US patent office director orders re-examination of Nintendo’s patent on summoning characters to make them battle

The director of the United States Patent and Trademark Office (USPTO) has ordered a rare patent re-examination, after Nintendo acquired a US patent on a gameplay mechanic used in other games.

In September, Nintendo was granted a US patent which covers the action of summoning another character and making them battle on the player’s behalf.

The most obvious example of this patent in action is a Pokémon game, where a player can summon Pokémon and use them to battle other Pokémon on their behalf.

However, as reported by Games Fray, USPTO director John A Squires has personally ordered a re-examination of the patent, citing previous patents which might make it invalid.

Specifically, Squires has focused on the patent’s claim to having a sub-character fight alongside you with the option to make them fight either automatically or via manual control.

In his order, Squires said he had “determined that substantial new questions of patentability have arisen” based on the publications of two previous patents, named as Yabe and Taura.

The Yabe patent was granted in 2002 to Konami, and refers to a sub-character fighting alongside the player either automatically or manually, while the Taura patent was granted in 2020 to Nintendo itself, and also refers to a sub-character who battles alongside the player.

Squires says the patent examiner’s reasoning for allowing Nintendo’s 2025 patent “cites the failure of the prior art of record” – meaning there was no previous related patent – “to teach that ‘a player can be allowed to perform two types of battles, that is, a battle by the first mode in which the player performs an operation input and a battle by the simpler second mode'”.

However, because “each of Yabe and Taura teaches a player being allowed to perform a battle in a manual mode and in a simpler, automatic mode”, Squires says “a reasonable examiner would consider each of Yabe and Taura to be important in deciding whether the claims are patentable”, adding that “each raises a substantial new question of patentability”.

Games Fray claims that it’s very rare for a USPTO director to personally take the initiative to order a patent re-examination without another company getting involved. The site claims the last time this happened was in 2012.

Following the news in September that Nintendo had been granted, concerns spread online that it could lead to a number of lawsuits in which Nintendo sues any other company that tries to implement a summoning mechanic in its game, putting future titles in series like Persona at risk.

However, whereas trademark law says that a company could lose its trademark if it doesn’t challenge any infringements, this isn’t the case with patents. While Nintendo was attempting to patent this mechanic – and indeed, according to the USPTO director’s order, it’s seemingly already had a similar one since 2020 – it can choose not to pursue any other company that decides to use it, and only do so when it feels its own IP is being threatened.

This was the case with Palworld. Nintendo and The Pokémon Company filed a lawsuit against developer Pocketpair in Japan last year, alleging that Palworld infringes on three patents that are related to monster catching gameplay, including summoning Pals by throwing Pal Spheres, and using Pals as vehicles like gliders.

Last week Nintendo was denied a patent in Japan for a capturing mechanic similar to that seen in some Pokémon games, with the Japan Patent Office citing examples of games like Ark, Craftopia, Monster Hunter 4 and Pokémon Go, which have mechanics which could fall under the descriptions in the application, suggesting those ideas already existed.