Nucynta Er Patent Expiration

Nucynta Er is a drug owned by Collegium Pharmaceutical Inc. It is protected by 13 US drug patents filed from 2013 to 2024. Out of these, 6 drug patents are active and 7 have expired. Nucynta Er's patents have been open to challenges since 20 November, 2012. Based on its patents and exclusivities, its generic launch date is estimated to be Mar 22, 2029. Details of Nucynta Er's patents and their expiration are given in the table below.

Drug Patent Number Drug Patent Title Drug Patent Expiry Status
These drug patents protect the active ingredient(API) of the drug. Only drug patent owner can launch products that use this active ingredient until these patents expire.
US7994364 Crystalline forms of (−)-(1R,2R)-3-(3-dimethylamino-1-ethyl-2-methylpropyl)-phenol hydrochloride
Jun, 2025

(7 months from now)

Active
These drug patents focus on the other aspects of the drug like dosage, mode of administration (oral, tablet, capsules, liquids etc).
US8536130

(Pediatric)

Use of 1 phenyl-3-dimethylamino-propane compounds for treating neuropathic pain
Mar, 2029

(4 years from now)

Active
US11344512

(Pediatric)

Titration of tapentadol
Oct, 2028

(3 years from now)

Active
US8536130 Use of 1 phenyl-3-dimethylamino-propane compounds for treating neuropathic pain
Sep, 2028

(3 years from now)

Active
US11344512 Titration of tapentadol
Apr, 2028

(3 years from now)

Active
US7994364

(Pediatric)

Crystalline forms of (−)-(1R,2R)-3-(3-dimethylamino-1-ethyl-2-methylpropyl)-phenol hydrochloride
Dec, 2025

(1 year, 1 month from now)

Active
US8114383 Abuse-proofed dosage form
Oct, 2024

(a month ago)

Expired
US8420056 Abuse-proofed dosage form
Nov, 2023

(1 year, 2 days ago)

Expired
US8075872 Abuse-proofed dosage form
Nov, 2023

(1 year, 2 days ago)

Expired
US8309060 Abuse-proofed dosage form
Nov, 2023

(1 year, 2 days ago)

Expired
US11007156 Prolonged release pharmaceutical composition containing 3-(3-dimethylamino-1-ethyl-2-methyl-propyl)phenol
Oct, 2022

(2 years ago)

Expired
USRE39593 1-phenyl-3-dimethylaminopropane compounds with a pharmacological effects
Aug, 2022

(2 years ago)

Expired
US6071970 Compounds active at a novel site on receptor-operated calcium channels useful for treatment of neurological disorders and diseases
Jun, 2017

(7 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 Nucynta Er's patents.

Given below is the list of recent legal activities going on the following patents of Nucynta Er.

Activity Date Patent Number
Patent litigations
Maintenance Fee Reminder Mailed 01 Jul, 2024 US8309060
Payment of Maintenance Fee, 12th Year, Large Entity 02 Aug, 2023 US8114383
Payment of Maintenance Fee, 12th Year, Large Entity 31 May, 2023 US8075872 (Litigated)
Payment of Maintenance Fee, 12th Year, Large Entity 25 Jan, 2023 US7994364 (Litigated)
Patent Issue Date Used in PTA Calculation 31 May, 2022 US11344512
Recordation of Patent Grant Mailed 31 May, 2022 US11344512
Email Notification 12 May, 2022 US11344512
Issue Notification Mailed 11 May, 2022 US11344512
Dispatch to FDC 26 Apr, 2022 US11344512
Application Is Considered Ready for Issue 26 Apr, 2022 US11344512


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 Nucynta Er and ongoing litigations to help you estimate the early arrival of Nucynta Er generic.

Nucynta Er's Litigations

Nucynta Er been subject to various legal proceedings, including patent litigations. The earliest legal proceeding was initiated on Jan 15, 2016, against patent number US7994364. The petitioner Rosellini Scientific, LLC, challenged the validity of this patent, with Gruenenthal GmbH as the respondent. Click below to track the latest information on how companies are challenging Nucynta Er's patents.

Last updated on November 19, 2024
Patent Proceeding Filing Date Status Respondent Petitioner
Patent litigations
US7994364 January, 2016 Terminated-Denied
(18 Jul, 2016)
Gruenenthal GmbH Rosellini Scientific, LLC


FDA has granted some exclusivities to Nucynta Er. Till the time these exclusivities are active, no other company can market a generic or bioequivalent version of Nucynta Er, 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 Nucynta Er.

Exclusivity Information

Nucynta Er holds 3 exclusivities. All of its exclusivities have expired in 2015. Details of Nucynta Er's exclusivity codes and their expiration dates are given below.


Drug Exclusivity Drug Exclusivity Expiration
New Chemical Entity Exclusivity(NCE) Nov 20, 2013
New Dosage Form(NDF) Aug 25, 2014
New Indication(I-656) Aug 28, 2015

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Several oppositions have been filed on Nucynta Er'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 Nucynta Er's generic, the next section provides detailed information on ongoing and past EP oppositions related to Nucynta Er patents.

Nucynta Er's Oppositions Filed in EPO

Nucynta Er has faced multiple oppositions in the European Patent Office. The earliest opposition was filed on Dec 14, 2007, by Purdue Pharma Lp. This opposition was filed on patent number EP04763834A. Click below to reveal the latest opposition data.


Application Filing Date Opposition Party Legal Status
Patent litigations
EP06706682A Dec, 2017 G. L. Pharma GmbH Revoked
EP08749016A Aug, 2012 Generics [UK] Limited Revoked
EP2005006983W Oct, 2009 Sanofi-Aventis Deutschland GmbH Patent maintained as amended
EP2005006983W Oct, 2009 Ypsomed AG Patent maintained as amended
EP04763833A Mar, 2008 Purdue Pharma LP Opposition rejected
EP04763834A Dec, 2007 Purdue Pharma LP Opposition rejected


US patents provide insights into the exclusivity only within the United States, but Nucynta Er 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 Nucynta Er's family patents as well as insights into ongoing legal events on those patents.

Nucynta Er's Family Patents

Nucynta Er has patent protection in a total of 33 countries. It's US patent count contributes only to 25.3% of its total global patent coverage. 5 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 Nucynta Er.

Family Patents

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Generic Launch

Generic Release Date:

Nucynta Er's generic launch date based on the last expiry date of its patents and exclusivities combined is estimated to be Mar 22, 2029 (This date is subject to change depending upon the patent filing activities by the drug owner or exclusivity additions to its drug application)

Nucynta Er Generics:

There are no approved generic versions for Nucynta Er as of now.

How can I launch a generic of Nucynta Er before its drug patent expiration? :

You can seek FDA approval to launch a generic drug before the expiration of Nucynta Er's patents related by providing a 'paragraph IV certification' in your application, which states that the patent submitted by the Nucynta Er'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 Nucynta Er -

Strength Submission Date ANDA(s) Filed First applicant approval Last patent expiry 180 day status
50 mg, 100 mg, 150 mg, 200 mg, and 250 mg 20 Nov, 2012 2 27 Jun, 2025

Alternative Brands for Nucynta Er

Nucynta Er which is used for managing severe chronic pain, including neuropathic pain associated with diabetic peripheral neuropathy, when other treatment options are inadequate., has several other brand drugs using the same active ingredient (Tapentadol Hydrochloride). 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
Collegium Pharm Inc
Nucynta






About Nucynta Er

Nucynta Er is a drug owned by Collegium Pharmaceutical Inc. It is used for managing severe chronic pain, including neuropathic pain associated with diabetic peripheral neuropathy, when other treatment options are inadequate. Nucynta Er uses Tapentadol Hydrochloride as an active ingredient. Nucynta Er was launched by Collegium Pharm Inc in 2011.

Approval Date:

Nucynta Er was approved by FDA for market use on 25 August, 2011.

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 Nucynta Er is 25 August, 2011, its NCE-1 date is estimated to be 20 November, 2012.

Active Ingredient:

Nucynta Er uses Tapentadol Hydrochloride as the active ingredient. Check out other Drugs and Companies using Tapentadol Hydrochloride ingredient

Treatment:

Nucynta Er is used for managing severe chronic pain, including neuropathic pain associated with diabetic peripheral neuropathy, when other treatment options are inadequate.

Dosage:

Nucynta Er is available in tablet, extended release form for oral use. Given below is detailed information on Dosage -

Strength Dosage Form Availability Application Pathway
EQ 50MG BASE TABLET, EXTENDED RELEASE Prescription ORAL
EQ 250MG BASE TABLET, EXTENDED RELEASE Prescription ORAL
EQ 200MG BASE TABLET, EXTENDED RELEASE Prescription ORAL
EQ 150MG BASE TABLET, EXTENDED RELEASE Prescription ORAL
EQ 100MG BASE TABLET, EXTENDED RELEASE Prescription ORAL