Home CLS / ROC Patent – Patently-O The Federal Circuit Extends Sanho to the Section 102(b)(1)(B) Grace Period

The Federal Circuit Extends Sanho to the Section 102(b)(1)(B) Grace Period

Patent – Patently-O 2026-09-17

by Dennis Crouch

The America Invents Act of 2011 (AIA) substantially narrowed the 1-year grace period that US patent applicants had relied upon for more than a century. Under the new law, the grace period only applies to protect against the inventor's own disclosure (or those derived from the inventor) or in situations where the inventor had already publicly disclosed the invention.

The Federal Circuit's decision in NCS Multistage Inc. v. Nine Energy Service, Inc., No. 2025-1000 (Fed. Cir. Sept. 14, 2026), focuses on what pre-filing actions are sufficient for a patentee to trigger the "publicly disclosed" grace period of 35 U.S.C. § 102(b)(1)(B). The holding is straightforward: a private sale does not constitute a public disclosure, even where the goods are actually delivered to the buyer without any confidentiality restriction.

Let me set up the key timeline of events

  • July 2012: NCS (the patentee) sells its first AirLock device to Tundra that incorporates major aspects of the invention.
  • August 2012: TCO (an unrelated third party to this case) sells a TDP-PO tool to Apache. This is the potential intervening third-party sale, with further uses during the year.
  • February 5, 2013: NCS files its provisional application.
  • June 28, 2013: NCS files its non-provisional application that eventually led to the patent at issue here. Note that both the provisional and non-provisional are within one-year of that original sale.

The patentee's first problem here is that the Feb 2013 provisional application was inadequate to support the eventual claims. That is a big deal because the AIA became effective for applications filed in March 2013. This means that the new, narrower grace period applies in this case.

Any claim that has to rely on the June 28, 2013 filing is a post-AIA claim, and under AIA § 3(n)(1) a single post-AIA claim is enough to put the whole patent under the new § 102. The Board found the provisional gap in a post grant review, TCO AS v. NCS Multistage Inc., PGR2020-00077 (P.T.A.B. Feb. 18, 2021), and the Federal Circuit accepted the point in a footnote without dispute from either side. (I looked up the provisional application. It is about 5k words compared with 12k in the issued patent, and the issued claims include specific elements not found in the provisional.)

Is it Prior Art? I want to walk through the prior art question in the two step way that I teach it: first, does the third-party activity count as prior art under § 102(a) at all; and second, if so, does an exception under § 102(b) take it back out.

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