The director of the United States Patent and Trademark Office has taken the unusual step of ordering a re‑examination of a Nintendo patent that covers a widely used gameplay mechanic — summoning a subordinate character to fight either under player control or automatically. The move injects fresh uncertainty into Nintendo’s ongoing legal battle with Palworld maker Pocketpair and revives a broader debate over whether common game systems should be patentable.
What the USPTO ordered
USPTO Director John A. Squires has issued an Ex Parte Reexamination of U.S. Patent No. 12,403,397, according to the director’s order. Squires wrote that he had “determined that substantial new questions of patentability have arisen” for certain claims of the patent — notably those describing a player character in a virtual field that can cause a sub‑character to appear, use that sub‑character to battle an enemy, and allow that sub‑character to act either under manual control or automatically.
Squires’ order points to two earlier patent filings — one attributed to Konami in 2002 (commonly referred to in coverage as the Yabe patent) and a 2019 Nintendo filing (Taura) — as prior art that a reasonable examiner would consider important in deciding whether Nintendo’s claims are patentable. The director’s intervention is notable: news reports say a USPTO director personally ordering a re‑examination without a third party petition is rare.
The re‑examination does not immediately revoke Nintendo’s patent. Nintendo has two months to respond to the order, and other third parties may also submit arguments to the USPTO during that period.
Why the move matters to the Palworld case
Nintendo and The Pokémon Company filed a high‑profile patent infringement suit against Pocketpair, alleging Palworld infringes multiple patents related to monster capture, summoning and use of creatures. The U.S. patent at the center of the re‑examination — often framed in coverage as the “summon a creature and let it fight” patent — was seen by some observers as particularly consequential because the claimed mechanics resemble the core gameplay loop of Pokémon and many other franchises.
Legal observers say the USPTO review could undermine Nintendo’s position in its litigation against Pocketpair by calling into question the novelty and validity of the patent claims Nintendo has used to press its case. IP consultant Florian Mueller and other experts who have publicly criticized the original grant argued the re‑examination makes revocation more likely.
Pocketpair has publicly vowed to defend itself in court. The studio has already pointed to examples of longstanding game mechanics and, during the legal process, made in‑game adjustments — for example, changing how certain summoned creatures appear and modifying gliding mechanics — as it continues to develop Palworld.
A string of patent setbacks for Nintendo
The USPTO action comes after another setback in Japan. The Japan Patent Office issued a non‑final decision rejecting a related Nintendo patent application for lacking an inventive step, citing prior examples in games such as ARK: Survival Evolved, Monster Hunter 4, Pokémon Go and other titles. That JPO finding relied on external examples submitted by a third party (widely reported as being connected to Pocketpair’s defense), which argued similar mechanics existed before Nintendo’s priority filing.
Taken together, the U.S. re‑examination and the JPO decision have bolstered arguments by Pocketpair and others that the disputed mechanics are part of long‑standing game design practice rather than a novel, patentable invention.
Perspectives: USPTO, Nintendo, Pocketpair and IP specialists
- USPTO: Director Squires’ order signals the office sees compelling questions about whether prior technologies and patents should have blocked the issuance of Nintendo’s claims. The agency’s re‑examination process will now take evidence and determine whether those claims should stand.
- Nintendo: The company has not had a patent revoked by the order; it has the opportunity to respond and defend the claims. Nintendo and The Pokémon Company have pursued the litigation in Japan and have argued that certain recent games infringe their intellectual property.
- Pocketpair: The developer continues to deny wrongdoing and has said it will fight the lawsuit. The studio has made gameplay changes while litigation proceeds and has framed its position around protecting smaller developers from overly broad enforcement of IP.
- IP experts: Several patent attorneys and commentators publicly criticized the original USPTO grant, calling it overly broad and arguing that the claims described commonplace mechanics. Some observers suggest public scrutiny played a role in prompting the director’s review; others point to the prior filings cited in the order as the substantive grounds for re‑examination.
Broader implications for game developers and IP law
This episode highlights tensions at the intersection of patent law and interactive entertainment. Game creators and legal experts worry that broad patents on general gameplay systems could chill innovation: studios — especially smaller ones — may avoid certain ideas for fear of litigation. Conversely, companies that win patents argue they should be able to protect engineering and design investments when they meet patentability standards.
The USPTO re‑examination process will test whether existing prior art — including older patents and real‑world games — suffices to defeat Nintendo’s claims. If the re‑examination results in revocation, it would be a substantial precedent against broad patents on common mechanics; if the patent survives, it could encourage further enforcement actions or licensing efforts.
What happens next
Nintendo has two months to file a response to the USPTO’s order, after which the office will accept third‑party submissions and proceed with the re‑examination process. Parallel litigation in Japan continues; a Tokyo district court judge experienced in patent matters is overseeing aspects of the case there, and observers expect further rulings and hearings next year.
For developers and players, the decisions to come will be closely watched: they may help define how far patent protection can extend into the rules and interactions that make video games distinct.
For more about the USPTO’s procedures, see the United States Patent and Trademark Office: https://www.uspto.gov