The director of the United States Patent and Trademark Office has ordered a review of Nintendo’s controversial “summon a character and let it fight” Pokémon patent following massive criticism from intellectual property lawyers.
In September, intellectual property lawyers criticized the U.S. patent system and the USPTO after Nintendo received a patent for Pokémon that involves summoning a character and letting it fight.
Fray Games reported it Patent No. 12,403,397called the ‘397 patent, was granted by the USPTO “without any objection” to Nintendo, embroiled in ongoing litigation with Pocketpair’s Palworld.
While the patent summarizes how Pokémon games work by summoning Pokémon to battle other Pokémon in hopes of adding them to your collection, there are countless other games that operate similar mechanics, such as Persona, Digimon, and even Elden Ring, depending on your interpretation of the patent.
At the time, an intellectual property expert Florian Mueller took to social media stating that Nintendo “should never” have received a patent at all for “summoning a character and letting him fight,” while video game patent lawyer Kirk Sigmon said Computer gamer “these claims were in no way admissible.”
Now, Fray Games reported that Donald Trump’s nominee, John A. Squires, who only became director of the USPTO in September, personally ordered a rehearing after he “determined that significant new patentability issues had arisen” in connection with some of the patent’s claims.
Here is Squires’ description of the claims in question:
‘397 Patent issued for claims relating to controlling the movement of a player character in a field of virtual space, causing a sub-character to appear in the field, controlling battle in a manual mode when an enemy character is present at the location where the sub-character has appeared and when the enemy character is not present at the location where the sub-character has appeared, automatically moving the sub-character, and controlling the battle in an automatic mode when the enemy character is placed in the designated location.
In its order, Squires pointed to two older U.S. patent applications – one filed by Konami in 2002, the other by Nintendo itself in 2019 – as references to “prior art.” Both, Squires said, would be “important in deciding whether the claims are patentable,” and each “raises a new, significant issue of patentability.”
Mueller, writing for Games Fray, said Squires’ order resulted from “public outrage” over the patent grant and concerns about the reputation of the U.S. patent system as a whole. While this reexamination does not constitute an invalidation order, Mueller insisted that it is now “highly likely” that the USPTO will invalidate the Nintendo ‘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 this “further undermines the credibility” of Nintendo’s claims regarding patents for the Pocketpair game.
This is the latest legal blow to Nintendo in its fight against Palworld. Last month, one of Nintendo’s monster capture patents filed last year was rejected by the Japan Patent Office (JPO) for lack of originality. In justifying the refusal, the office referred to older games with similar mechanics that were released before 2021, including ARK (released in 2015), Monster Hunter 4 (2013) or the Japanese browser game Kantai Collection (also 2013). Ironically, Pocketpair’s Craftopia (2020) and Niantic’s Pokémon Go (2016) are among other examples of games that have been used to demonstrate that the patent lacks originality.
The case concerns three main patents awarded by JPO: two related to catching and releasing monsters and one related to horse riding characters. All three patents were filed in 2024, after Palworld was released. However, they actually stem from earlier Nintendo patents dating back to 2021. In other words, it appears that when Palworld arrived on the scene, Nintendo filed divisional patents that were specifically intended to combat Palworld’s alleged infringement of the original patents.
Pocketpair since then made changes to Palworld’s contentious mechanics. The November 2024 update removed the ability to summon Pals by throwing Pokéball-like Pal Spheres (now Pals simply materialize next to you when summoned). In May of this year, another Palworld update changed the way you can glide in the game – instead of grabbing Glider Pals directly, you now simply operate your Pal-enhanced glider equipment. The case gained publicity, even for Nintendo reassignment of an assembly patent midway through a lawsuitand arguing it mods should not be counted as prior art.
So what happens next? Mueller said there may be no further changes this calendar year related to Nintendo’s lawsuit against Pocketpair or its related patents. However, a decision is expected next year. All eyes will be on Presiding Judge Motoyuki Nakashima, who heads the patent division of the Tokyo District Court. “It’s increasingly 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 at Palworld developer Pocketpair. We spoke after his talk at the “Community Management Summit: Palworld Rollercoaster: Surviving the Collapse” conference. During this conversation, Buckley spoke candidly about many of Palworld’s struggles, especially accusations of using generative AI (which Pocketpair debunked quite a bit) and stealing Pokemon models for his buddies (claiming that the person who originally created them backed out). He he even commented a bit about Nintendo’s patent infringement lawsuit against the studio, saying that “it was a shock to the studio” and “something no one had even considered.”
Last month former Capcom game developer Yoshiki Okamoto issued remarks seemingly against Pocketpair and Palworld in legal battlecausing a reaction from the audience. In YouTube video In a post on his channel on September 27, Okamoto stated that Palworld “has crossed a line that should not be crossed, and I do not want the world to become a place where such things are acceptable.”
Photo: Tomohiro Ohsumi/Getty Images.
Wesley is the news director at IGN. Find him on Twitter at @wyp100. Wesley can be reached at wesley_yinpoole@ign.com or confidentially at wyp100@proton.me.
