Just weeks after Japan rejected Nintendo’s initial efforts to patent a variety of Pokémon-style monster capture and throwing mechanics – a patent that might prove critical in the company’s ongoing patent infringement lawsuit against Palworld – the US has taken the “rare” step of re-examining a previously granted Pokémon patent, believing it could be invalid.
Back in September, the US Patent and Trademark Office granted Nintendo a new patent (Patent No. 12,403,397, applied for in March 2023) covering gameplay mechanics relating to the summoning of a sub-character to battle an enemy. However, as reported by Games Fray, USPTO director John A. Squires has now “personally ordered” the organisation to re-examine that patent following the discovery of prior art references in two older patents.
In his re-examination order, Squires says he has “determined that substantial new questions of patentability have arisen” in relation to certain claims in Nintendo’s granted patent. These claims broadly reference controlling a player character on a field in a virtual space based on movement input; causing a sub-character to appear on the field based on input; using a sub-character to battle an enemy placed in the same location based on input; placing a sub-character into an unoccupied location and having its movements controlled automatically, plus situations where battling unfolds automatically.
However, Squires’ order specifically cites two earlier patents – one filed by Konami in 2002, the other by Nintendo in 2019 – both relating to the manual and automatic control of players and sub-characters in a virtual field and in battle. “Therefore,” the order continues, “a reasonable examiner would consider [the patents] to be important in deciding whether the claims are patentable, and [each] raises a substantial new question of patentability.”
Games Fray notes Squires’ order (seemingly the first such re-examination order since 2012) doesn’t automatically mean Nintendo’s patent will be revoked, but it does make it “highly likely” this will occur. Nintendo has two months to respond to the order, and third parties are also able to present their own challenges within that timeframe.
All this follows the Japan Patent Office’s recent decision to reject an application filed by Nintendo in March last year – attempting to patent certain capture and item-throwing mechanics – on the grounds “claimed invention(s)” already existed “in Japan or other foreign countries prior to the filing of the patent application”. The rejection – which isn’t final – was based on documentation provided by an unnamed third-party (believed to be Palworld developer Pocketpair) pointing to instances of similar mechanics existing prior to the filing in games such as Monster Hunter 4, Ark: Survival Evolved, and Pokémon Go.
Nintendo launched its controversial lawsuit against Pocketpair last year following Palworld’s wildly successful launch, accusing the studio of infringing “multiple” patents. In response, Pocketpair vowed to fight the legal action, saying it wanted to ensure small studios could not be “hindered or discouraged from pursuing creative ideas”.
