As Nintendo fights Palworld creator Pocketpair in Japanese court over patent infringement, the United States Patent and Trademark Office is taking the unprecedented step of reexamining one of Nintendo's already approved American patents. The patent being reexamined by the USPTO is entirely separate from the ones being scrutinized in Japanese courts. But that case—and the controversial nature of its broad patent—has thrust Nintendo's patent strategy into the spotlight.
The USPTO will reexamine a Pokémon patent covering a summoning and autobattling system that was approved by the government body in September. USPTO director John Squires filed for an ex parte reexamination himself, and, naturally, it was granted, putting the patentability of the mechanics into question. Specifically, Squires ordered the reexamination because the office was made aware of other patents that would be considered prior art—any previously created inventions or materials crucial to examining patent validity—that weren't brought up during the original process of its patent examination. (Nintendo provided a link only to its website as prior art references in its original application.)
Nintendo's September patent covers a battling system that sounds like the ones in Pokémon Scarlet and Pokémon Violent, in which a player releases a Pokémon from its Poké Ball and it fights another Pokémon if there's one within a certain range. If not, the player can point the Pokémon in a different direction, and the Pokémon can head that way. If there's an enemy Pokémon around, they'll fight. The approval of the patent made headlines, with game developers, lawyers, and players questioning whether Nintendo and The Pokémon Company should be able to patent the process behind a relatively simple sequence of events. The companies' ongoing legal trademark battle with Palworld only added fuel to that fire.
The reevaluation of a patent doesn't happen very often. When a patent is approved, it's approved, and it often takes a third-party complaint or a lawsuit to make a challenge there. Roughly 15,000 requests for ex parte examinations have been made since the process was implemented in 1981, McDonnell Boehnen Hulbert & Berghoff partner and patent attorney Andrew Velzen told Aftermath. Of those requests, just 175 of the reexaminations filed were made by the USPTO director. Typically, it's patent owners themselves or third-parties who file these sorts of requests.
"It wouldn't be shocking if [Palworld developer] Pocketpair had filed a request on Nintendo's patent, but that's not what happened here," Velzen said. "It was the patent office itself doing it, and that has only happened, based on the statistics I dug up, 175 times ever between 1981 and 2024."
The USPTO will take a second look at the Nintendo patent against two other patents (one from Nintendo, another from Konami) to determine what happens to the patent. Squires said the two patents are "important in deciding whether the claims are patentable, and [...] each raises a substantial new question of patentability."
Haley MacLean, a Canadian lawyer with Voyer Law who specializes in intellectual property law, told Aftermath that it's a good thing that this patent is getting reexamined. She said she'd been feeling "hopeless" about the state of patent law in the video game industry; broad software patents often muddy the lines between what's actually a patentable idea and what's just an idea. Nintendo's September, for many, sounded a lot like an idea that was dressed up by technical language and not necessarily something entirely new. The prior art referenced on patent applications becomes especially important in these applications, because it's something for the patent examiner to reference while making a decision.
MacLean said the patent examiner will be looking at Nintendo's battling patent—against the Nintendo and Konami patents—in two ways: novelty and obviousness. Is Nintendo's September patent different enough from the two prior art references? The Nintendo patent being used as prior art in this reexamination was published in 2020 and outlines a method of controlling both a player character and a sub-character, in which the sub-character is automatically controlled, except when the player hits the ZL button to attack. Images attached to the patent show two characters connected by a chain, suggesting this patent is related to PlatinumGames' 2019 game Astral Chain, as pointed out to Aftermath by a reader. Astral Chain director Takahisa Taura is listed as an inventor. The Konami patent, published in 2002 and now expired, also details a system wherein a player and a sub-character battle automatically or manually.
The second piece the examiner will look at, MacLean said, is obviousness. "Something can't be obvious to somebody called the posita, or person of ordinary skill in the art," she said. "You take the prior art and what it's protecting and compare it to what Nintendo's trying to protect." They're looking to decide if, say, a game developer would see the Nintendo September patent as an obvious extension of the prior art. In other words, would it be easy for a game developer to make the leap from Nintendo's 2020 system, in which sub-characters both move automatically and manually in battles, and with a specific button to lock onto enemies, to the most recent system from its September patent in which the player can point a sub-character in a different direction to find an enemy.
"This is the first time [the USPTO direction initiating a reexamination] has happened in quite some time, and certainly the first I'm aware of in the video game space," Velzen said.
Both MacLean and Velzen said that the original application didn't have as thorough of an examination as what's typical; the patent just went straight through without any hiccups, which is uncommon. Velzen said that it's common for a patent to get rejected at least once first, then for the patent applicant to revise it.
Then, there's the news that the Japanese patent office recently rejected a Nintendo patent. The Japanese body rejected a pending application covering aiming and throwing items (i.e., Poké Balls) to capture creatures. The patent is not part of the ongoing Palworld lawsuit, in which Nintendo and The Pokémon Company are suing Pocketpair for patent violations, but is an offshoot of one patent part of the suit.
That lawsuit itself—and the press around it—could also be part of the wider eyes on Nintendo's patents, even by the USPTO, despite Nintendo's September patent being unrelated. And public response to Nintendo's September patent may have played a part in getting the reexamination in front of the USPTO director.
"The public is interested," MacLean said. "I think all that probably accumulated to [the USPTO director] saying, OK, we need to look at this again."
It's ultimately a good thing for the video game industry, MacLean said. "This is a disruption of the normal status quo, and the current trend of video game mechanic patents getting auto approved—immediately approved, rapidly and excessively."
Update, Nov. 6 at 1:48 p.m. EST: This story has been updated to add information about one of the two patents now being reviewed as prior art.
