Patent or publish first?

The core idea#

You rarely have to choose between patenting and publishing. You have to choose the order. File a patent application first, even a provisional one the day before, and you can then publish, present and defend your thesis freely. Publish first, and in India and Europe you will usually lose the right to patent that invention for good, because those systems treat your own publication as prior art against you.

This playbook explains what counts as disclosure, how grace periods differ, how the filing clock runs from provisional to national phase, how to write a provisional that protects you, what it costs, and what to do if you have already disclosed.

Stage: minus-one onwards · Lens: Deeptech · Reading time: about 30 minutes · Not legal advice: confirm specifics with a registered patent agent or attorney.

Who this is for#

• Researchers with a paper, preprint, poster, talk or thesis coming up.

• Labs that want a routine for publishing without losing patents.

• Founders who suspect something has already been disclosed.

What you leave with#

• A clear rule for your lab: what must be filed before what.

• A filing timeline and budget from provisional to national phase.

• A checklist for a provisional application that will support the claims you need.

• A recovery plan if a disclosure has already happened.

The rule in one line#

Disclose to the TTO, file, then publish. Everything else in this playbook is detail.

What counts as a public disclosure#

A disclosure is anything that makes the invention available to the public before you file. Most patent systems apply absolute novelty: prior art includes disclosures anywhere in the world, in any form (Intepat). "Public" can mean a single person who isn't bound by confidentiality (Novagraaf).

Disclosures researchers often miss#

The safe rule#

Treat anything that leaves the lab without a signed NDA as a disclosure, and file before it happens.

Grace periods by country#

A grace period lets an inventor file within a set time after their own disclosure without that disclosure counting against them. Grace periods vary widely, and the strictest system you care about decides your strategy. Researchers in the US, Japan, Korea, Canada and Brazil can use a grace period; applicants in European Patent Convention countries cannot (Garrigues).

What this means in practice#

• If Europe or India matter to your market, assume there is no grace period. File first.

• The US grace period is a safety net, not a plan. It can save a US patent after an accidental disclosure, but you will usually lose Europe, and probably India.

• Different countries, different patents. After a disclosure, you may end up with patents of different scope in different countries, or none in some (Mondaq).

• Calculate from the actual filing date. For the European exceptions, the six months run to the actual European filing date, not the priority date (EPO case law).

The filing clock#

A first filing sets your priority date and starts a clock that runs for about two and a half years before the expensive decisions arrive. Use that time to find out whether the invention is worth the cost.

Filing clock from priority date · months 0 to 31

How to use the clock#

• Plan your fundraising around month 30. By then a licensee or investor should be paying for national phase filings.

• Don't let the 12-month deadline pass by accident. In India there is no extension for converting a provisional (S.S. Rana).

• File improvements as new applications. New data during the year can be added in the complete application if it supports new claims, or filed separately; ask your attorney which.

Writing a provisional that actually protects you#

A provisional application is cheap to file, which tempts researchers to file the paper draft and nothing more. That is risky. The provisional only protects what it actually describes. If your later complete application or PCT adds new concepts that weren't in the provisional, those concepts get the later filing date, and someone who filed in between can get ahead of you (Northwestern INVO).

What a strong provisional includes#

• The core invention, described broadly. Not just the one material, compound or circuit you made, but the class it belongs to and the range of parameters that work.

• Alternatives and variations. Other materials, compositions, process conditions, architectures and uses that would also work. Competitors will try them.

• How to make and use it. Enough detail for a skilled person to reproduce it, including methods, conditions and equipment.

• Data. Results that show it works, and comparative data against the best alternative.

• Applications. Every product use you can foresee, including the beachhead and later markets (playbook 1.07).

• Draft claims. Not required for a provisional in the US or India, but writing them forces you to check that the description supports what you want to protect.

• Figures, labelled and explained.

Paper versus provisional#

A paper can be the starting point, but a patent agent or attorney should turn it into a provisional. Researchers should spend a few hours with the attorney listing variations and applications; nobody else knows them as well.

Costs and how to pay for them#

Official fees for a first filing are small. The real costs are attorney drafting and, later, national phase filings in each country.

Official fees for a first filing#

Indian startup benefits#

• The 80% fee concession for DPIIT-recognised startups is set in the Patent Rules and remains available (Chambers). You must claim it with your DPIIT certificate at filing (QwikFilings).

• Expedited examination is available to recognised startups (Chambers), requested on Form 18A (Fox Mandal).

• The SIPP scheme has ended. Under SIPP, the government paid empanelled facilitators' professional fees. Startups that hadn't begun the filing process before 31 March 2026 can no longer use it (Chambers).

• Reimbursement schemes, including some state government and MSME schemes, can pay back part of filing costs after grant (Intepat).

Who pays#

• Before a licence, the institution usually pays for filing, if it decides to file.

• Under an option or licence, the startup usually reimburses past patent costs and pays future ones (playbook 2.07). Negotiate to spread past costs over time.

• Grants such as BIRAC BIG allow some IP costs in the budget (playbook 1.04).

• Plan national phase costs into the seed round budget, because they fall due around month 30.

Publishing safely#

The aim is a lab routine in which no one has to remember the patent rules under deadline pressure.

The lab disclosure calendar#

Keep one shared calendar with every planned disclosure: paper submissions and expected publication dates, preprints, conference abstracts and talks, posters, thesis submission and defence dates, grant reports, demos, open-source releases and press stories. Review it monthly in a lab meeting.

The pre-publication workflow#

1. Eight weeks before any public disclosure, the author flags anything that might be new and useful.

2. Six weeks before, the PI decides whether it contains a possible invention. If yes, submit a disclosure to the TTO (playbook 2.03).

3. Four weeks before, the TTO decides whether to file. If it will, it instructs an attorney.

4. One week before, the provisional is filed. Get the filing receipt.

5. Disclose. Then submit, post or present as planned.

If time is short, a provisional can be filed within days, but quality suffers. Ask the TTO what its fastest route is before you need it.

Practical protections#

• Thesis embargoes. Most universities allow a thesis to be embargoed for a period. Request one if filing isn't done.

• Closed defences. Where allowed, hold the defence with only the committee present, under confidentiality.

• Conference abstracts. Write abstracts that describe the problem and the result without enabling detail, if filing will come later.

• NDAs for partners. Use the TTO's standard confidentiality agreement for company meetings that go into technical detail.

• Press releases. Coordinate with your institution's press office so that stories go out after filing.

When not to patent#

A patent is not always the right protection. Consider the alternatives, and discuss them with the TTO and your future investors.

Many deeptech companies combine patents on what the product reveals with trade secrets on how they make it. Agree the plan before the first paper, because publishing can destroy both options.

If you already disclosed: a recovery plan#

Act the same day. Time matters, and some options close quickly.

1. Record exactly what was disclosed, when, where and to whom. Save the preprint version, slides, poster, video link or email. The details decide what is lost.

2. Tell the TTO immediately, with the record.

3. Check the US route. If you are within 12 months of your own disclosure, a US application may still be possible under the US grace period (Intepat).

4. Check the Indian exceptions. If the disclosure was a paper read before a learned society or at a government-notified exhibition, Section 31 may allow filing within 12 months, claimed on Form 31 (Asia IP). Most other disclosures don't qualify (Intepat).

5. Check Japan, Korea and Canada, which also have 12-month grace periods (Novagraaf), if those markets matter.

6. Assume Europe is lost for what was disclosed, unless it was a breach of confidence or an official international exhibition within six months (EPO).

7. Look for what wasn't disclosed. Improvements, new applications, manufacturing methods, formulations and new data can still be patentable. File on those quickly.

8. Consider trade secrets for process know-how that the disclosure didn't reveal.

9. Tell investors honestly. A partial patent position is a known risk they can price. A hidden disclosure found in diligence damages trust.

How bad is it?#

Mistakes and how to recover#

Existing playbooks to read, and sources#

Read next#

• Your TTO's guide to disclosure and publishing. Most have one.

• The Indian Patents Act, Section 31, and the IP India guidance on Form 31.

• Article 55 of the European Patent Convention (EPO).

• Startup India's IP benefits page for current fee concessions and expedited examination.

Related playbooks in this library#

2.01 Who owns your invention · 2.02 Invention disclosures · 2.03 Working with the TTO · 2.05 Provisional filings and the PCT timeline · 2.06 Freedom to operate · 2.16 Open source or proprietary · 2.18 Trade secrets vs patents · 2.20 IP budget at pre-seed

Sources#

• Intepat: novelty requirements

• Intepat: Section 31 grace period in India

• Intepat: PCT in India

• Intepat: patent reimbursement schemes for startups

• Asia IP: anticipation under the Patents Act

• Asia IP: Section 31 compared with the UK

• Garrigues: grace periods

• Novagraaf: Japan extends grace period (EN)

• Novagraaf: grace periods by country (FR page)

• EPO: Article 55 EPC

• EPO: case law on Article 55

• EPO / Fish & Richardson: grace period harmonisation slides (2019)

• Mondaq: EPO consultation on grace periods

• S.S. Rana: patent filing in India

• S.S. Rana: patent prosecution flowchart

• AGIP: India patent summary

• Northwestern INVO: evaluation and priority dates

• Cornell LII: 37 CFR 1.16 fees

• USPTO fee schedule

• Chambers: SIPP expiry and what remains

• QwikFilings: startup patent filing in India

• Fox Mandal: expedited examination for startups