TransForm, J&J and topiramate: New life, old products

In May, the US Patent Office granted TransForm its first patent on topiramate sodium trihydrate-an alternate salt form of J&J's $700 million epilepsy drug Topamax. J&J found itself with an interesting complement to Alza reformulation efforts on the drug--which were gearing it for alternative indications like obesity and migraine--and a potential IP complication. The business-like result: a broad licensing agreement under which TransForm assigns all its topiramate patent rights to J&J in exchange for up-front money, an equity investment, milestones, and future royalties.

When Johnson & Johnson acquired Alza Corp. [See Deal] one of the objectives of this $13 billion acquisition was to apply the drug delivery company's technology to its own pipeline—improving existing products or resurrecting compounds. One project prominently mentioned by both Alza and J&J: expanding the uses for topiramate (Topamax), J&J's $700 million epilepsy drug, particularly as an obesity treatment. In the high doses required for an obesity drug, Topamax wasn't well tolerated, causing such adverse events as fatigue and abnormal vision. The idea was to have Alza create a controlled-release version of the drug to see if it could optimize performance.

Meanwhile chemists from the form and formulations start-up TransForm Pharmaceuticals Inc. had already begun generating novel crystalline forms of...

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