Opinion: Don't tinker with first-to-invent

Warren Strugatch is a partner in IQ Strategy Group, a business development company in Hauppauge. Gerald T. Bodner, a patent attorney, is a partner in Bodner & O'Rourke in Melville.

Members of both parties of Congress are planning to mark the 60th anniversary of the Patent Act of 1952 by effectively gutting a law most Americans know nothing about, but which affects most of us -- positively -- nearly every day.

More than a half a century ago, Congress approved a law that stimulated the spirit of invention in this country, even as it diverged from the way the rest of the world operated. The new law institutionalized what's called the "first-to-invent" system, which awards a patent to the inventor who first conceives of an invention and acts diligently to get his patent application filed.

Sounds reasonable, but this new approach isolated the United States in the world. Everywhere else, save the Philippines and Canada, governments adopted the competing "first-to-file" system. Under "first-to-file," the person or organization claiming idea ownership must file patent applications even as the technology is being developed, to obtain an early filing date. Latecomers who paper the system can legally snare idea ownership away from the person who actually thought up the invention.

Now, the pressure is on to harmonize with the rest of the world. The America Invents Act now moving through Congress would shift the U.S. system to first-to-file. The sides being drawn split the inventing world between small -- little companies and individual inventors -- and big -- large corporations and major research institutions.

Those supporting conversion to first-to-file are mainly large corporations, which have more resources to devote to paperwork and navigating the patent system, and which may have more global interests in mind than the independent investor. The so-called little guy who devotes decades to building a better mousetrap faces a very uncertain future if Congress moves forward as planned.

Many of the technological wonders we enjoy today were in fact conceived in basements, garages and small laboratories by people like Thomas Edison and Alexander Graham Bell. In more recent years, individual inventors like Dean Kamen from Rockville Centre have gained recognition inventing medical devices that improve lives, including an all-terrain wheelchair and the Segway, the electric, self-balancing scooter.

Corporations invent too, of course. On Long Island, large organizations like Symbol Technologies (now Motorola), Grumman Corporation (now Northrop Grumman), Festo Corporation and Stony Brook University have long provided the resources inventors need to produce their breakthroughs, supplying space, equipment, supplies, staff and salaries. In return, these corporations and institutions share in the ownership of the intellectual property, in some cases owning the patents and trademarks outright -- then bringing the new products and processes to market.

Small inventors often have big ideas, too. They light the world, they record sound and they create gadgets through which human conversations can flow instantly around the world. But because individuals don't have the funds of larger companies, inventing and patenting is a slow, arduous and expensive procedure. The first-to-invent rule gives these individuals a reasonable time to perfect their inventions without risking the loss of their patent rights by filing second. And yet its protections are equally available to both large and small entities.

Canada, once our fellow holdout, went first-to-file in 1989. Numerous studies have tracked the effects of the change. One comprehensive report published 10 years after the transition concluded that the changeover had a small adverse effect on Canadian domestic-oriented industries, but nevertheless favored large corporations over individual inventors and small businesses with respect to who ends up owning the patent rights.

We should proceed cautiously in adopting changes to our patent system. Encouraging inventors is one of the best things a society can do. While there are problems with our system that need to be addressed, such as the inordinate delay in obtaining a patent, the first-to-invent rule works just fine in protecting an inventor's rights. Adopting the procedures of the rest of the world isn't necessarily the solution for a country with our history of fostering innovation and the entrepreneurial spirit.