Gotta catch em' all: Nintendo files game patent infringement claim
04 October 2024
Short on time? Scroll down for our TL;DR!
In September, Nintendo and The Pokemon Company filed a patent infringement claim in Tokyo against the game development company behind "Palworld". Palworld, which has previously been compared to popular brand and game franchise Pokemon, was released in January 2024 and has become a hit, reaching more than 25 million players within a month of its release.
Patents provide a monopoly of 20 years, and afford a high degree of intellectual property protection if granted to an invention which is novel, not obvious, and is capable of having a technical effect. However, they are expensive rights to maintain and, once an application is filed, the patent grant can (and does) take years, with no guarantee that a patent will be granted. Similarly, enforcing a patent (as Nintendo and The Pokemon Company are seeking to do) can be expensive and very time-consuming. Therefore, it is very rare for there to be patent rights in videogames, and, rarer still, there is currently no precedent for patent infringement claims concerning game mechanics. However, it is likely that the main focus of any case will be how similar the technical elements of the game play and game mechanics are in practice.
It is currently unclear what patents specifically Nintendo and The Pokemon Company are asserting have been infringed, however it is predicted that they are patents that protect ways to capture character assets in a 3D virtual space.
This is potentially a very broad patented right, granted only in August 2024, and could, depending on the outcome, open the door to other similarly broad claims between large game developers or publishers and their competitors.
From an intellectual property perspective, this is interesting on two fronts:
- This could be the first time a videogame patent infringement case is based around patents, rather than the more common copyright and trade mark claims; and
- Claims that game mechanics are infringing a company's IP are extremely rare, as claims typically focus on copying of assets, characters or other 'goodwill' in a larger and more profitable brand.
By showing that any patents relied on in the claim had been filed (even if not granted) before the Palworld was launched, Nintendo can claim prior art and no one can use the same invention claimed under the scope of the patent without infringing it. This could suggest that Palworld's developers:
- did not conduct a freedom to operate or prior art search before launching Palworld and therefore did not know that the patents existed; or
- were confident Palworld did not infringe any of the claims within the patents; or
- considered Nintendo's patent was "obvious" – which could be grounds to invalidate the patents.
TL;DR!
Patent infringement claims are potentially new ground in intellectual property litigation in the gaming space: game mechanics are highly technical elements of a game that likely only large developers will be able to claim some right over (as they will be able to afford the expense of patent protection), whereas smaller, indie, game developers will likely not have the resource available to them to protect any game mechanic intellectual property they use.
Nintendo and The Pokemon Company's current claim relates to a Japanese patent and therefore proceedings have been commenced in Japan. Typically, patents are filed in key territories (e.g., the UK, the USA, China, and the EU) meaning that we expect to see parallel proceedings commencing in other jurisdictions where Nintendo and The Pokemon Company wish to assert their rights. We shall be following this case with interest.
Our IP lawyers are experts in providing strategic approaches to IP protection and can advise on a wide variety gaming related issues. We work with our clients on all aspects of the protection, exploitation and enforcement of their copyright and designs to protect IP. We have a strong track record of securing successful pre-litigation outcomes by taking a commercial approach to dispute resolution and can act in arbitrations and mediations.
Authors: Sunny Kumar, Partner; Hana Byrne, Solicitor
