A blow to Nintendo's controversial Pokemon patent could "embolden some competitors" to fight back against future lawsuits or accusations after the Palworld mess, IP expert says

As Nintendo and The Pokemon Company continue their patent infringement lawsuit against Palworld developer Pocketpair in Japan, the two companies are now seeing a controversial new patent get re-examined in the US, in a move that could potentially have implications on other devs if things don't go Nintendo's way.

Patent 12,403,397 came into the spotlight back in September after concerns were raised regarding the potential impact that it could have on games should Nintendo choose to enforce it, the reason being that it's rather broad, and describes the idea of summoning "sub-characters" to fight manually or automatically in battle – not exactly an uncommon game concept.

The United States Patent and Trademark Office director seems to think this might be the case, too, as he ordered this new re-examination himself, citing two examples of "prior art" which could prove that claims in Nintendo and The Pokemon Company's patent aren't novel enough to be patentable.

I spoke to IP attorney Andrew H. Velzen – a partner at intellectual property law firm MBHB – about this recent development, and asked if he thinks that, if this re-examination leads to any of the 12,403,397 patent's claims being changed or revoked, other Nintendo patents could be more closely scrutinized in the future as a result.

"Whether or not it causes the director to initiate re-exams more often, I think, is unlikely," Velzen begins. "I don't think a director would say, 'Well, this patentee had one questionable patent, so it's open season on their patents.' I don't think that would happen."

That's not to say that the re-examination going against Nintendo couldn't have any wider impact, though. After all, Velzen adds, "third parties can file these re-exam requests. And there are other proceedings at the US Patent Office or in US District Court, where you can seek to have patents invalidated."

With that in mind, he continues, "I think it could embolden some competitors a little bit more to say, like, 'Well, if Nintendo was willing to go broad enough on this patent and it was invalidated, maybe they've done so on other cases. And so maybe we have stronger arguments against the patents than we thought in the first place.'"

However, "all these proceedings cost money," so Velzen reckons "it's unlikely that someone will just sort of start filing these things against Nintendo generally, even if this one goes against Nintendo, because you have to hire an attorney. And so really, unless you're being sued yourself over it, or threatened with being sued by Nintendo, I think the number of challenges won't dramatically increase.

"But, I could see some changes in litigation strategy if Nintendo does threaten to sue a third party, like Pocketpair or anyone else, where they feel like, 'Well, maybe we can take this back to the patent office and have a stronger likelihood of success than we otherwise would have as a result of this previous re-exam.' Again, assuming this goes against Nintendo, which is a big assumption."

Right now, as Velzen says, we can't know for sure what outcome the patent's re-examination will lead to, but per his own analysis of the situation, based on previous outcomes of re-examinations ordered by USPTO directors, the claims in Nintendo's patent may only have a 9.8% chance of making it through the process totally unchanged.

Even Pokemon's former chief legal officer thinks Nintendo's controversial new patent is unenforceable: "I wish Nintendo and Pokemon good luck."