Nintendo grappling with hard choice after U.S. patent office overwhelmingly rejected anti-Palworld patent application

For Nintendo, the whole world is potentially a battlefield. They didn’t even shy away from going after the owner of a small (and more than 50 years old) grocery store in Costa Rica (February 2, 2025 games fray article). In that case, they lost (at least the first round), and games fray actually thinks Nintendo had a point in that trademark dispute. Trademarks are a different type of intellectual property right from patents in many ways.

Nintendo files for more patents than The Pokémon Company, with which it co-owns many patents. In order to look for Pokémon-related patents, it’s most efficient to run a search for patents assigned to The Pokémon Company, such as on a website named Justia (Justia search link). Google Patents is another option, and the United States Patent & Trademark Office (USPTO) obviously also allows users to search for applications as well as granted patents.

Based on its history, U.S. Patent No. 12,179,111 could be a product of Nintendo’s Palworld-oriented patent activity. According to its history, Nintendo filed for it on May 2, 2024 (a few months after Palworld’s launch), and it was granted on December 31, 2024. As we have said on other occasions, “the name of the game is the claim”: the patent claims define the scope of protection. The claims of U.S. Patent No. 12,179,111 relate to ways of capturing a field character.

U.S. Patent No. 12,194,382 looks less interesting. It was granted last month, but the application was filed in 2022, and it is about exchanging items with other players of a game.

On February 11 (i.e., in three days from when this article was written), Nintendo will soon get a U.S. patent with number 12,220,638:

That one is also related to capturing characters. It’s about capturing characters and getting a numerical indication of how likely one is to catch a particular field character.

The application for that one (which was derived from an older one) was filed on July 18, 2024, approximately half a year after Palworld’s launch. So that one is also a patent to watch.

The ‘883 patent application

Now let’s turn to an application where Nintendo has a choice to make: U.S. Patent Application No. 18/652,883. Nintendo filed it on May 2, 2024, a few months after Palworld’s launch. And it covers the smooth switching of riding objects that a Japanese patent attorney does not consider to be implemented by Palworld, at least not in a way that would constitute an infringement. So this is a U.S. patent application that is directly related to a patent Nintendo is actually asserting against Pocketpair.

On December 4, 2024, Nintendo received a notice of “final rejection” from the patent examiner. Now, “final” is not literally final in terms of “end of story”:

• Even if a rejection is declared final, the party applying for the patent can modify the claims and ask for a continuation of the examination.
• It can also appeal the rejection to the Patent Trial and Appeal Board (PTAB), which is like an in-house of the USPTO. And from there, one can theoretically appeal further to the United States Court of Appeals for the Federal Circuit.
• A party can also give up at that point. But Nintendo won’t.

Why is it clear that Nintendo won’t give up? It’s not just about their mentality: even they will abandon patent applications that are not going anywhere. Here, however, the Office action is more nuanced. 22 out of 23 claims are rejected. The last one (which is number 22 of 23), however, is merely “objected to” (don’t be confused as we’ll explain it in a moment):

First, why 23 claims? If one goes to court, the colloquial version is that one sues over a patent. But that is only half-accurate. One actually sues over one more patent claims. A product can even infringe dozens of claims from a single patent. That won’t mean the patentee gets dozens of times more money, but it has other implications. In general, the more claims an accused service or product infringes, the better for the patent holder. One simple reason for which it is good is that even if one or more claims turn out to be invalid, you may still have one or more left that survive. There are many more advantages from having multiple claims, but the others are more difficult to explain.

When the examiner rejects a claim, the claim is not going to be granted unless the patentee’s patent attorneys come up with some new and strong arguments that make the examiner change mind, or they bring and win an appeal. In this case, 22 claims (nos. 1-21 and no. 23) are rejected because they are not considered inventive over the prior art.

When the examiner merely “objects” to a claim, one has to look at what the issue is because it may be easy to fix. What did the examiner say here?

That is a pretty clear instruction: rewrite the claim to make it independent, as the current problem is that it is dependent on a rejected one, and it will (normally, though some risks remain) go through. What does this mean? The terms are underlined, so you can click on our dictionary-style definition, but let’s explain it here. Claim 22 has the following language:

The non-transitory computer-readable storage medium having stored therein the game program according to claim 1 [emphasis added], wherein in association with the player character approaching a ground of the virtual space, while the player character is moving in the air aboard the air boarding character, switching from the air boarding character to the boarding character when a distance between the player character and the ground satisf[ies] a threshold value.

The reference to claim 1 (in bold and italics above) is what makes the claim dependent. It refers to claim 1 and just adds further claim limitations.

You don’t need to read it in detail, but just so you have the context in case you’re interested, here’s what Nintendo’s proposed claim 1 says:

A non-transitory computer-readable storage medium having stored therein a game program causing a computer of an information processing apparatus to provide execution comprising:

controlling a player character in a virtual space based on a first operation input;

in association with selecting, based on a selection operation, a boarding character that the player character can board and providing a boarding instruction, causing the player character to board the boarding character and bringing the player character into a state where the player character can move, wherein the boarding character is selected among a plurality of types of characters that the player character owns;

in association with providing a second operation input when the player character is in the air, causing the player character to board an air boarding character and bringing the player character into a state where the player character can move in the air; and

while the player character is aboard the air boarding character, moving the player character, aboard the air boarding character, in the air based on a third operation input.

So Nintendo can solve the examiner’s problem for claim 22 by

• copying and pasting the entire language of claim 1 and
• adding “wherein in association with the player character approaching a ground of the virtual space, while the player character is moving in the air aboard the air boarding character, switching from the air boarding character to the boarding character when a distance between the player character and the ground satisfies a threshold value.”

Unless the examiner somehow changes mind, the claim would go through. Nintendo would have a patent with only one claim, which is unusual in this field of technology. But they would get it.

It’s been more than two months since that final rejection (which, again, was not a complete rejection because claim 22 just had a curable deficiency). But the USPTO website doesn’t show a reaction by Nintendo yet. They still have about a month (or more if they successfully request an extension).

Why has a company with such vast resources not responded yet? Even with the Holiday Season in between, they could have done so by now.

It’s probably because they face a hard choice:

• If they dropped all the claims that the examiner rejected, and rewrote claim 22 as discussed above (making it an independent claim), they would get that one granted quickly. But then they would have patent with only a single claim.
• Alternatively, they can try to convince the examiner that even some other claims are allowable.
• They may also be thinking about some new claims to introduce at this stage, just so that the claim that is currently claim no. 22 is not going to be all alone.
• The U.S. patent system also allows continuation patent applications, which means that a new application is derived from an earlier one. Sometimes parties that are told by an examiner that one set of claims is rejected and another (which in this case consists of only a single claim) is allowable move out some or all of the rejected claims into a new patent application (a continuation application) so as to make it easy for the examiner to grant the claims that can go through quickly.

We will keep an eye on this patent file and report when something happens.