POTENTIALLY OUTDATED: This video was recorded on October 1, 2024.
In a recent video, Gary Shuster revealed that Nintendo, which initially filed patent lawsuits over Pokémon GO in Japan, also has corresponding U.S. patent applications. Below, we break down what’s happening with these applications and why their progress could shape the future of location-based gaming patents.
1. The Backstory: From Japan to the U.S.
- Initial Lawsuit in Japan
Nintendo initially filed suit in Japan, claiming that certain Pokémon GO features infringed its patents. Patent law is territorial, so these claims apply specifically within Japan. - Pending U.S. Applications
Nintendo also has two related patent applications filed in the United States. These aim to secure similar protections in the US, potentially broadening Nintendo’s enforcement options. This is a good time to point out that filing in the US is almost always a good idea, as the US accounts for around one quarter of the world’s gross domestic product.
2. Accelerated Examination: Track One
- Speeding Through the USPTO
Both U.S. applications were fast-tracked via “Track One,” a special program that provides expedited examination for a higher fee. - Timeline
Filed in May, the two applications received office actions about two months later—significantly quicker than the standard examination process even for track one. I’ve noticed that big companies seem to get faster office actions.
3. The Office Actions: Rejections and Next Steps
- Prior Art Rejection
One application was rejected on the grounds that similar technology already existed in. To overcome this, Nintendo must either differentiate its claims from the cited art or amend them. - Subject Matter Eligibility Rejection
The other application was rejected under U.S. patent eligibility rules (often tied to 35 U.S.C. § 101), which can be murky. Recent Supreme Court decisions (like Alice Corp. v. CLS Bank) have left many software-related patents in a gray area regarding what is truly patentable.
4. Why It Matters
- Impact on Location-Based Gaming
If Nintendo ultimately secures these patents in the U.S., it could more aggressively protect certain aspects of augmented reality (AR) and location-based gaming mechanics. - Legal Uncertainty
The U.S. patent system’s stance on software or abstract ideas remains unsettled, but the Supreme Court seems uninterested in clarifying the law (hey SCOTUS, prove me wrong! On behalf of all US inventors, please clarify it). Even if Nintendo can convince a patent examiner that their claims are patent eligible, they will certainly be challenged in court on those grounds if Nintendo ever tries to enforce them. - Future Enforcement
A granted patent could enable Nintendo to pursue infringement actions against developers that implement similar technology. A final rejection would likely be followed to a “request for continued examination” and perhaps some continuation applications. It is only if the applications are all abandoned that it would leave this part of the field more open for competition (but … there could easily be third party patents in the area).
5. What’s Next?
- Nintendo’s Response
Nintendo can respond to these office actions by amending the claims, offering more technical detail, or arguing against the examiner’s rejections. - Possible Appeals
If the examiner stands firm, Nintendo could appeal to the Patent Trial and Appeal Board (PTAB), and potentially higher courts—further fueling the ongoing debate about software patentability.