A private sale is not a public disclosure, so it does not switch on the inventor grace period shield

2026-09-14Fed. Cir.

NCS Multistage Inc. v. Nine Energy Service, Inc., No. 2025-1000 (Fed. Cir. Sept. 14, 2026) (precedential)

Section 102(b)(1)(B) of Title 35 of the United States Code removes a third party disclosure from the prior art if the inventor publicly disclosed the same subject matter first. The patentee sold its first commercial unit to a customer in July 2012 with no confidentiality restriction, and argued that the sale was a public disclosure that disqualified a competing third party sale in August 2012. The Federal Circuit disagreed, holding that a private sale does not constitute a public disclosure even where the goods are actually delivered to the buyer without any confidentiality restriction. The panel extended to the grace period the reasoning it had applied to the derivation exception in Sanho Corp. v. Kaijet Technology International.

What it changesA quiet commercial sale before filing buys an inventor nothing against a competitor who publishes or sells the same thing a month later. This matters most to companies that place a model, a tool or an instrumented system with design partners under a paid pilot before anything is on file, because those transactions feel like disclosure to the business and count as nothing to the statute. The only reliable protection against an intervening third party disclosure is a filed application, so the pilot agreement and the provisional application should be executed in the same week rather than in that order.

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