The United States Patent and Trade Office (USPTO) has revoked a patent it granted Nintendo last year, based on a gameplay mechanic used in other games.
Last September, Nintendo was granted a US patent which covered the action of summoning another character and making them battle on the player’s behalf.
Two months later USPTO director John A Squires personally ordered a re-examination of the patent – the first time since 2012 that a USPTO director had personally done so without another company officially getting involved – citing previous patents which might have made it invalid.
Now, as reported by Games Fray, the USPTO has decided to ‘reject’ all 26 claims made in the patent, meaning it has now been revoked.
This is a non-final decision – Nintendo how has two months to respond, or longer if it asks for an extension, and there can be an appeal made to the Federal Circuit if it doesn’t agree with the decision.
Nintendo’s patent involved summoning other characters and making them fight for the player, the most obvious real-world example being a Pokémon game where a player can summon Pokémon and use them to battle other Pokémon.
When ordering the re-examination of the patent, Squires specifically focused on the patent’s claim to having a sub-character fight alongside you with the option to make them fight either automatically or via manual control.
In his order, Squires said he had “determined that substantial new questions of patentability have arisen” based on the publications of two previous patents, named as Yabe and Taura (based on the inventors credited on the patents).
The Yabe patent was granted in 2002 to Konami, and refers to a sub-character fighting alongside the player either automatically or manually, while the Taura patent was granted in 2020 to Nintendo itself, and also refers to a sub-character who battles alongside the player.
The USPTO’s decision to reject the patent also cites two more previous patents – another patent named Motokura which was granted to Nintendo in 2022, and a patent called Shimomoto which was granted in 2020 to Bandai Namco.
According to the USPTO, if Nintendo’s Taura patent is combined with either its Motokua patent or Konami’s Yabe patent, it makes 18 of the 26 claims in the new patent invalid. By also combining Bandai Namco’s Shimomoto patent, this provides the “missing link” which makes the other eight claims invalid.
Games Fray reports that even if one claim is valid Nintendo can still use it to sue patent infringers (albeit with a smaller scope), and so the fact it can now appeal the decision means it may attempt to salvage at least some of the claims.
One potential argument it could make, according to the publication, is that because the USPTO’s decision was not required to actually look at any real-world cases of video games to come to its decision, Nintendo could claim that a developer wouldn’t combine the ideas found in the other patents in real life.
Following the news in September that Nintendo had been granted, concerns spread online that it could lead to a number of lawsuits in which Nintendo sues any other company that tries to implement a summoning mechanic in its game, putting future titles in series like Persona at risk.
However, whereas trademark law says that a company could lose its trademark if it doesn’t challenge any infringements, this isn’t the case with patents.
While Nintendo was attempting to patent this mechanic – and indeed, according to the USPTO director’s order, it’s seemingly already had a similar patent since 2020 – it can choose not to pursue any other company that decides to use it, and only do so when it feels its own IP is being threatened, as was the case with Palworld.
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