[Guest Post] USPTO Director orders re-examination of video game patent, citing prior art not considered by the Examiner

The IPKat is pleased to share the below guest post from Kat Friend (and this Kat's colleague) Aaron Trebble (Lewis Silkin) on his favourite subject of IP and video games. 

"The Director of the USPTO has last week ordered re-examination of a recently granted US patent in the name of Nintendo Co., Ltd and The Pokémon Company. This power has been exercised on the Director’s own initiative, without any apparent application by a third party.

The story has attracted some interest because it is connected with a high-profile dispute between the patentees and Pocketpair, Inc, which is the developer of a rival video game to the Pokémon series called Palworld. That dispute has been considered in detail elsewhere, but this relatively unusual step taken by the USPTO merits a brief post, as the procedure may be less familiar to IPKat readers and is of broader interest.

Fig. 12 from US patent no. 12,403,397

Under 35 U.S.C. § 303, the USPTO has the power (acting of its own initiative or, more usually, following the application of a third party) to order re-examination of a granted patent based on prior art documents which raise a patentability question substantially different from the questions raised in the patent’s original examination. 

In general terms, this power could add an interesting dynamic to ongoing litigation involving the subject patent. Of course, it is to be expected that a defendant will challenge validity during the course of infringement proceedings. However, readers outside of the US (or at least this GuestKat) may be surprised to learn that the relevant patent office can also instigate re-examination of a granted patent’s novelty or inventiveness without the need for an application.

In that event, a defendant seeking to avoid an injunction will no doubt consider applying for a stay. This Kat Friend understands that a stay will not follow automatically in the US, but that a Court may consider granting one after taking into account relevant factors such as efficiency and timing, and potential prejudice to the parties.

Turning back to this patent, US 12,403,397 B2 relates to a video game mechanic in which the player can summon a non-player “sub character”, which is automatically controlled and can engage enemy characters in automatic battle. The Examiner’s Reasons for Allowance dated 8 July 2025 included that the prior art does not teach that a player can be allowed to perform two types of battles, i.e. in a manual mode and in a simpler second (automatic) mode.

However, the USPTO Director’s order dated 3 November 2025 (first reported here) has identified two US pre-grant publications from 2002 and 2020 known as Yabe and Taura. Yabe’s teachings include a sub character which may attack in either an automatic or manual mode. Taura includes a sub character which may battle in either an automatic or a manual mode, and which automatically follows the main character.

The Director considers that this prior art teaches a player being able to perform in two modes, and that a reasonable examiner would consider them important in deciding whether the claims are patentable, raising a substantial new question of patentability. The patentees have been allowed a period of 2 months in which to respond to the order.

It should be noted that the order (being focused on the prior art question under 35 U.S.C. § 303) does not deal with the patentability of the claimed invention more generally. Readers will no doubt be familiar with the UK and EU focus on the need for a technical effect when protecting software inventions. US practice in this regard typically looks for something more than a well-understood, routine, or conventional concept or abstract idea."

Thanks Aaron!