Pokémon Reexam Receives First Action from USPTO

I have extensively covered the ongoing intellectual property dispute between The Pokémon Company / Nintendo (collectively “Nintendo”) and PocketPair (makers of the 2024 smash hit video game Palworld).[1] In my most recent piece on the subject, I discussed the monumental move of the USPTO Director ordering an Ex Parte Reexamination.[2] As noted in that piece, director-initiated Ex Parte Reexaminations are very rare occurrences at the USPTO, perhaps signaling the USPTO’s acknowledgment of public sentiment about the particular Nintendo patent in question (U.S. Pat. No. 12,403,397).

The Reexam has been assigned U.S. Pat. App. No. 90/020,162 and is being examined by Examiner Jacob C. Coppola. Further, a first Office Action has now issued in the Reexam. Before diving into the substance of the Office Action, though, let’s take a brief look at some statistics. Examiner Coppola has worked at the USPTO for almost 20 years and has a historical allowance rate of around 60.55%.[3] Further, the Nintendo Reexam application has been assigned to Art Unit 3992. Art Unit 3992 is a specialized art unit that deals solely with reexams, and Examiner Coppola has handled at least 210 of them.[4] As indicated in the statistics, and similar to Examiner Coppola, Art Unit 3992 has a three-year grant rate of around 61%.[5] To summarize, Examiner Coppola has copious experience handling reexaminations and, all else being equal, there is roughly a 2/3 chance that at least one claim will be granted when a case is assigned to Examiner Coppola.

As for the present Office Action, the examiner rejected all of the claims that were previously issued in the ‘397 patent as obvious under 35 U.S.C. § 103.[6] For an example of the examiner’s analysis, let’s look at claim 1 of the ‘397 patent, which recites:

1. A non-transitory computer-readable storage medium having stored therein a game program, the game program causing a processor of an information processing apparatus to execute:
   performing control of moving a player character on a field in a virtual space, based on a movement operation input;
   performing control of causing a sub character to appear on the field, based on a first operation input, and
   when an enemy character is placed at a location where the sub character is caused to appear, controlling a battle between the sub character and the enemy character by a first mode in which the battle proceeds based on an operation input, and
   when the enemy character is not placed at the location where the sub character is caused to appear, starting automatic control of automatically moving the sub character that has appeared; and
   performing control of moving the sub character in a predetermined direction on the field, based on a second operation input, and, when the enemy character is placed at a location of a designation, controlling a battle between the sub character and the enemy character by a second mode in which the battle automatically proceeds.

With the exception of the underlined portion, the examiner rejected all of the features in the claim above based solely on a reference assigned to Nintendo (U.S. Pat. App. Pub. No. 2020/0254335). This reference was then combined with either: a reference assigned to Konami (U.S. Pat. App. Pub. No. 2002/0119811) or a second reference assigned to Nintendo (U.S. Pat. App. Pub. No. 2022/0062760) to teach the underlined feature. Notably, the primary Nintendo and the Konami references were both cited by the Director in the original order for Ex Parte Reexam. Further, these combinations were made under the respective rationales that:

1. (For the Konami reference) “One would have been motivated to [combine the first Nintendo reference with the Konami reference] to satisfy a player’s ‘desire to change a target’ and/or ‘desire[] to prioritize elimination of [a particular] opponent [threatening the player character]’ ([as described in the Konami reference])”; or
2. (For the second Nintendo reference) “One would have been motivated to [combine the first Nintendo reference with the second Nintendo reference] in order to allow the player to select a preferred one of the enemies for the sub character to attack, instead of merely the closest enemy to the sub character, thereby improving the player’s satisfaction with control of the sub character.”

Most other claim rejections rely similarly heavily on the first Nintendo reference. However, the examiner also pointed to another piece of prior art (a Bandai Namco reference) in rejecting some of the dependent claims. The first Office Action was mailed on March 25, 2026, meaning that Nintendo has until June 25, 2026 (without taking an extension fee) or September 25, 2026 (with taking extension fee(s)) to respond. I expect Nintendo to respond with some amendments and/or arguments to attempt to overcome the rejection. It will be interesting to see how much, if at all, Nintendo feels it needs to adjust its claims in order to address the examiner’s obviousness rejections.

This ongoing saga continues to be of interest to many in the industry (evidenced by the multiple discussions I had with other attorneys about it last month at the GDC Festival of Gaming). As I have noted before, the value (or lack thereof) that Nintendo’s patent(s) end up having in this dispute may play a significant role in whether the gaming industry begins to more heavily rely on patents for protection going forward. I will continue to monitor this space and share analysis.

[1] See, e.g., https://patentdocs.org/2024/04/30/palworld-friend-or-foe/; https://www.gamesindustry.biz/nintendos-patents-were-designed-to-take-on-palworld; https://www.mbhb.com/intelligence/snippets/what-the-pokemon-companys-patent-applications-are-evolving/; https://patentdocs.org/2025/05/12/pocketpair-provides-post-on-permutations-to-palworld-based-on-pokemon-patents/comment-page-1/; https://www.mbhb.com/intelligence/snippets/what-do-changes-to-palword-mean-for-the-pocketpair-nintendo-ip-dispute/.

[2] See, e.g., https://patentdocs.org/2024/04/30/palworld-friend-or-foe/; https://www.gamesindustry.biz/nintendos-patents-were-designed-to-take-on-palworld; https://www.mbhb.com/intelligence/snippets/what-the-pokemon-companys-patent-applications-are-evolving/; https://patentdocs.org/2025/05/12/pocketpair-provides-post-on-permutations-to-palworld-based-on-pokemon-patents/comment-page-1/; https://www.mbhb.com/intelligence/snippets/what-do-changes-to-palword-mean-for-the-pocketpair-nintendo-ip-dispute/.

[3] Jacob C. Coppola examiner statistics (These statistics are provided by Juristat and are based on published U.S. Patent Applications and issued U.S. Patents. This data was retrieved on April 2, 2026).

[4] Art Unit 3992 statistics (These statistics are provided by PatentBots and are based on published U.S. Patent Applications and issued U.S. Patents. This data was retrieved on April 2, 2026).

[5] The three-year grant rate represents that percentage of applications granted at three years from the first office action (which, in the case of the Nintendo Reexam, issued on March 25, 2026).

[6] Office Action in Ex Parte Reexamination.