TAKEAWAY: While most reexamination proceedings are initiated by a third party challenger, the USPTO Director has the authority to initiate reexamination to address a substantial new question of patentability of a patent.
The USPTO provides several options for a third-party to challenge an issued patent, including ex parte reexamination. Although extremely rare, the Director of the USPTO has discretion to initiate ex parte reexaminations under 37 C.F.R. § 1.520 without a third-party request if the Director determines a substantial new question of patentability is raised by patents or printed publications.
In November 2025, Director John A. Squires authorized ex parte reexamination of U.S. Patent No. 12,403,397 to Nintendo Co. Ltd. and Pokemon Co. (Reexamination Control No. 90/020,162). The claims in the patent relate to a game program that is configured to cause a processor to execute movement of a player and a sub character on a field in a virtual space. Notably, the patent issued after a first action allowance. In the reexamination order, the USPTO cited various prior art references as providing “new, non-cumulative teachings” to determine that substantial new questions of patentability warranted reexamination. The Director-initiated proceeding was unusual enough to prompt the USPTO to issue a news alert.
Reexamination is ongoing. In a first Office Action amounting to 100+ pages, the examiner rejected all claims of the ’397 patent as obvious based on combinations of prior art references, including the patent publications cited in the Director’s order to initiate proceedings. In response, the patent owners have implemented several narrowing claim amendments regarding first and second modes of a command battle between different characters. A continuation application is pending, providing the patentees with additional options to vary claim scope.
Reexamination proceedings are a reminder that issued patents still can be vulnerable to challenge, particularly with respect to claims that are relatively broad. Practitioners should consider claims of varied scope and with appropriate specificity—broad enough to provide meaningful protection, but detailed enough to hedge against prior art that may come to light later in a post-grant challenge.