharmaceutical equivalence, bioequivalence, quality, and current Good Manufacturing Practice compliance.

What generic launch scenarios exist?

Scenario 1: Oral roflumilast after original-patent expiry

This is the lowest patent-risk scenario from U.S. Patent 5,712,298. A compliant ANDA product using roflumilast as the active ingredient is not blocked by this expired patent.

Scenario 2: Generic product with a different indication

The original patent's method claims could have been relevant before expiry, but they do not create a current barrier. Later indication patents could still affect labeling strategy if they remain enforceable.

Scenario 3: Topical roflumilast

A topical product must be assessed separately. The expired patent does not resolve later patent questions involving topical vehicles, concentrations, dosage forms, dermatologic indications, or Arcutis-related product claims.

Scenario 4: Alternative PDE4 inhibitor

A different PDE4 inhibitor is outside the patent unless it also meets the Formula I limitations. The patent does not cover the PDE4 class as a whole.

Key Takeaways

• U.S. Patent 5,712,298 is the foundational U.S. roflumilast compound patent.
• Roflumilast is covered most directly by claim 7.
• Claim 1 is a broader Markush compound claim with 17 listed R3 substituents.
• Claim 3 covers medicament compositions containing a claim 1 compound.
• Claims 4 through 6 cover PDE4 administration and compounding for airway disorders and dermatoses.
• Claim 8 covers a cyclobutyl analogue, not roflumilast.
• The Orange Book-listed patent expired on December 19, 2015.
• The patent creates no current U.S. blocking right against generic roflumilast.
• Roflumilast is a small molecule, so biosimilar rules do not apply.
• Current risk must be assessed against later oral formulation, topical formulation, method-of-use, process, and regulatory rights.
• Daliresp and topical roflumilast products require separate patent-landscape analyses because their dosage forms and indications differ.

FAQs About U.S. Patent 5,712,298

Does U.S. Patent 5,712,298 cover roflumilast?

Yes. Roflumilast matches the limitations of claim 7 and also falls within broader claims 1 and 2.

Can a company launch generic roflumilast based only on expiration of U.S. Patent 5,712,298?

The expired patent itself does not prevent launch. The applicant must still address any later unexpired patents, FDA requirements, regulatory exclusivity, and litigation.

Does the patent cover roflumilast cream or foam?

The patent covers compositions containing a claim 1 compound in broad terms, but it does not necessarily resolve later patents directed specifically to topical vehicles, concentrations, foam systems, or dermatologic indications.

Is a roflumilast salt still covered by claim 7?

During the patent term, claim 7 expressly covered a salt of the claimed compound. That protection ended when the patent expired.

Does the patent cover every PDE4 inhibitor?

No. It covers compounds meeting the Formula I structure and the specified R1, R2, and R3 limitations. It does not claim the entire PDE4 inhibitor class.

References

1. United States Patent and Trademark Office. (2024). Patent term adjustment and patent term calculation guidance. https://www.uspto.gov
2. U.S. Food and Drug Administration. (2011). Daliresp (roflumilast) prescribing information.
3. U.S. Food and Drug Administration. (n.d.). Approved drug products with therapeutic equivalence evaluations: Orange Book. https://www.accessdata.fda.gov/scripts/cder/ob/
4. U.S. Food and Drug Administration. (2022-2024). Zoryve (roflumilast) prescribing information and approval materials.
5. U.S. Food and Drug Administration. (n.d.). Purple Book: Database of licensed biological products. https://purplebooksearch.fda.gov
6. United States Patent and Trademark Office. (1998). U.S. Patent No. 5,712,298: Substituted benzamides.

Drugs Protected by US Patent 5,712,298

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: 5,712,298

Foriegn Application Priority Data
Foreign Country	Foreign Patent Number	Foreign Patent Date
Switzerland	01 996/99	Jul 02, 1993

PCT Information
PCT Filed	July 02, 1994	PCT Application Number:	PCT/EP94/02169
PCT Publication Date:	January 12, 1995	PCT Publication Number:	WO95/01338

International Family Members for US Patent 5,712,298

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
European Patent Office	0706513		91709	Luxembourg
European Patent Office	0706513		C300462	Netherlands
European Patent Office	0706513		CA 2010 00028	Denmark