The director of the United States Patent and Trademark Office has ordered a reexamination of Nintendo’s controversial ‘summon character and let it fight’ Pokémon patent after it was heavily criticized by IP lawyers.
Games Fray reported that Patent No. 12,403,397, dubbed the ‘397 patent, was granted by the USPTO “without any objection” to Nintendo, which is embroiled in ongoing litigation with Pocketpair’s Palworld.
While the patent sums up how Pokémon games work in that you summon Pokémon to battle other Pokémon in the hope of adding them to your collection, there are countless other games that use similar mechanics, such as Persona, Digimon, and even Elden Ring, depending upon how the patent is interpreted.
At the time, IP expert Florian Mueller took to social media to say Nintendo “should never” have received a “summon character and let it fight” patent in the first place, while video game patent lawyer Kirk Sigmon told PC Gamer “these claims were in no way allowable.”
Now, Games Fray has reported that Donald Trump nominee John A. Squires, who only became director of the USPTO in September, has personally ordered a reexamination after he “determined that substantial new questions of patentability have arisen” to certain claims made by the patent.
Here’s Squires’ description of the claims in question:
“The ‘397 patent issued with claims drawn to controlling the movement of a player character in a field of a virtual space, causing a sub character to appear in the field, controlling a battle in a manual mode when an enemy character is present in the location the sub character has appeared, and when an enemy character is not present in the location the sub character has appeared, automatically moving the sub character, and controlling a battle in an automatic mode when an enemy character is placed at a designated location.”
In his order, Squires pointed to two older U.S. patent applications — one filed by Konami in 2002, the other by Nintendo itself in 2019 — as “prior art” references. Both, Squires said, would be “important in deciding whether the claims are patentable,” and each “raises a substantial new question of patentability.”
Mueller, writing for Games Fray, said Squires’ order was down to the “public outrage” at the award of the patent, and concerns about the reputation of the U.S. patent system as a whole. While this reexamination isn’t a revocation order, Mueller insisted it is now “highly likely” that the USPTO will revoke Nintendo’s ‘397 patent. Nintendo has two months to respond.
What does this mean for Nintendo and The Pokémon Company’s high-profile legal battle with Pocketpair over Palworld? Mueller said it “further undermines the credibility” of Nintendo’s patent assertions against Pocketpair’s game.
This is the latest legal blow for Nintendo in its battle against Palworld. Last month, one of the Nintendo patents related to its monster capture patents filed last year was rejected by the Japan Patent Office (JPO) for lacking originality. The office’s reasoning for the rejection made reference to older games with similar mechanics that were released even before 2021, including ARK (released in 2015), Monster Hunter 4 (2013), and Japanese browser game Kantai Collection (also 2013). Ironically, Pocketpair’s Craftopia (2020) and Niantic’s Pokémon Go (2016) were among other examples of games that were used to argue that the patent lacks originality.
The case involves three main patents granted by the JPO: two related to monster capture and release, and one related to riding characters. All three patents were filed in 2024, after Palworld came out. However, they are actually derived from earlier Nintendo patents dating from 2021. In other words, it seems that once Palworld came on the scene, Nintendo filed divisional patents that were geared to fight specifically against Palworld’s alleged infringement of the original patents.
Since then, Pocketpair has made changes to Palworld’s disputed mechanics. The November 2024 patch removed the ability to summon Pals by throwing Pokéball-like Pal Spheres (now Pals just materialize next to you when summoned). In May this year, another Palworld update changed how you can glide in the game — instead of directly grabbing onto Glider Pals, now you just simply use Pal-buffed Glider equipment. The case has rumbled on, with Nintendo even rewriting a mount-related patent mid-lawsuit, and arguing that mods should not count as prior art.
So what happens next? Mueller said there may not be any further developments this calendar year relating to Nintendo’s lawsuit against Pocketpair or patents that are related to it. But decisions are expected next year. All eyes will be on Presiding Judge Motoyuki Nakashima, who leads the patent division of the Tokyo District Court. “It is ever more likely that Nintendo will lose,” Mueller said.
At the Game Developers Conference (GDC) in March, IGN sat down for an extended conversation with John “Bucky” Buckley, communications director and publishing manager for Palworld developer Pocketpair. We spoke following his talk at the conference, ‘Community Management Summit: A Palworld Roller Coaster: Surviving the Drop.’ During that talk, Buckley went into candid detail about a number of Palworld’s struggles, especially the accusations of it using generative AI (which Pocketpair has since debunked pretty soundly) and stealing Pokemon’s models for its own Pals (a claim that the person who originally made it has since retracted). He even commented a bit on Nintendo’s patent infringement lawsuit against the studio, saying it “came as a shock” to the studio and was “something that no one even considered.”
Last month, former Capcom game developer Yoshiki Okamoto issued comments seemingly against Pocketpair and Palworld in the legal battle, sparking a backlash from viewers. In a YouTube video posted on his channel on September 27, Okamoto said Palworld had “crossed a line that should not be crossed, and I don’t want the world to become a place where this kind of thing is acceptable.”
Photo by Tomohiro Ohsumi/Getty Images.
Wesley is Director, News at IGN. Find him on Twitter at @wyp100. You can reach Wesley at wesley_yinpoole@ign.com or confidentially at wyp100@proton.me.
