Invega Sustenna Patent Expiration

Invega Sustenna is a drug owned by Janssen Pharmaceuticals Inc. It is protected by 9 US drug patents filed from 2013 to 2016. Out of these, 1 drug patents are active and 8 have expired. Invega Sustenna's patents have been open to challenges since 01 February, 2012. Based on its patents and exclusivities, its generic launch date is estimated to be Jan 26, 2031. Details of Invega Sustenna's patents and their expiration are given in the table below.

Drug Patent Number Drug Patent Title Drug Patent Expiry Status
These drug patents focus on the other aspects of the drug like dosage, mode of administration (oral, tablet, capsules, liquids etc).
US9439906 Dosing regimen associated with long acting injectable paliperidone esters
Jan, 2031

(6 years from now)

Active
US6555544

(Pediatric)

Aqueous suspensions of submicron 9-hydroxyrisperidone fatty acid esters
May, 2019

(5 years ago)

Expired
US6555544 Aqueous suspensions of submicron 9-hydroxyrisperidone fatty acid esters
Nov, 2018

(6 years ago)

Expired
US6077843

(Pediatric)

Aqueous suspensions of 9-hydroxyrisperidone fatty acid esters
Nov, 2017

(7 years ago)

Expired
US6077843 Aqueous suspensions of 9-hydroxyrisperidone fatty acid esters
May, 2017

(7 years ago)

Expired
US5254556

(Pediatric)

3-piperidinyl-1,2-benzisoxazoles
Apr, 2014

(10 years ago)

Expired
US5254556 3-piperidinyl-1,2-benzisoxazoles
Oct, 2013

(11 years ago)

Expired
US5352459

(Pediatric)

Use of purified surface modifiers to prevent particle aggregation during sterilization
Jun, 2013

(11 years ago)

Expired
US5352459 Use of purified surface modifiers to prevent particle aggregation during sterilization
Dec, 2012

(11 years ago)

Expired


A patent's expiry date may change depending upon legal activities going on that patent. Critical activities like abandoning of a patent, term extension of a patent or amendment of its claims can increase or decrease the life of a patent hence affecting its expiry date and in turn affecting the generic launch date of that drug. Tracking these ongoing activities on a patent application helps to keep an eye on the latest developments in the patent process of the drug which can give an idea of how early a drug's generic could be available. The next section provides a list of recent legal activities on Invega Sustenna's patents.

Given below is the list of recent legal activities going on the following patents of Invega Sustenna.

Activity Date Patent Number
Patent litigations
Payment of Maintenance Fee, 8th Year, Large Entity 28 Feb, 2024 US9439906
Electronic Review 25 Jan, 2022 US9439906
Email Notification 25 Jan, 2022 US9439906
Mail Certificate of Correction Memo 24 Jan, 2022 US9439906
Certificate of Correction Memo 06 Jan, 2022 US9439906
Post Issue Communication - Certificate of Correction 06 Jan, 2022 US9439906
Request for Trial Denied 16 Sep, 2020 US9439906
Payment of Maintenance Fee, 4th Year, Large Entity 27 Feb, 2020 US9439906
Petition Requesting Trial 11 Feb, 2020 US9439906
Petition Requesting Trial 07 Feb, 2020 US9439906


While patent expiration is one way of estimating the generic date of a drug, if a patent gets invalidated somehow, the generic of the drug may arrive early. Being aware of all relevant patents can help in avoiding legal pitfalls. Given below are details of the litigation history of Invega Sustenna and ongoing litigations to help you estimate the early arrival of Invega Sustenna generic.

Invega Sustenna's Litigations

Invega Sustenna been subject to various legal proceedings, including patent litigations. The earliest legal proceeding was initiated on Feb 07, 2020, against patent number US9439906. The petitioner Mylan Laboratories Ltd., challenged the validity of this patent, with Janssen Pharmaceutica NV as the respondent. Click below to track the latest information on how companies are challenging Invega Sustenna's patents.

Last updated on November 19, 2024
Patent Proceeding Filing Date Status Respondent Petitioner
Patent litigations
US9439906 February, 2020 Terminated-Denied
(16 Sep, 2020)
Janssen Pharmaceutica NV Mylan Laboratories Ltd.


FDA has granted some exclusivities to Invega Sustenna. Till the time these exclusivities are active, no other company can market a generic or bioequivalent version of Invega Sustenna, regardless of the status of it's patents. These exclusivities hence play a crucial role in delaying the generic launch. Given below are details of the exclusivities granted to Invega Sustenna.

Exclusivity Information

Invega Sustenna holds 6 exclusivities. All of its exclusivities have expired in 2020. Details of Invega Sustenna's exclusivity codes and their expiration dates are given below.


Drug Exclusivity Drug Exclusivity Expiration
New Chemical Entity Exclusivity(NCE) Dec 19, 2011
New Dosage Form(NDF) Jul 31, 2012
Pediatric Exclusivity(PED) Jan 31, 2013
M(M-119) Aug 29, 2015
New Indication(I-698) Nov 12, 2017
M(M-215) Dec 20, 2020

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Several oppositions have been filed on Invega Sustenna's European patents. EP oppositions can significantly impact the timeline for the generic launch of drugs. If an opposition results in the revocation or amendment of a patent, it can shorten the exclusivity period of the original drug. This can lead to an earlier entry of generic versions into the market. To help you estimate the potential early arrival of Invega Sustenna's generic, the next section provides detailed information on ongoing and past EP oppositions related to Invega Sustenna patents.

Invega Sustenna's Oppositions Filed in EPO

Invega Sustenna has faced multiple oppositions in the European Patent Office. The earliest opposition was filed on Mar 31, 2021, by Teva Pharmaceutical Industries Ltd. This opposition was filed on patent number EP08863534A. Click below to reveal the latest opposition data.


Application Filing Date Opposition Party Legal Status
Patent litigations
EP08863534A Dec, 2021 EGIS Gyógyszergyár Zártkörüen Müködö Részvénytársaság Granted and Under Opposition
EP08863534A Dec, 2021 Zentiva k.s. Granted and Under Opposition
EP08863534A Dec, 2021 Hoffmann Eitle SLU Granted and Under Opposition
EP08863534A Dec, 2021 Farmaprojects S.A.U. Granted and Under Opposition
EP08863534A Dec, 2021 Gill Jennings & Every LLP Granted and Under Opposition
EP08863534A Dec, 2021 Laboratorios Lesvi, S.L. Granted and Under Opposition
EP08863534A Dec, 2021 Tolmar International Limited Granted and Under Opposition
EP08863534A Dec, 2021 Sun Pharmaceutical Industries Europe B.V. Granted and Under Opposition
EP08863534A Dec, 2021 df-mp Dörries Frank-Molnia & Pohlman Patentanwälte Rechtsanwälte ParG mbB Granted and Under Opposition
EP08863534A Dec, 2021 BIOGARAN Granted and Under Opposition
EP08863534A Dec, 2021 EVER Valinject GmbH Granted and Under Opposition
EP08863534A Dec, 2021 Accord Healthcare Ltd Granted and Under Opposition
EP08863534A Dec, 2021 Hoffmann Eitle Granted and Under Opposition
EP08863534A Dec, 2021 Maiwald Patent- und Rechtsanwaltsgesellschaft mbH Granted and Under Opposition
EP08863534A Dec, 2021 Abbott Products Operations AG Granted and Under Opposition
EP08863534A Dec, 2021 Sanovel Ilaç Sanayi Ve Ticaret Anonim Sirketi Granted and Under Opposition
EP08863534A Dec, 2021 Stada-Arzneimittel Aktiengesellschaft Granted and Under Opposition
EP08863534A Dec, 2021 Instone, Terry/Appleyard Lees IP LLP/Read, Howard Granted and Under Opposition
EP08863534A Dec, 2021 Advanz Pharma Services (UK) Ltd. Granted and Under Opposition
EP08863534A Mar, 2021 Teva Pharmaceutical Industries Ltd Granted and Under Opposition


US patents provide insights into the exclusivity only within the United States, but Invega Sustenna is protected by patents in multiple countries. Understanding the full scope of patent protection is crucial in strategizing market entry. By looking at the broader patent landscape, you can identify markets with weaker patent protection which could be ideal generic entry points. The following section offers details on Invega Sustenna's family patents as well as insights into ongoing legal events on those patents.

Invega Sustenna's Family Patents

Invega Sustenna has patent protection in a total of 26 countries. It's US patent count contributes only to 13.9% of its total global patent coverage. 7 countries have all of their patents expired or invalidated which has opened up potential generic launch opportunities in these countries. Click below to unlock the full patent family tree for Invega Sustenna.

Family Patents

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Generic Launch

Generic Release Date:

Invega Sustenna's generic launch date based on the last expiry date of its patents and exclusivities combined is estimated to be Jan 26, 2031 (This date is subject to change depending upon the patent filing activities by the drug owner or exclusivity additions to its drug application)

Invega Sustenna Generic API suppliers:

Paliperidone Palmitate is the generic name for the brand Invega Sustenna. 1 company has already filed for the generic of Invega Sustenna. Check out the entire list of companies who have already received approval for Invega Sustenna's generic

How can I launch a generic of Invega Sustenna before its drug patent expiration? :

You can seek FDA approval to launch a generic drug before the expiration of Invega Sustenna's patents related by providing a 'paragraph IV certification' in your application, which states that the patent submitted by the Invega Sustenna's sponsor is invalid, unenforceable, or will not be infringed by your generic product.

Given below are the details of the already filed Para IV certificates on Invega Sustenna -

Strength Submission Date ANDA(s) Filed First applicant approval Last patent expiry 180 day status
39 mg/0.25 mL, 78 mg/0.5 mL, 117 mg/0.75 mL, 156 mg/mL and 234 mg/1.5 mL 21 Nov, 2017 1 06 Jul, 2021 26 Jan, 2031 Deferred

Alternative Brands for Invega Sustenna

Invega Sustenna which is used for treating schizophrenia and schizoaffective disorder., has several other brand drugs in the same treatment category and using the same active ingredient (Paliperidone Palmitate). Given below is the list of those companies and their brand drugs, to help you identify new opportunities, assess competitors, and plan your market strategies more effectively.

Drug Owner Drug Name Treatment Area
Alkermes Inc
Aristada Used for managing symptoms of schizophrenia through various methods of administration.
Aristada Initio Kit Used for managing symptoms of schizophrenia.
Indivior
Perseris Kit Used for treating schizophrenia.
Intra-cellular
Caplyta Used for treating schizophrenia, bipolar depression, and bipolar disorder by modulating serotonin and dopamine receptor activity.
Janssen Pharms
Invega Trinza

(uses Paliperidone Palmitate)

used for managing symptoms of schizophrenia in patients who have missed doses or need to restart treatment.
Risperdal Consta Used for maintenance treatment of bipolar I disorder and treatment of schizophrenia.
Otsuka
Abilify Used for treating manic episodes in bipolar disorder, major depressive disorder, irritability in autistic disorder, and maintaining stability in schizophrenia.
Rexulti used for treating major depressive disorder (MDD) and schizophrenia in adults and pediatric patients ages 13 years and older.
Abilify Asimtufii Used for managing symptoms of bipolar I disorder and schizophrenia with extended-release injectable suspension.
Abilify Mycite Kit used for acute treatment of manic and mixed episodes associated with bipolar I disorder, adjunctive treatment of major depressive disorder (MDD), and treatment of schizophrenia.
Otsuka Pharm Co Ltd
Abilify Maintena Kit Used for treating bipolar 1 disorder and schizophrenia, including during acute episodes.
Sunovion Pharms Inc
Latuda used for treating bipolar depression, major depressive episodes, and schizophrenia with improvement in attention function, negative symptoms, and cognitive dysfunction.
Teva
Uzedy Used for managing symptoms of schizophrenia.

Apart from drugs working in same treatment category, there are also some brand drugs where treatment area is different, but the active ingredient used is same i.e. Paliperidone Palmitate. Given below is the list of those drugs and companies owning them.

Drug Owner Drug Name
Janssen Pharms
Invega Hafyera
Luye Innomind Pharma
Erzofri


Apart from brand drugs containing the same ingredient, some generics have also been filed for Paliperidone Palmitate, Invega Sustenna's active ingredient. Check the complete list of approved generic manufacturers for Invega Sustenna





About Invega Sustenna

Invega Sustenna is a drug owned by Janssen Pharmaceuticals Inc. It is used for treating schizophrenia and schizoaffective disorder. Invega Sustenna uses Paliperidone Palmitate as an active ingredient. Invega Sustenna was launched by Janssen Pharms in 2009.

Approval Date:

Invega Sustenna was approved by FDA for market use on 31 July, 2009.

NCE-1 date:

NCE-1 date also known as the four year date occurs four years after the original drug approval and marks the first opportunity for a generic manufacturer to file an ANDA with a Paragraph IV certification. This is the earliest point when generic competition might begin, provided the challenge is successful. Since the approval date for Invega Sustenna is 31 July, 2009, its NCE-1 date is estimated to be 01 February, 2012.

Active Ingredient:

Invega Sustenna uses Paliperidone Palmitate as the active ingredient. Check out other Drugs and Companies using Paliperidone Palmitate ingredient

Treatment:

Invega Sustenna is used for treating schizophrenia and schizoaffective disorder.

Dosage:

Invega Sustenna is available in suspension, extended release form for intramuscular use. Given below is detailed information on Dosage -

Strength Dosage Form Availability Application Pathway
39MG/0.25ML (39MG/0.25ML) SUSPENSION, EXTENDED RELEASE Prescription INTRAMUSCULAR
234MG/1.5ML (156MG/ML) SUSPENSION, EXTENDED RELEASE Prescription INTRAMUSCULAR
156MG/ML (156MG/ML) SUSPENSION, EXTENDED RELEASE Prescription INTRAMUSCULAR
117MG/0.75ML (117MG/0.75ML) SUSPENSION, EXTENDED RELEASE Prescription INTRAMUSCULAR
78MG/0.5ML (78MG/0.5ML) SUSPENSION, EXTENDED RELEASE Prescription INTRAMUSCULAR


Invega Sustenna News

Decision Upheld in Patent Case Involving Schizophrenia Drug of Johnson & Johnson - Report by Bloomberg Law

14 Jun, 2024

Teva and Viatris granted opportunity to challenge J&J's patent for schizophrenia treatment

02 Apr, 2024

Teva and Viatris bring back patent dispute against Johnson & Johnson's Invega, a popular long-acting schizophrenia drug...

02 Apr, 2024

Teva and Viatris win appeal in challenge against J&J patent for schizophrenia drug

02 Apr, 2024

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