Nintendo and The Pokemon Company's controversial summoning patent is under scrutiny by the United States Patent and Trademark Office, as its director has ordered a rare re-examination of its validity in a move one IP expert believes "further undermines the credibility" of the companies' legal battle against Palworld.
The patent in question – patent number 12,403,397 – came into the spotlight back in September, as it appeared to describe the idea of summoning a character to fight in battle. More specifically, it refers to "sub characters," and in basic terms describes a system that allows said sub characters to fight either manually or automatically, a bit like in Pokemon Scarlet and Violet (which lets you send your Pokemon out onto the field to attack wild foes independently, and in a different way to you initiating a turn-based fight).
This raised concerns about how many games could be affected depending on how the patent is enforced, like how Nintendo is currently alleging that Palworld developer Pocketpair infringed on a number of its other patents (not this summoning one, mind you).
Now, as spotted and reported by IP expert and former Blizzard consultant Florian Mueller via Games Fray, the USPTO's director, John A. Squires, has apparently issued a new order for an ex parte re-examination of the summoning patent 12,403,397. In the order (shared by Games Fray), Squires points to two other patents as examples of prior art, which in the world of patents is used to determine the validity of a patent by showing evidence that an invention or idea was already public knowledge before a new filing.
In this case, Squires points to a Konami patent published in 2002 and a Nintendo patent published in 2020, both of which mention the idea of sub-characters attacking manually or automatically. Neither of these was "previously made of record in the file" of Nintendo's summoning patent 12,403,397.
Squire continues: "The Examiner's Reasons for Allowance, mailed July 8, 2025, cites the failure of the prior art of record 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,' in support of the issuance of the '397 patent.
"As explained above, each of Yabe and Taura," that is, the Konami and older Nintendo patent, "teaches a player being allowed to perform a battle in a manual mode and in a simpler, automatic mode. Thus, a reasonable examiner would consider each of Yabe and Taura to be important in deciding whether the claims are patentable, and Yabe and Taura each raises a substantial new question of patentability."
So, what happens next? Squires states that the specific claims from the patent that are now questionable are 1, 13, 25, and 26, which are independent claims. Mueller speculates that if these fall apart, the rest of the patent will, too. "This is a house of cards," he writes.
The order doesn't immediately mean that the patent is being revoked, although as Mueller writes, it could lead to that. More broadly, Mueller believes the entire situation undermines Nintendo's credibility in its lawsuit against Pocketpair.
"This development further undermines the credibility of Nintendo's patent assertions against Palworld," Mueller writes. "This is now the second case in as many weeks where a patent or patent application related to the patents Nintendo is asserting against Palworld is viewed skeptically by one of the world's top four patent offices."
Nintendo and The Pokemon Company's legal battle against Pocketpair is still ongoing. As for this ordered reexamination of patent 12,403,397, Nintendo has two months to respond.
