Overview
Steptoe partners Christopher Suarez and Kate Cappaert and associate Anthony Pericolo co-authored a Bloomberg Law article analyzing US Patent and Trademark Office (USPTO) Director John Squires's rare move to order reexamination of US Patent No. 12,403,397 ("the '397 patent") issued to Nintendo for creature-summoning and riding mechanics tied to Pokémon. The complete article can be read here.
As the article explains, Director Squires's November 2025 order appears to be driven by three major considerations, signaling a shift in USPTO practice. First, the Director has signaled a desire to maintain public confidence in the integrity of the patent system by providing active oversight when there are public concerns about the scope or novelty of a high‑profile patent. The Director's order followed public outcry from the gaming community who felt that the patented mechanics in the '397 patent have long existed in video games. Second, the Director's order closely followed the Japanese Patent Office's rejection of a related Nintendo application, suggesting an emerging effort to align U.S. practice with global examination trends. Third, the Director appears increasingly concerned about patents that may be strategically timed or crafted amid competitive disputes, and is therefore more willing to act proactively—especially for recently issued patents that have not yet developed "settled expectations."
Even with the '397 patent now back before an Examiner this year, Director Squires's influence over the '397 patent's fate remains. Its reexamination may offer a clearer view of how Director Squires expects the USPTO to approach non‑traditional prior art.
When Examiners reject patent applications or Petitioners challenge the validity of an existing patent in post-grant proceedings, they typically rely on prior art patents or patent publications. The choice to primarily rely on patents and printed publications makes sense for traditional mechanical or electrical innovations, where prior art is typically well‑documented in exchange for patent protection.
However, video game mechanics, like those claimed in the '397 patent, often innovate in community‑driven spaces long before they appear in formal disclosures. The same can be said for other digital-era innovations, including those involving artificial intelligence. As such, Director Squires is interested in exploring "new or underutilized pathways relevant to Office search practice" to uncover prior art, meaning he may expect the USPTO's Examiners not to think only of patents or patent publications when examining patent applications.
After all, the definition of prior art is not limited to prior art patents or printed publications. Discussion groups, forums, digital videos, or social media posts are considered "printed publications" within the meaning of 35 U.S.C. 102(a)(1), and the Manual of Patent Examination Procedure, which is used to train USPTO Examiners, has long identified these exemplary "printed publications" as relevant prior art.
Reexamination of the '397 patent presents one such opportunity for the USPTO to expand the scope of prior art cited in office actions. Nintendo filed an updated information disclosure statement (IDS) citing unconventional prior art, including BradyGames strategy guides, blog posts on game forums, game wikis, and fan-made YouTube game tutorials. The IDS lets Examiners know of prior art known by applicants that may be relevant to patentability, and Examiners have an obligation to consider the information contained therein. Because these unconventional printed publications are before an Examiner for the first time during reexamination—and given the gaming community's view that the '397 patent's mechanics have long been ubiquitous as evidenced by these materials—the atypical "printed publications" in Nintendo's IDS may play a significant role in assessing the patent's validity.
If an Examiner decides that the '397 patent should not have been granted, then the Examiner's reasoning will be informative of changed practices under Director Squires' leadership. The Examiner could replicate the Japanese Patent Office's rejection or rely on atypical prior art, like YouTube videos disclosing the claimed game mechanics. Its resolution may well mark a turning point in how the USPTO recognizes and applies prior art in the age of digital innovations.
