For decades, game developers could rely on broad patent protection for gameplay mechanics, but that era may be ending.[1] The U.S. Patent and Trademark Office (USPTO) is actively scrutinizing video game systems, with the Director personally intervening to challenge specific gameplay in the Pokémon series.[2] Nintendo Co., Ltd., The Pokémon Company, and indie developer Pocketpair now find themselves at the center of a global dispute that is shining a light on video game patents.[3] In Japan, Nintendo’s lawsuit against Pocketpair’s Palworld has seen a rejection of its ‘monster capturing’ patent. While in the U.S., the USPTO has initiated re-examination of Nintendo’s auto-battle patent.[4]
Litigation Background
On September 18, 2024, The Pokémon Company and Nintendo Co. Ltd. filed suit in the Tokyo District Court against Pocketpair, the game developer behind Palworld, alleging patent infringement.[5] Nintendo’s Japanese patents at issue cover two main gameplay mechanics: capturing creatures by aiming and throwing an item (like a Poké Ball) and riding creatures that move differently depending on the terrain (land, water, or air).[6]
Although monster-catching is not unique to Pokémon, Palworld faced heightened scrutiny from Nintendo for its artistic and technical similarities.[7] Pocketpair argues that its game materially differs in genre and mechanics from Pokémon, as it is not turn-based and emphasizes survival, crafting, combat, and exploration.[8] Captured creatures, called “Pals,” assist with base tasks and traversal rather than serving solely as combat units. Palworld also has no separate gameplay “modes,” automatically assigns capture and combat actions based on context rather than requiring category group selection, and cannot seamlessly switch between rideable characters as the other patents describe.[9]Nevertheless, Pocketpair proactively modified Palworld to mitigate risk (i.e., removing “Pal Sphere” captures and altering gliding mechanics).[10]
At the same time, the Japan Patent Office has rejected Nintendo’s Japanese Patent Application 2024-031879 for lacking an inventive step, finding that prior games such as ARK, Monster Hunter 4, Craftopia, Kantai Collection, and Pokémon GO already disclosed similar mechanics, making the claimed techniques obvious.[11] Filed by Nintendo as part of its ‘monster capture’ patent family, this application covers a game mechanic where a player throws a pod containing a battle character to attack an enemy, and the enemy can be paralyzed. Although the pending application is not being litigated against Palworld, its rejection arguably weakens the related patents in the same family that are being litigated.[12] This rejection thus raises doubts about the novelty of the two other patents Nintendo is asserting in court.
USPTO Oversight and Director Authority
The USPTO’s increased policy actions signify a deliberate move to give the Director greater control.[13] The Director has broad statutory authority under 37 C.F.R. § 1.520 to initiate ex parte reexaminations without a third-party request, allowing review of granted patents when prior art or patentability issues arise. This action is rare and only undertaken in compelling circumstances, after review of all relevant facts and prior art.[14]
On November 3, 2025, Director John A. Squires personally ordered reexamination of U.S. Patent No. 12,403,397, which covers Nintendo’s game system where players control a main character and summon a sub-character, with battles switching between manual control when enemies are nearby and automatic control when none are present.[15] The Director identified two prior art references—Konami’s 2002 Yabe patent and Nintendo’s own 2020 Taura patent—as raising “substantial new questions of patentability” regarding the ‘397 Patent, even though the initial examiner cited no prior art as a reason for allowance.[16] These references specifically relate to independent claims 1, 13, 25, and 26 of the patent.[17] Proponents say this directive reinforces the integrity of the patent system and supports earlier criticism of the patent’s approval.[18] Such remedies, however, remain rare; the last confirmed order of this kind occurred back in 2012.[19]
Reexamination and Validity of U.S. Patent
Some video game industry critics condemned the decision to grant Nintendo’s ‘summoning’ patent as an abuse of the system, arguing that its unusually fast approval reflects lenient examination and that its broad claims protect basic, long-established gameplay mechanics.[20] One commentator observed, “This Nintendo patent was apparently granted without a patent examiner looking at a single game.”[21]
As noted above, the Director ordered a reexamination, citing two instances of prior art. The Yabe patent covers a gaming system where multiple characters can be controlled manually or automatically, and can switch modes, with automated actions often targeting nearby NPCs.[22] The Taura patent covers a gaming system where a main character and a sub-character can be controlled in three modes: main character only, sub-character automatic, or both characters under player control, with switching and parameter management.[23] Both references teach dual battle modes (manual and automatic), potentially undermining Nintendo’s ‘397 Patent claims and raising substantial questions about novelty and non-obviousness.[24]
A patent is invalid “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious … to a person having ordinary skill in the art.”[25] Obviousness is a legal question and requires evaluating the scope of prior art, differences from the claimed invention, the skill level of the artisan, and objective indicia such as commercial success or long-felt need.[26] Applying this framework, both Yabe and Taura disclose dual or multiple control modes that substantially overlap with the ’397 Patent. The ’397 Patent includes conditional automatic behavior triggered by enemy presence, but these incremental differences may be insufficient to overcome obviousness, given decades of similar gameplay. Since a “patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention[,]” even one reference could render the ’397 Patent invalid.[27]
Since the 2014 Supreme Court decision in Alice v. CLS Bank, video game patents are evaluated under a two-step framework: first, whether claims are directed to an abstract idea, and second, whether they include an inventive concept that transforms the idea into patent-eligible subject matter.[28] Courts have consistently found that patents claiming only gameplay rules or conventional game mechanics fail this test.[29] RecogniCorp, Smith, Guldenaar, and iLife illustrate this trend, where patents covering abstract data manipulation for reconstructing avatars, standard card or dice game rules, or basic player input processing were held ineligible.[30] By contrast, patents that address technical problems unique to computing or software, such as McRO’s automated facial animation or PalTalk’s method for reducing network latency in multiplayer games, have passed Alice’s step one and been deemed patent eligible.[31]
The ’397 Patent primarily covers Pokémon gameplay mechanics rather than any technological improvement to computer functionality. Its implementation relies on conventional programming and standard input/output operations, unlike McRO or PalTalk. However, one could argue that it offers a concrete technical solution by using unique rules, interactions, or algorithms to manage in-game mechanics, and that the combination of these elements, even if implemented with standard programming, constitutes an inventive concept. Nonetheless, because the patent merely describes abstract rules for gameplay, it likely fails step one as being directed to an abstract idea.
Considering both § 103 (obviousness) and § 101 (subject-matter eligibility), the Director’s reexamination could likely invalidate the ’397 Patent. Prior art undermines its novelty and creates substantial obviousness concerns, while step one of the Alice test raises questions about its subject-matter eligibility. Together, these factors suggest a significant risk that the ’397 Patent could be declared invalid and unenforceable.
Implications for the Industry
At issue are Nintendo’s patents on Pokémon gameplay mechanics in both the U.S. and Japan. These patents seem overly broad, and may be invalid due to prior art and obviousness. If upheld, they could threaten creative freedom in the video game industry.
While critics argue that Nintendo’s patents are too expansive, opinions differ on the company’s motives.[32] Some suggest Nintendo is legitimately protecting its market dominance and brand identity, while others speculate the lawsuit may serve as a public relations move to uphold its image as an innovator. Leaked details of an upcoming Pokémon game featuring mechanics similar to Palworld have amplified this view, as the company sues over gameplay it appears poised to replicate.[33] Others argue that Palworld “crossed a line” by incorporating gameplay elements that are too similar to Nintendo’s patented systems.[34]
Broad patents help large companies like Nintendo protect market control, but overly expansive ones can restrict developers with high compliance costs.[35] The USPTO’s rare, Director-initiated reexamination signals closer scrutiny of such patents.[36] Alternative protections such as copyright for code and expression, design patents for aesthetics, and narrowly tailored utility patents for true innovations offer a balanced way to protect creativity while allowing developers freedom to experiment without overbroad patent constraints.[37]
In Japan, Pocketpair’s defense is twofold: (1) the patents are invalid due to prior art, and (2) Palworld does not infringe, as its mechanics differ from Nintendo’s patented systems.[38] The company has vowed to “continue to dispute” the claims and challenge the patents’ validity, while making limited compromises to avoid disrupting Palworld’s development.[39]
Nintendo’s broad gameplay patents, like those covering Pokémon mechanics, represent patent overreach that may threaten creative freedom in the gaming industry. The USPTO’s rare decision to reexamine these patents marks a necessary correction toward narrower, innovation-focused protection.
Katelyn Kohler is a graduate of Suffolk University Law School in Boston, specializing in Sports & Entertainment, Intellectual Property, and Labor & Employment Law. She holds dual degrees from Ithaca College in Business Administration: Sports Management and Legal Studies.
[1] See Lucy Hanson, Playing the Patent Game: Protecting Video Game Mechanics as Intellectual Property, 2025 B.C. Intell. Prop. & Tech. F. 1, 8–9 (discussing that over the past thirty years, game companies have successfully filed and been granted game mechanic patents); Nicole Carpenter, What Does Nintendo’s Recent Pokémon Patent Actually Mean for Game Developers?, Game Developer (Sept. 25 2025), https://www.gamedeveloper.com/business/what-does-nintendo-s-new-pok-mon-patent-actually-mean-for-game-developers- (quoting Haley McLean, video game lawyer, on USPTO being behind on the curve in gaming patents); Erik Paul Belt & George Blazeski, Pokémon, Gotta Patent Them All? New Nintendo Patent Turns a Lot of Heads, INTELLECTUAL PROPERTY ALERT, McCarter & English (Sept. 22, 2025), https://www.mccarter.com/insights/articles/pokemon-gotta-patent-them-all-new-nintendo-patent (noting that Nintendo’s U.S. Patent No. 12,403,397 was allowed immediately after initial examination, avoiding typical PTO rejections for prior art, technical deficiencies, and subject-matter eligibility issues that most software-based applicants must navigate). U.S. courts have seldom challenged game mechanic patents, and limited litigation also reflects some companies’ decisions not to enforce them. See Hanson, supra at 8.
[2] See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223–24 (2014) (holding that an intermediated financial settlement was not patentable merely because it was performed on a computer); see also Director‑Initiated Order for Ex Parte Reexamination of U.S. Patent No. 12,403,397 (Nov. 3, 2025) (specifying that independent claims 1, 13, 25, and 26 of Nintendo’s auto-battle gameplay patent are under a rare Director Initiated Order for Ex Parte reexamination)
https://gamesfray.com/wp-content/uploads/2025/11/25-11-03-Director-Initiated-Order-for-Ex-Parte-Reexamination-397-Patent.pdf. The U.S. Supreme Court narrowed software patent eligibility under 35 U.S.C. § 101 using the two-prong Alice test. See Alice Corp. Pty. Ltd., 573 U.S. 208, 217–18 (2014) (establishing a two-step test to determine whether a software claim is directed to an abstract idea and, if so, whether it contains an “inventive concept” sufficient to transform it into patent-eligible subject matter).
[3] See Nintendo Co., Ltd., Filing Lawsuit for Infringement of Patent Rights against Pocketpair, Inc., Nintendo (Sept. 19, 2024), https://www.nintendo.co.jp/corporate/release/en/2024/240919.html; Pocketpair, Regarding the Lawsuit, Changes to Palworld and the Future, Palworld (May 8, 2025), https://www.pocketpair.jp/news/20250508.
[4] See Florian Mueller, Japan Patent Office rejects Nintendo application relevant to Palworld dispute, cites games like ARK as prior art after third-party submission, Games Fray (Oct. 29, 2025), https://gamesfray.com/japan-patent-office-rejects-nintendo-application-relevant-to-palworld-dispute-cites-games-like-ark-as-prior-art-after-third-party-submission (reporting rejection of Nintendo’s patent application 2024-031879 which is part of Nintendo’s “monster capture” patent family used against Palworld); Florian Mueller, HUGE blow to Nintendo: head of U.S. patent office orders reexamination of “summon subcharacter and let it fight” patent, Games Fray (Nov. 4, 2025), https://gamesfray.com/huge-blow-for-nintendo-head-of-u-s-patent-office-takes-rare-step-to-order-reexamination-of-summon-subcharacter-and-let-it-fight-in-1-of-2-modes-patent/ (reporting on re-examination of Nintendo’s U.S. Patent No. 12,403,397, which covers the gameplay mechanic of “summon a subcharacter and let it fight in one of two battle modes.”).
[5] See Nintendo Co., Ltd., supra note 3.
[6] See Dominik Bošnjak, Nintendo vs. Palworld: The Patent War Threatening Indie Gaming, Spilled (Jul. 30, 2025), https://spilled.gg/nintendo-vs-palworld/. Nintendo’s patents cover creature capture and riding mechanics: JP 7545191 B1 (aiming, throwing, RNG success, visual indicators), JP 7493117 B2 (collision detection and capture triggers), and JP 7528390 B2 (riding creatures across land, water, and air, including mid-air mount switching). Id.
[7] See Hanson, supra note 1 at n. 69 (citing various sources investigating similarities between the two franchises); Verity Townsend, Former Capcom Designer Yoshiki Okamoto Sparks Backlash in Japan by Saying Palworld Has ‘Crossed a Line That Should Not Be Crossed’, IGN (Oct. 1, 2025, 9:06 AM), https://www.ign.com/articles/former-capcom-designer-yoshiki-okamoto-sparks-backlash-in-japan-by-saying-palworld-has-crossed-a-line-that-should-not-be-crossed (reporting on former Capcom developer Yoshiki Okamoto criticizing Palworld as “crossing a line” and supporting settlement).
[8] See Bošnjak, supra note 6(describing gameplay differences).
[9] See Florian Mueller, Pocketpair’s Defenses Against Nintendo’s Patent Lawsuit Unpacked: ARK, Craftopia, Zelda, FF14 etc. May Render Asserted Patents Invalid, Games Fray (Apr. 18, 2025), https://gamesfray.com/pocketpairs-defenses-against-nintendos-patent-lawsuit-unpacked-ark-craftopia-zelda-ff14-etc-may-render-asserted-patents-invalid/.
[10] See Pocketpair, supra note 3 (describing game updates in response to litigation).
[11] See Florian Mueller, Japan Patent Office rejects Nintendo application relevant to Palworld dispute, cites games like ARK as prior art after third-party submission, supra note 4 (citing Japanese Patent Application No. 2024-031879 Notice of Reasons for Refusal). The adoption of well-known techniques (like reducing a gauge by defeating an enemy or using a predetermined item to influence battle outcomes) is thus considered a design choice or obvious rather than an inventive step. See id.
[12] See id. (“An issue facing a central member of a patent family is often indicative of validity problems facing other members[sic].”).
[13] See Dani Kass, Squires’ First Orders Reject PTAB Petitions En Masse, Law360 (Nov. 3, 2025, 9:46 PM EST), https://www.law360.com/articles/2406907/squires-first-orders-reject-ptab-petitions-en-masse (reporting USPTO Director John Squires rejected 13 IPR petitions via “summary notices,” expanding discretionary control over which cases reach the PTAB); Dion M. Bregman et al., USPTO Proposes New Institution Rules and Director Takes Over Merits-Based Institution Decisions, Morgan Lewis (Oct. 23, 2025), https://www.morganlewis.com/pubs/2025/10/uspto-proposes-new-institution-rules-and-director-takes-over-merits-based-institution-decisions (illustrating USPTO policy shifts as Director Squires consolidates IPR authority and expands discretionary power). Critics argue it concentrates authority in one executive, but the USPTO frames it as improving accountability and statutory alignment. See Bregmen, supra.
[14] See U.S. Patent & Trademark Office, 37 C.F.R. § 1.520, Reexamination Ordered at the Director’s Initiative (R-07.2022).
[15] See e.g., Director‑Initiated Order for Ex Parte Reexamination of U.S. Patent No. 12,403,397, supra note 2; HUGE blow to Nintendo: head of U.S. patent office orders reexamination of “summon subcharacter and let it fight” patent, supra note 4; U.S. Patent No. 12,403,397 B2, Storage Medium, Information Processing System, Information Processing Apparatus, and Game Processing Method (issued Sept. 2, 2025) (describing patent).
[16] See Director‑Initiated Order for Ex Parte Reexamination of U.S. Patent No. 12,403,397, supra note 2; U.S. Patent App. No. 2002/0119811 A1, Video Game Machine, Player Character Action Control Method, and Video Game Program (issued June 1, 2004) (describing Konami/Yabe patent); U.S. Patent No. 11,278,795 B2, Storage Medium, Information Processing System, Information Processing Apparatus, and Game Controlling Method (issued Mar. 22, 2022) (describing Nintendo/Taura patent).
[17] See Director‑Initiated Order for Ex Parte Reexamination of U.S. Patent No. 12,403,397, supra note 2. The patent claims a system, method, or program for controlling a player character and a sub-character in a video game, with two modes of battle depending on enemy presence. See id. All independent claims (1, 13, 25, 26) cover essentially the same mechanics in different forms (storage medium, system, apparatus, method). See id.
[18] See HUGE blow to Nintendo: head of U.S. patent office orders reexamination of “summon subcharacter and let it fight” patent, supra note 4 (“The only plausible explanation is that the USPTO’s leadership became aware of all the negative publicity surrounding the grant of the ‘397 patent and wanted to correct this mistake. No system is perfect, which is why there must be processes in place to fix issues. That is what the USPTO is demonstrating.”); Kallie Plagge, No, Nintendo and Pokémon did not patent ‘summoning characters and making them battle’, The Verge (Sept. 17, 2025), https://www.theverge.com/games/779062/nintendo-pokemon-summoning-battle-patent (arguing patent’s auto-battle system resembles ordinary command hierarchies and could theoretically restrict game mechanics for other developers); Vikki Blake & Wesley Yin-Poole, Nintendo Should Never Have Received Controversial ‘Summon Character and Let It Fight’ Pokémon Patent, IP Lawyers Say, IGN (Sept. 11, 2025), https://www.ign.com/articles/nintendo-should-never-have-received-controversial-summon-character-and-let-it-fight-pokmon-patent-ip-lawyers-say (criticizing broad scope of patent); Carpenter, supra note 1 (noting patent was approved quickly, avoiding common obstacles like prior art or software eligibility issues); Florian Mueller, Nintendo’s summoning patent: Windows Central, PC Gamer got right what The Verge and a law prof got wrong, Games Fray (Sept. 20, 2025) https://gamesfray.com/nintendos-summoning-patent-windows-central-pc-gamer-got-right-what-the-verge-and-a-law-prof-got-wrong-and-lets-look-at-a-50-year-old-game/ (stating patent’s novelty is questionable, as it builds on decades-old game concepts). Claim 1 of the patent broadly covers switching between two battle modes without specifying implementation, potentially threatening many games where player characters summon sub-characters. See Nintendo’s summoning patent: Windows Central, PC Gamer got right what The Verge and a law prof got wrong, surpa.
[19] See HUGE blow to Nintendo: head of U.S. patent office orders reexamination of “summon subcharacter and let it fight” patent, supra note 4 (stating last Directed Initiated Order was over a decade ago).
[20] See Belt & Blazeski, supra note 1(discussing fast process); Vikki Blake & Wesley Yin-Poole, supra note 18.
[21] See Nintendo’s summoning patent: Windows Central, PC Gamer got right what The Verge and a law prof got wrong, surpa note 18. (quoting Florian Mueller).
[22] See U.S. Patent No. 6,743,099 B2 (filed Jan. 29, 2002) (issued June 1, 2004).
[23] See U.S. Patent No. 11,278,795 B2 (filed Dec. 12, 2019) (issued Mar. 22, 2022).
[24] See U.S. Patent No. 12,403,397 B2 (filed Mar. 1, 2023) (issued Sept. 2, 2025) (invented by Shigeru Ohmori, assigned to Nintendo Co., Ltd. and The Pokémon Company).
[25] 35 U.S.C. § 103(a); Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
[26] Game & Tech. Co. v. Activision Blizzard Inc., 926 F.3d 1370, 1379–80 (Fed. Cir. 2019). Courts also assess whether a skilled artisan would have been motivated to combine prior art with a reasonable expectation of success. In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016).
[27] See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016);
[28] 35 U.S.C. § 101; Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)
[29] See Forrest A. Jones, Y. Leon Lin & Kevin D. Rodkey, Playing to Win: The Post-Alice Video Game Patent Landscape, Law360 (Mar. 3, 2020), https://www.finnegan.com/en/insights/articles/playing-to-win-the-post-alice-video-game-patent-landscape.html.
[30] See id.; see also RecogniCorp LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017); In re Smith, 815 F.3d 816 (Fed. Cir. 2016); n re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018); iLife Technologies Inc. v. Nintendo of Am. Inc., 2020 U.S. Dist. LEXIS 10018 (N.D. Tex. Jan. 17, 2020).
[31] See Jones, et al, supra note 25; see also McRO Inc. v. Bandai Namco Games Am., Inc, 837 F.3d 1299 (Fed. Cir. 2016); PalTalk Holdings, Inc. v. Riot Games, Inc., No. 16-1240-SLR, 2017 U.S. Dist. LEXIS 73181 (D. Del. May 15, 2017).
[32] See supra footnote 18 (discussing broad and speed of original patent grant).
[33] See Florian Mueller, Leaks of Upcoming Nintendo Title Call Motives Behind Palworld Patent Suit Into Question: Attempt to Create Reality Distortion Field?, Games Fray (Oct. 14, 2025), https://www.gamesfray.com/nintendo-palworld-patent-suit-leaks. (noting that leaked Pokémon game mechanics similar to Palworld have raised questions about Nintendo’s lawsuit motivations).
[34] See Verity Townsend, Former Capcom Designer Yoshiki Okamoto Sparks Backlash in Japan by Saying Palworld Has ‘Crossed a Line That Should Not Be Crossed’, IGN (Oct. 1, 2025, 9:06 AM), https://www.ign.com/articles/former-capcom-designer-yoshiki-okamoto-sparks-backlash-in-japan-by-saying-palworld-has-crossed-a-line-that-should-not-be-crossed. Former Capcom developer Yoshiki Okamoto sparked controversy in Japan after criticizing Pocketpair’s Palworld in a YouTube video, calling the game unacceptable while Nintendo’s patent lawsuit against Palworld was ongoing. Id. Okamoto labeled Palworld as having “crossed a line” and implied it could be considered an “anti-social force,” prompting backlash from viewers who cited his own history of borrowing game mechanics in titles like Street Fighter 2 and Monster Strike. Id.
[35] See Hanson, supra note 1 at 12-15 (discussing how broad game mechanic patents allow large developers like Nintendo to protect market share and brand identity, while smaller developers face high compliance costs and legal barriers); Kallie Plagge, supra note 18 (noting that broad software patents can disproportionately burden indie studios).
[36] See e.g., Carpenter, supra note 1 (noting while the patent is granted, its validity is uncertain, as it could be challenged as an abstract idea rather than a novel software invention); Kallie Plagge, supra note 18 (noting patent could be challenged on anticipation, obviousness, or subject-matter eligibility); Vikki Blake & Wesley Yin-Poole, supra note 18; see also Director‑Initiated Order for Ex Parte Reexamination of U.S. Patent No. 12,403,397, supra note 2.
[37] See Hanson, supra note 1 at 19-21 (explaining how copyright and design patents can limit broad patent issues, reduce litigation costs, and allow smaller developers more freedom to innovate).
[38] See Dominik Bošnjak, supra note 6.
[39] See Pocketpair, supra note 3.
