Nintendo and the Japan Patent Office have had an interesting back-and-forth on the latest patent rejection.
The most recent rejection is not related to the original patent that Nintendo used in the Palworld lawsuit. Instead, it concerns a divisional patent that Nintendo was attempting to include in the same family, focusing on the monster-capturing system. This divisional patent was rejected due to a lack of an inventive step. As a result, Nintendo and the Japan Patent Office have been going back and forth over this rejection, as revealed in a new Automaton report.
Nintendo’s Patent Rejection Includes Unusually Blunt Response From Japan Patent Office
The Japan Patent Office rejected Nintendo’s new patent based on gameplay mechanics showcased in a YouTube gameplay video of a fan-made title, Pokémon Generations. The JPO stated that Nintendo’s patent application lacked inventive step, citing the gameplay shown in the video as prior art. Nintendo made multiple points in response to the rejection, which the JPO addressed somewhat bluntly.
Nintendo’s Copyright Infringement Argument
The first was that the JPO’s examiner had “acted extremely inappropriately by deliberately mischaracterizing an infringing product as if it were an authorized one.” In response, the examiner rejected this argument, indicating that whether an invention falls under copyright infringement does not affect the assessment of inventive step, according to domestic patent law and court precedents.
Furthermore, the statement added that citing a fangame as an officially licensed Pokémon game is a “completely unreasonable misunderstanding.” The examiner added that “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.”
Nintendo Asking Pokémon Characters to be Referred to as a “Character Infringing Upon Pikachu” and So On
The second argument from Nintendo was that instead of using names like Ash, Pikachu, and Poké Ball, the JPO should have used terms like “a character infringing upon Ash,” “a character infringing upon Pikachu,” and “a character infringing upon Poké Balls” and so on.
The JPO examiner responded, stating that to add this point, they would have to use “cumbersome descriptions” lke 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 the change, “the logical structure of the grounds for refusal remains unchanged.” Hence, Nintendo’s second argument “has no bearing on determining inventive step.”
Nintendo Says it Was Merely a Video
Nintendo argued that the evidence used by the Japan Patent Office to determine the inventive step was “merely a video.” In response, the examiner explained that there are two possible interpretations of this argument.
In the first scenario, Nintendo acknowledges that the video depicts actual gameplay footage but contends that it does not adequately demonstrate the technical features of the game.
In the second scenario, Nintendo questions whether the video is indeed gameplay footage and suggests that it could be an animated clip where the uploader is pretending to play a game. The examiner believes that this second scenario is unlikely, stating, “the uploader’s behavior would be far too preposterous.” The examiner dismissed both scenarios.
Therefore, Nintendo’s patent rejection by the Japan Patent Office remains in effect, and the company can file a petition for a trial against the rejection decision with the Commissioner of the JPO within three months.
What are your thoughts on Nintendo and the Japan Patent Office’s back-and-forth on the rejection? Leave your thoughts down in the comments, and join the official Insider Gaming Discord server.
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