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Last Updated: December 22, 2024

Details for Patent: 8,163,904


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Which drugs does patent 8,163,904 protect, and when does it expire?

Patent 8,163,904 protects TASIGNA and is included in one NDA.

Protection for TASIGNA has been extended six months for pediatric studies, as indicated by the *PED designation in the table below.

This patent has fifty-three patent family members in thirty-four countries.

Summary for Patent: 8,163,904
Title:Salts of 4-methyl-N-[3-(4-methyl-imidazol-1-yl)-5-trifluoromethyl-phenyl]-- 3-(4-pyridin-3-yl-pyrimidin-2-ylamino)-Benzamide
Abstract: Salts of 4-methyl-N-[3-(4-methyl-imidazol-1-yl)-5-trifluoromethyl-phenyl]- -3-(4-pyridin-3-yl-pyrimidin-2-ylamino)-benzamide are prepared by various processes.
Inventor(s): Manley; Paul W (Arlesheim, CH), Shieh; Wen-Chung (Berkeley Heights, NJ), Sutton; Paul Allen (Parsippany, NJ), Karpinski; Piotr H (Lincoln Park, NJ), Wu; Raeann (Pine Brook, NJ), Monnier; Stephanie (Raedersheim, FR), Brozio; Jorg (Basel, CH)
Assignee: Novartis AG (Basel, CH) Novartis Pharma GmbH (Vienna, AT)
Application Number:11/995,898
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,163,904
Patent Claim Types:
see list of patent claims
Compound; Use; Formulation; Composition;
Patent landscape, scope, and claims:

United States Patent 8,163,904: A Detailed Analysis

Introduction

United States Patent 8,163,904, hereafter referred to as the '904 patent, is a significant intellectual property asset owned by Novartis Pharmaceuticals Corporation. This patent pertains to specific salts of a complex organic compound, which has valuable pharmacological properties, particularly as a protein kinase inhibitor.

Patent Overview

The '904 patent, titled "Salts of 4-methyl-N-[3-(4-methyl-imidazol-1-yl)-5-trifluoromethyl-phenyl]-3-(4-pyridin-3-yl-pyrimidin-2-ylamino)-benzamide," was granted on April 24, 2012. It covers the preparation, pharmaceutical compositions, and methods of treatment using these specific salts[1][4].

Scope of the Patent

The patent encompasses several key aspects:

Chemical Structure and Synthesis

The patent describes the synthesis and preparation of salts of the compound 4-methyl-N-[3-(4-methyl-imidazol-1-yl)-5-trifluoromethyl-phenyl]-3-(4-pyridin-3-yl-pyrimidin-2-ylamino)-benzamide. This compound is a potent inhibitor of protein kinases, which are enzymes involved in various cellular processes, including those related to cancer and other proliferative disorders[1][4].

Pharmaceutical Compositions

The patent includes methods for preparing pharmaceutical compositions that contain these salts. These compositions can be formulated in various forms, such as capsules, tablets, or other dosage forms suitable for administration to patients[1][4].

Methods of Treatment

The '904 patent covers the use of these salts as therapeutic agents, particularly for treating diseases that respond to protein kinase inhibition. This includes conditions such as certain types of cancer, where the inhibition of specific kinases can help in managing or treating the disease[1][4].

Claims of the Patent

The patent contains multiple claims that define the scope of protection:

Independent Claims

These claims define the broadest scope of the invention, including the specific salts, their preparation methods, and pharmaceutical compositions containing these salts.

Dependent Claims

These claims narrow down the scope by specifying particular aspects of the invention, such as specific salt forms, methods of synthesis, and therapeutic applications.

Patent Landscape

The '904 patent is part of a broader patent portfolio related to the drug Tasigna (nilotinib), which is owned by Novartis.

Related Patents

Tasigna is protected by a series of patents, including US8,163,904, US8,293,756, US8,389,537, US8,415,363, and US9,061,029, among others. These patents cover various aspects of the drug, including different salt forms, crystalline structures, and methods of treatment[3].

Patent Expiration

The '904 patent is set to expire on August 23, 2028. This expiration date is crucial as it marks the period after which generic versions of the drug can be developed and marketed without infringing on Novartis's patent rights[3].

Litigation and Enforcement

Novartis has been active in enforcing its patent rights against potential infringers. For example, Novartis has filed patent infringement actions against Teva Pharmaceuticals, alleging that Teva's Abbreviated New Drug Application (ANDA) for a generic version of Tasigna infringes on several of Novartis's patents, including the '904 patent[2].

Impact on Generic Launch

The expiration of the '904 patent and other related patents will open the door for generic manufacturers to enter the market. However, the complex patent landscape and ongoing litigation may delay the launch of generic versions until all relevant patents have expired or been successfully challenged[3].

Pharmacological Significance

The compound protected by the '904 patent has significant pharmacological properties, making it a valuable therapeutic agent. As a protein kinase inhibitor, it is particularly useful in treating diseases such as chronic myeloid leukemia (CML) and other proliferative disorders.

"Valuable pharmacological properties are attributed to this compound; thus, it can be used, for example, as a protein kinase inhibitor useful in therapy for diseases which respond to inhibition of protein kinase activity."[1]

Conclusion

The United States Patent 8,163,904 is a critical component of Novartis's intellectual property portfolio related to Tasigna. It protects specific salts of a potent protein kinase inhibitor and covers their preparation, pharmaceutical compositions, and therapeutic applications. The patent's expiration in 2028 will be a significant milestone, potentially allowing for the entry of generic competitors into the market.

Key Takeaways

  • Patent Scope: Covers specific salts, synthesis methods, pharmaceutical compositions, and therapeutic applications.
  • Patent Expiration: Set to expire on August 23, 2028.
  • Related Patents: Part of a broader patent portfolio protecting Tasigna.
  • Litigation: Novartis is actively enforcing its patent rights against potential infringers.
  • Pharmacological Significance: The compound is a valuable protein kinase inhibitor used in treating diseases like CML.

FAQs

  1. What is the main subject of the '904 patent? The '904 patent pertains to specific salts of the compound 4-methyl-N-[3-(4-methyl-imidazol-1-yl)-5-trifluoromethyl-phenyl]-3-(4-pyridin-3-yl-pyrimidin-2-ylamino)-benzamide.

  2. What are the pharmacological properties of the compound protected by the '904 patent? The compound is a potent protein kinase inhibitor useful in therapy for diseases that respond to inhibition of protein kinase activity.

  3. When is the '904 patent set to expire? The '904 patent is set to expire on August 23, 2028.

  4. Which company owns the '904 patent? The '904 patent is owned by Novartis Pharmaceuticals Corporation.

  5. What is the significance of the '904 patent in the context of Tasigna? The '904 patent is part of the broader patent portfolio protecting Tasigna (nilotinib), a drug used to treat chronic myeloid leukemia and other proliferative disorders.

Sources

  1. US8163904B2 - Salts of 4-methyl-N-[3-(4-methyl-imidazol-1-yl)-5-trifluoromethyl-phenyl]-3-(4-pyridin-3-yl-pyrimidin-2-ylamino)-benzamide
  2. Case 1:24-cv-00428-UNA Document 1 Filed 04/04/24 Page 1 of 20
  3. Tasigna patent expiration - Pharsight
  4. US8163904B2 - Google Patents

More… ↓

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Drugs Protected by US Patent 8,163,904

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Novartis TASIGNA nilotinib hydrochloride CAPSULE;ORAL 022068-003 Mar 22, 2018 RX Yes No ⤷  Subscribe ⤷  Subscribe Y ⤷  Subscribe
Novartis TASIGNA nilotinib hydrochloride CAPSULE;ORAL 022068-002 Jun 17, 2010 RX Yes No ⤷  Subscribe ⤷  Subscribe Y ⤷  Subscribe
Novartis TASIGNA nilotinib hydrochloride CAPSULE;ORAL 022068-001 Oct 29, 2007 RX Yes Yes ⤷  Subscribe ⤷  Subscribe Y ⤷  Subscribe
>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: 8,163,904

PCT Information
PCT FiledJuly 18, 2006PCT Application Number:PCT/US2006/027878
PCT Publication Date:February 08, 2007PCT Publication Number: WO2007/015871

International Family Members for US Patent 8,163,904

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Argentina 057467 ⤷  Subscribe
Austria E514689 ⤷  Subscribe
Australia 2006276205 ⤷  Subscribe
Australia 2010241419 ⤷  Subscribe
Australia 2012203844 ⤷  Subscribe
Brazil PI0613605 ⤷  Subscribe
Canada 2615669 ⤷  Subscribe
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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