Taking aim at Palworld Mobile: Nintendo trying to obtain touchscreen-specific patent on monster capturing — and thus far failing

Hyperlinked (thus underlined) words point to our IP dictionary unless they specify an article or website.

Patent family tree

The following chart shows the new application in the bottom right corner with a red frame, and the two patents from the same family that Nintendo is already asserting against the PC and console versions of Palworld (February 6, 2025 games fray article) inside medium blue frames:

Starting from the original application at the top of the tree, Nintendo filed divisional applications, as well as divisionals of divisionals. The new application is a divisional of a divisional of a divisional. And all of them can (try to) claim back priority to the original application, meaning that only published and publicly shown material older than the original application, with its December 2021 priority date, constitutes prior art. We explained that concept in a January 23, 2025 games fray article.

In family terms, the ‘191 patent-in-suit is a sibling of the new application, and the ‘117 patent-in-suit’s parent is the new application’s grandparent (application number 2023-204842).

The new application’s claim language

The name of the game is the claim. What Nintendo is fighting for is new claims. It is not about the description or the drawings (over which one cannot sue, and which Nintendo can’t change now without having to start all over again in terms of the priority date). It’s about the claims. They define the scope of the patent.

In almost every patent, claim 1 is the broadest one. This is the language of claim 1 of the new application, with the letters and numbers added by the patent examiner for easier reference and the term “touch panel” highlighted only in this article:

(A) A game program executed by a computer of a information processing apparatus equipped with a touch panel,

(B) causing the computer to control movement of a player character in a field in a virtual space

• (B1) based on an operation input including a touch operation on the touch panel,
• (B2) causing the player character to use a capture item for capturing a field character disposed in the field,
• (B3) causing a battle character, which is a character owned by the player and performs a battle with the field character, to appear in the field,
• (B4) displaying a command instruction image of a plurality of commands including at least an attack command and an item command during a battle with the field character in the field, and controlling by command selection by an operation input using the touch panel,

(C) when the capture item is used by the item command during a battle and when the capture item is used in a non-battle state, a capture success determination is made, and when the capture success determination is affirmative, the field character is captured and set to a state owned by the player.

The above is simply a general monster-catching rule set. There is nothing technologically innovative about it, and that’s what the patent examiner has figured out (as discussed in the next section).

Lack of inventive step

Patent applications must various requirements, some of which are formal and some of which are substantive. With respect to how a new application differentiates itself from the prior art, there are two levels:

• novelty (meaning that there is no single publication or other public material that already showed each and every thing found in the new application) and, if the novelty hurdle has been surmounted,
• inventive step (called “nonobviousness” in the U.S.), which means that even if two or more prior art references are combined (or one or more with common general knowledge), one would not arrive at the entirety of the elements of the new invention or, which is far more common, one could get there by combining multiple prior art references, but a person having ordinary skill in the (relevant) art would not routinely combine those pre-existing concepts (for lack of a suggestion or motivation, such as one patent application mentioning something that one could then find by way of a simple keyword search).

Here, the JPO examiner did not find something that would render Nintendo’s new application non-novel, but determined that there was no inventive step needed to simply combine previously known techniques.

Here are some quotes from the rejection notice that are pretty damning:

“As illustrated by the examples above, the specification whereby, while an allied Pokémon is battling an opposing Pokémon, a Monster Ball can be thrown to capture the opposing Pokémon is well-known art in games featuring Pokémon.

Therefore, in the cited invention, by introducing a specification whereby a Monster Ball can be thrown to capture an opposing Pokémon not only in a non-battle state but also during battle, thereby providing the configuration relating to Difference 2, this would have been easily achievable by a person skilled in the art who was aware of the well-known art.”

“The cited document 4 referred to in (2) above states: ‘When you throw a Monster Ball at a Pokémon, the ball shakes for a while… if the shaking stops, the capture is successful! Watching the shaking ball is a thrilling moment!’ and ‘But sometimes, the Pokémon jumps out of the Monster Ball, and the capture fails.’ Similarly, cited document etc. 5 discloses that there are cases where throwing a Monster Ball results in a successful capture (1:48–2:00) and cases where it results in failure (0:58–1:09).

As illustrated by the examples above, the specification whereby, when a Monster Ball is used, success or failure is determined, and the Pokémon can be captured only if the result is success, is well-known art in games featuring Pokémon.

Therefore, in the cited invention, by introducing a specification whereby, when the Monster Ball thrown by Satoshi hits the Pokémon, success or failure is determined, and the Pokémon can be captured only if the result is success, thereby providing the configuration relating to Difference 3, this would have been easily achievable by a person skilled in the art who was aware of the well-known art.”

Prior art cited by the examiner

This is a machine translation provided by the JPO itself:

1. Pokemon Generations – 3D indie Pokemon Gameplay,YouTube [online] ,2013 Year 06 / 01, [retrieved on April 21, 2026], <https://www.youtube.com/watch?v=9TznS7pE-T8>
2. What is the difference between the popular survival action ” ARK: Survival Evolved ” and the smartphone version ” ARK mobile “? Play video is also released!, Famitsu App [online] ,2018 , April 04, 04, [searched on April 21, 2026], <https://app.famitsu.com/20180404_1271567 /> (document showing well-known art)
3. The smartphone version of ” PUBG MOBILE ” will start service from today, May 16! The number of pre-registrations exceeds 1.3 million, Famitsu. com [online] ,2018 , April 16, 05, [searched on April 21, 2026], <https://www.famitsu.com/news/201805/16157378.html > (document showing well-known art)
4. Let’s catch Pokemon and make them friends!, Pocket Monster XY official site [online],2013 , April 09, 07, [searched on April 21, 2026], <https://web.archive.org/web/20130709010304/https://www.pokemon.co.jp/ex/xy/about/04.html > (documents showing well-known techniques)
5. Jigade was captured with four 5.Pokemon Y Pokemon Y hyperballs, YouTube [online] ,2013 , October 18, 2026, [retrieved on April 21, 2013], <https://www.youtube.com/watch?v=8OIA_FbgMBM > (document showing well-known art)
6. JP 2007-312930A (Document showing well-known art)
7. JP 2013-70869A (Document showing well-known art)
8. What can be picked up by picking up things, Pocket monster X and Y capture information summary wiki [online],2014 , April 17, 02, [retrieved on April 21, 2026], <https://w.atwiki.jp/pokemonxy/pages/34.html > (document showing well-known technique)

Some of the prior art is indeed Nintendo’s own stuff that was put out in public before the priority date of the new application.

Next steps

The rejection was communicated on April 24, 2026. Nintendo could abandon the application now, but Nintendo being Nintendo, they are more likely to try to persuade the examiner to arrive at a different conclusion, even though the reasons for the rejection are strong. In many patent examination processes, the initial rejection is essentially just an invitation to present one’s best arguments. Here, however, the rejection notice is so well-reasoned that it will be an uphill battle for Nintendo.

Palworld Mobile is slated for a 2026 launch, though the month has not been specified. In the meantime, it appears that Nintendo’s patent attorneys will be scrambling to obtain a patent they could assert against Palworld Mobile. But the April 24 rejection notice was a major setback.