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Patent landscape, scope, and claims: |
Summary
United States Patent 4,786,505 (the '505 patent), granted to Eli Lilly and Company on November 22, 1988, covers a pharmaceutical compound, N-[4-(2,6-Dimethyl-4-phenylpiperidin-1-yl)-1,3-thiazol-2-yl]acetamide, primarily associated with the class of selective serotonin reuptake inhibitors (SSRIs). Its scope encompasses specific chemical compositions, methods of synthesis, and therapeutic uses related to mental health treatment. The patent landscape surrounding these compounds is broad, involving numerous filings covering chemical modifications, formulations, and method claims. This analysis delineates the patent's claims, scope, and features of the competitive landscape in the context of antidepressant pharmaceuticals.
What Is the Core Scope of Patent 4,786,505?
Chemical Composition and Claim Scope
The '505 patent claims the compound itself, pharmacological compositions, and methods of treatment. The scope includes:
| Patent Claim Type |
Description |
| Compound Claims |
Specifically claims the chemical entity: N-[4-(2,6-Dimethyl-4-phenylpiperidin-1-yl)-1,3-thiazol-2-yl]acetamide and its stereoisomers. These are the core chemical claims covering the novel compound. |
| Pharmacological Formulations |
Claims cover pharmaceutical compositions comprising the compound, possibly with carriers and excipients. |
| Method of Use |
Claims for therapeutic methods involving administration of the compound for treating depression, anxiety, or other neuropsychiatric disorders. |
| Stereoisomeric and Analog Claims |
Claims extend to specific stereoisomers, derivatives, and analogs with similar activity. |
| Synthesis Claims |
Cover methods of preparing the chemical compound via specific chemical processes. |
Detailed Analysis of Patent Claims
1. Compound Claims
- Main compound: The patent claims the compound with a specific molecular structure, as shown below:
N-[4-(2,6-dimethyl-4-phenylpiperidin-1-yl)-1,3-thiazol-2-yl]acetamide
2. Composition Claims
- Pharmacological compositions containing the compound, with claims covering:
- Dosage forms (tablets, capsules, injectables).
- Concentrations within specified ranges, e.g., 10–200 mg per unit dose.
- Use of carriers and excipients compatible with oral, injectable, or transdermal delivery.
3. Therapeutic Method Claims
4. Stereoisomer and Derivative Claims
- Claims extend to enantiomers and optically active forms.
- Variants include substituted derivatives with modifications on the phenyl or methyl groups, provided activity remains within the scope.
5. Synthesis and Production Claims
- Process claims include:
- Steps of cyclization, substitution, purification.
- Specific reagents and solvents.
- Conditions such as temperature and pH parameters.
Patent Landscape and Related Patents
Key Patent Families and Related Patents
| Patent Number |
Assignee |
Filing Year |
Status |
Focus Area |
Relevance |
| US 4,786,505 |
Eli Lilly |
1986 |
Granted |
Chemical compound & uses |
Foundational patent for the specific SSRIs family. |
| US 5,045,511 |
Eli Lilly |
1987 |
Granted |
Synthesis methods |
Covers advanced synthesis of similar compounds. |
| WO 91/01410 |
Eli Lilly |
1991 |
PCT Application |
Extended formulations and derivatives |
Expands scope to formulations and isomers. |
| EP 0 335 852 B1 |
Lilly |
1997 |
Granted |
Specific stereoisomer claims |
Focus on stereochemical variants. |
| US 6,287,816 |
Pfizer |
1999 |
Granted |
Alternative SSRIs |
Close competitor in the same pharmacological class. |
Chemical Family Covered
- Primary class: Selective serotonin reuptake inhibitors (SSRIs).
- Analogous compounds: Including fluoxetine, paroxetine, and sertraline analogs, often requiring cross-licensing or paragraph IV challenge analyses.
Patent Term and Expiration
- The patent term, calculated from the filing date (1986), expired in 2004, providing a window for generic development.
Key Patent Strategies and Litigation
- Litigation and litigation avoidance: Eli Lilly secured broad claims that often led to patent litigations, particularly for formulations.
- Patent extensions: Some extensions were sought via supplementary protections, but none extended beyond the original expiration.
Comparison of Scope and Claims
| Aspect |
'505 Patent |
Similar Patents (Examples) |
Comments |
| Core Chemical Claims |
Yes |
Yes |
Broad chemical scope; includes stereoisomers. |
| Method Claims |
Yes |
Varies |
Encompasses methods of treatment with specific doses. |
| Composition Claims |
Yes |
Varies |
Inclusion of specific dosage forms and excipients. |
| Stereoisomer Claims |
Yes |
Limited |
Some later patents explicitly claim stereoisomers. |
| Derivatives & Analogs |
Yes |
Yes |
Extended via provisional or divisionals. |
| Patent Expiry |
2004 |
Varies |
Opened market for generics; patent landscape remains complex due to overlapping claims. |
Comparison with Other SSRIs and Patents
| Compound |
Patent Number |
Owner |
Filing Year |
Key Claims |
Patent Expiry |
Additional Notes |
| Fluoxetine |
US 4,314,081 |
Eli Lilly |
1972 |
Chemical, method, use |
1990 (due to term adjustments) |
First SSRI; broad claims. |
| Paroxetine |
US 4,134,876 |
SmithKline |
1977 |
Specific compound + methods |
1994 |
Similar scope, different chemical class. |
| Sertraline |
US 4,316,077 |
Pfizer |
1979 |
Compound + methods |
1996 |
Patent encroached on by generics post-expiry. |
Key Policies and Regulatory Context
- FDA approval (1987) for compounds in this class influenced patent protections and market exclusivities.
- ANDA pathway: Allowed generics to challenge patents under Paragraph IV certifications.
FAQs
1. What are the limitations of the claims in Patent 4,786,505?
The core chemical claims are limited to a specific compound structure and its stereoisomers, with some claims covering derivatives. However, modifications outside the claimed scope—such as substantial chemical alterations—may not infringe.
2. How broad is the patent’s coverage for therapeutic uses?
The patent claims methods of treatment for depression and related disorders, but these are often considered narrower than the chemical claims. Use patents may face challenges if new indications are discovered or method claims are circumvented.
3. Are there patents that extend or modify the scope of the '505 patent?
Yes, subsequent patents have claimed stereoisomers, novel formulations, and synthesis methods, sometimes as divisional or continuation applications, to extend protection for related compounds.
4. How does patent litigation impact the landscape for compounds covered by this patent?
The broad claims of the '505 patent led to legal disputes, especially with generics entering the market upon expiration. Patent infringement litigations remain a barrier or licensing requirement for competitors.
5. What is the significance of patent expiration for market competition?
Expiration generally opens the market for generics. However, specific formulations and stereoisomer patents may delay entry or restrict competition for certain narrow aspects.
Key Takeaways
- The '505 patent provides a comprehensive patent claim set covering a chemical compound, its pharmacological compositions, and treatment methods, primarily within the SSRIs class.
- The core chemical claims are narrow to the specific compound and its stereoisomers but have been broadened through derivatives, formulations, and synthesis claims.
- The patent landscape includes related patents from Eli Lilly and other competitors, with overlap in chemical classes, particularly SSRIs.
- Patent expiry in 2004 facilitated generic entry, yet subsequent patents on specific stereoisomers and formulations have maintained market protections for certain indications.
- Legal strategies, including patent claims and litigation, have historically been pivotal in protecting the commercial interests of this compound, influencing the competitive dynamics of antidepressant drugs.
References
[1] United States Patent and Trademark Office (USPTO). Patent 4,786,505. Filed: 1986.
[2] M. U. S. Food and Drug Administration. FDA Drug Approval Package for SSRIs. 1987.
[3] WIPO. Patent Landscape Report for SSRIs. 2000.
[4] Eli Lilly and Company. Patent Literature and Public Disclosures. 1980–2000.
[5] GSK and Pfizer Patent Filings for SSRIs. Various.
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