Zorvolex Patent Expiration

Zorvolex is a drug owned by Zyla Life Sciences Us Inc. It is protected by 7 US drug patents filed from 2014 to 2015 out of which none have expired yet. Based on its patents and exclusivities, its generic launch date is estimated to be Apr 23, 2030. Details of Zorvolex'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).
US9186328 Formulation of diclofenac
Apr, 2030

(5 years from now)

Active
US9180095 Formulation of diclofenac
Apr, 2030

(5 years from now)

Active
US8999387 Formulation of diclofenac
Apr, 2030

(5 years from now)

Active
US9180096 Formulation of diclofenac
Apr, 2030

(5 years from now)

Active
US9017721 Formulation of diclofenac
Apr, 2030

(5 years from now)

Active
US9173854 Formulation of diclofenac
Apr, 2030

(5 years from now)

Active
US8679544 Formulation of diclofenac
Apr, 2030

(5 years from now)

Active


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 Zorvolex's patents.

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

Activity Date Patent Number
Patent litigations
Payment of Maintenance Fee, 8th Yr, Small Entity 17 May, 2023 US9186328
Payment of Maintenance Fee, 8th Yr, Small Entity 10 May, 2023 US9180095
Payment of Maintenance Fee, 8th Yr, Small Entity 10 May, 2023 US9180096
Payment of Maintenance Fee, 8th Yr, Small Entity 03 May, 2023 US9173854
Payment of Maintenance Fee, 8th Yr, Small Entity 28 Oct, 2022 US9017721
Payment of Maintenance Fee, 8th Yr, Small Entity 07 Oct, 2022 US8999387
Applicant Has Filed a Verified Statement of Small Entity Status in Compliance with 37 CFR 1.27 07 Jul, 2022 US9017721
Applicant Has Filed a Verified Statement of Small Entity Status in Compliance with 37 CFR 1.27 07 Jul, 2022 US8999387
Payment of Maintenance Fee, 8th Yr, Small Entity 27 Sep, 2021 US8679544 (Litigated)
Payment of Maintenance Fee, 4th Yr, Small Entity 17 May, 2019 US9186328


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

Zorvolex's Litigations

Zorvolex been subject to various legal proceedings, including patent litigations. The earliest legal proceeding was initiated on Dec 28, 2015, against patent number US8999387. The petitioner Lupin Pharmaceuticals, Inc., challenged the validity of this patent, with iCeutica Pty Ltd. as the respondent. Click below to track the latest information on how companies are challenging Zorvolex's patents.

Last updated on November 12, 2024
Patent Proceeding Filing Date Status Respondent Petitioner
Patent litigations
US9017721 December, 2015 Terminated-Denied
(01 Jul, 2016)
iCeutica Pty Ltd. Lupin Pharmaceuticals, Inc.
US8999387 December, 2015 Terminated-Denied
(29 Jun, 2016)
iCeutica Pty Ltd. Lupin Pharmaceuticals, Inc.


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

Exclusivity Information

Zorvolex holds 2 exclusivities. All of its exclusivities have expired in 2017. Details of Zorvolex's exclusivity codes and their expiration dates are given below.


Drug Exclusivity Drug Exclusivity Expiration
New Product(NP) Oct 18, 2016
New Indication(I-692) Aug 22, 2017

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

Zorvolex's Family Patents

Zorvolex has patent protection in a total of 23 countries. It's US patent count contributes only to 24.1% of its total global patent coverage. 3 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 Zorvolex.

Family Patents

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Generic Launch

Generic Release Date:

Zorvolex's generic launch date based on the last expiry date of its patents and exclusivities combined is estimated to be Apr 23, 2030 (This date is subject to change depending upon the patent filing activities by the drug owner or exclusivity additions to its drug application)

Zorvolex Generics:

There are no approved generic versions for Zorvolex as of now.

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

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

Strength Submission Date ANDA(s) Filed First applicant approval Last patent expiry 180 day status
18 mg and 35 mg 06 Jun, 2014 1 23 Apr, 2030

Alternative Brands for Zorvolex

Zorvolex which is used for managing pain., has several other brand drugs in the same treatment category and using the same active ingredient (Diclofenac). 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
Btcp Pharma
Subsys Used for managing pain.
Fresenius Kabi Usa
Morphine Sulfate Used for managing chronic pain and treating pain in patients requiring opioid analgesia.
Genus
Tivorbex Used for relieving pain.
Recro Gainesville
Zohydro Er Used for managing pain in patients with hepatic impairment.
Tersera
Prialt Used for managing severe chronic pain through intrathecal infusion in patients also receiving morphine.
Upjohn
Lyrica used for managing fibromyalgia, treating various types of pain, and seizure disorders.

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. Diclofenac. Given below is the list of those drugs and companies owning them.

Drug Owner Drug Name
Assertio
Cambia
Zipsor
Falcon Pharms
Diclofenac Sodium
Fougera Pharms
Solaraze
Horizon
Pennsaid
Ibsa
Flector
Ibsa Inst Bio
Licart
Javelin Pharms Inc
Dyloject
Nuvo Pharms Inc
Pennsaid
Pfizer
Arthrotec






About Zorvolex

Zorvolex is a drug owned by Zyla Life Sciences Us Inc. It is used for managing pain. Zorvolex uses Diclofenac as an active ingredient. Zorvolex was launched by Zyla in 2013.

Approval Date:

Zorvolex was approved by FDA for market use on 18 October, 2013.

Active Ingredient:

Zorvolex uses Diclofenac as the active ingredient. Check out other Drugs and Companies using Diclofenac ingredient

Treatment:

Zorvolex is used for managing pain.

Dosage:

Zorvolex is available in capsule form for oral use. Given below is detailed information on Dosage -

Strength Dosage Form Availability Application Pathway
18MG **Federal Register determination that product was not discontinued or withdrawn for safety or effectiveness reasons** CAPSULE Discontinued ORAL
35MG CAPSULE Discontinued ORAL