Nintendo Patent’s Surprise Review Signals a US Priority Shift

US Patent and Trademark Office Director John Squires is on a mission to weed out erroneously granted patents—and he’s trying to “catch ’em all.”

The fact that he initiated a review of one of Nintendo Co.’s newest patents signals that the PTO is prioritizing public trust and consistency across global patent jurisdictions.

Nintendo is suing Pocketpair, Inc. in Japan, alleging that Palworld, a competitor game nicknamed “Pokémon with guns,” infringes patents tied to game mechanics, including creature riding and battle movements.

Nintendo’s attempt to land a critical hit on its competitor generated an uproar because the lawsuit focused on patented mechanics that seemed common in the gaming industry. The case has become a flashpoint for broader questions about how far intellectual property rights should extend in the gaming industry, especially when gameplay elements feel basic or ubiquitous.

Last month, Squires made an unusual move. Using his authority under 35 USC Section 304 and 37 CFR Section 1.520, he personally ordered a reexamination of creature-riding mechanics in Nintendo’s US Patent No. 12,403,397, which had just been issued on Aug. 20.

The order came on the heels of Japan turning down Nintendo’s application for a new member in the patent family that it asserted in the Japanese lawsuit. Squires ordered reexamination based on two references called Yabe and Taura on Nov. 3; the Japanese Patent Office rejected a Japanese counterpart patent based on similar references on Oct. 29.

Examiners do their best during initial review, but with hundreds of thousands of applications filed each year and with tight examination timelines, they can’t always uncover invalidating prior art. That’s why reexamination exists—to correct errors and maintain confidence in the patent system when new prior art surfaces.

While there’s no guarantee that Nintendo will lose rights to its ’397 patent, Squires’ review suggests that the PTO will keep an eye on foreign patent proceedings and that the results of those proceedings might be increasingly relevant in how the PTO conducts its work.

Squires’ decision underscores his latest interpretation of the PTO’s mandate under 35 USC Section 316(b) to preserve the integrity of the patent system, a phrase the agency has used to justify changes to its post grant proceedings during the past year.

By stepping in without a third-party petition, the PTO signals that high-profile patents attracting public attention warrant heightened scrutiny. Its willingness to act proactively—even without external pressure—underscores a shift toward more dynamic oversight.

If a claim looks questionable, and the public is watching, the PTO might take a closer look, particularly regarding recently issued patents such as the ’397 patent. This seems to stand in contrast with Squires’ actions involving older patents, where he clarified that “settled expectations” should counsel against inter partes review of patents that are more than six years old.

There’s another dimension to this decision: global harmonization. It’s true that any US patent can be invalidated using prior art from anywhere in the world, but this move appears to mark the first time the director is actively aligning patent examination with global patent office trends.

That alignment matters because it prevents applicants from earning a patent in the US through an examination mistake when another patent office has found a similar claim shouldn’t earn patent protection or deserves additional scrutiny.

A third factor may be strategic: preempting tactical US litigation that undermines public trust in patent rights. Nintendo likely knew of Palworld’s development when it applied for what became the ’397 patent, and Nintendo sued Pocketpair alleging infringement of a Japanese counterpart to the ’397 patent’s after Palworld’s explosive launch.

Squires’ review addresses a growing public concern that some newer patent claims may be crafted primarily for litigation leverage rather than reflecting the original inventive concept, making early intervention critical to prevent patents from being used as an anticompetitive weapon in US litigation.

By scrutinizing the validity of these patents now before there are any settled expectations, the PTO may be aiming to ensure that the US market remains competitive and that players can enjoy both franchises without disruption or prolonged legal uncertainty.

Squires is moving quickly. The PTO has been directing its post grant proceedings to focus on newly issued patents under its settled expectations doctrine. This shift reflects a recognition that newer patents often cover emerging technologies where prior art is harder to find.

By prioritizing these patents in post-grant proceedings, the PTO aims to prevent seemingly weak claims from shaping markets or chilling innovation. After all, the agency is expected to consider the effect of regulating its procedures on the economy under 35 USC Section 316(b).

For practitioners, this means that patents issued in the last few years—especially those in high-growth sectors—are more likely to face challenges, whether through inter partes review or director-driven reviews.

Director-initiated reexaminations are rare, but this move reflects a possible shift in the PTO’s strategy to intensify oversight of newer patents, particularly those in fast-evolving industries. As such, the PTO may more closely monitor global patent prosecution of those patents.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law, Bloomberg Tax, and Bloomberg Government, or its owners.

Author Information

Christopher Suarez and Kate Cappaert are intellectual property partners at Steptoe.

Anthony Pericolo is an intellectual property associate at Steptoe.

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