Last week, Japan’s Patent Office (hereafter JPO) published a notice of rejection of Nintendo and The Pokémon Company’s divisional patent application No. 2026-019762. Describing an “in-game monster-capturing system,” this patent application is closely tied to the ongoing legal dispute with Palworld developer Pocketpair, so it comes as no surprise that the rejection has attracted attention.
But curiously, Japanese users have pointed out the uncharacteristically scalding language JPO’s examiner used in addressing the counterarguments from Nintendo’s side, with people amusedly posting their “favorite quotes” from the legal back-and-forth. Industry professionals like Japanese patent attorney Kiyoshi Kurihara have likewise commented that both Nintendo’s objections and the examiner’s written response contained “things rarely seen in standard patent practice.”
One of the key factors behind the patent’s rejection is a YouTube gameplay video from 2013 demonstrating the indie fangame Pokémon Generations. In its initial “Reasons for Rejection,” the JPO cited gameplay mechanics showcased in the video to argue a lack of inventive step in Nintendo’s patent application, describing mechanisms like “selecting a Poké Ball displayed at the bottom right of the screen causes Ash to throw it; if it hits Pikachu, Pikachu can be captured.”
However, in its subsequent counterargument, Nintendo’s side strongly disputed these claims, emphasizing that the game in question and the characters depicted in it infringed upon its copyrights. They argue that JPO’s examiner “acted extremely inappropriately by deliberately mischaracterizing an infringing product as though it were an authorized one,” and this sentence is repeated numerous times throughout the document.
In turn, in the recent notice confirming the rejection, JPO’s examiner shuts down the mention of copyright infringement entirely, explaining that, based on domestic patent law and court precedent, whether an invention infringes on copyright or not has no bearing on determining inventive step. While somewhat drily implying that Nintendo’s stance strays from “standard thinking for patent practitioners,” they dismiss the interpretation that the examiner acknowledged the cited fangame as an officially licensed Pokémon game as a “completely unreasonable misunderstanding.” They also add, “The mere possibility that the reasons for rejection could be subject to such an unreasonable misunderstanding has no bearing on the assessment of inventive step.”
Another part of the notice that has been causing amusement among Japanese users is the examiner’s apparent annoyance with Nintendo’s pedantry over how the unofficial game and its content was referred to in the reasons for rejection. In its counterarguments, the company stated, “Ash, Pikachu, and Poké Ball should properly be referred to as “a character infringing upon Ash,” “a character infringing upon Pikachu,” and “a character infringing upon Poké Balls,” respectively.”
In response, the examiner says, “If it were impermissible for the reasons for rejection to refer to character names, then even at the cost of being redundant, accuracy should take precedence. In that case, the notice would need to use cumbersome descriptions such as ‘an object in the form of a small animal’ instead of Pokémon, ‘an object in the form of a boy wearing a red cap’ instead of Ash, ‘an object in the form of a small yellow animal’ instead of Pikachu, ‘an object in the form of a small green animal’ instead of Bulbasaur, and ‘a spherical object with a red upper half and a white lower half’ instead of Poké Ball. However, even with such rephrasing, the logical structure of the grounds for refusal remains unchanged. Therefore, this argument has no bearing on determining inventive step.”
Another objection raised by Nintendo positioned that the Pokémon Generations video was “merely a video” and thus the examiner could not extract the technical elements of the claimed invention from it. The examiner seems puzzled by what this argument is supposed to mean, surmising that it is probably intended to imply one of two things: that Nintendo’s side acknowledges that the video is genuine gameplay footage, but does not believe footage alone can disclose the technical features of a game program; or, that Nintendo’s side is casting doubt about whether the video is gameplay footage at all, but perhaps merely an animated video to which narration has been added so as to make it appear as though the uploader were playing a game. The examiner promptly dismisses both arguments, while noting that in the second scenario, “the uploader’s behavior would be way too preposterous.”
While these are just some snippets, JPO’s notice ultimately did not acknowledge the objections brought forth by Nintendo’s side, and the patent’s rejection has been sustained. Nintendo now has the right to file a petition for a trial against the decision of rejection with the Commissioner of the JPO within three months. Note that this rejection does not invalidate the registered patent currently being directly asserted in the Palworld lawsuit at the Tokyo District Court. Rather, it concerns the JPO’s refusal to grant Nintendo a patent for a separate divisional application within the same patent family.
