Taking your trademark practice paperless

IP law, and in particular trademark prosecution, is especially well suited to a paperless workflow. A swift survey of the pros and cons suggests that while it might feel like a wrench, there is much to recommend ditching the documents

You may have noticed that your doctor’s office has electronic patient charts and that you now conduct most of your personal banking online. It seems inevitable that in the not-so-distant future, paper files will become obsolete; so why not apply this change to your trademark practice?

The benefits of going paperless can be substantial. Below are some of the pros and cons to consider in making the change.

Making the leap

A trademark prosecution practice generally consists of a separate matter for each application. Compared to the litigation equivalent, each application file is relatively small and limited in scope. While the file can last for as long as the trademark registration is renewed, divisionals aside, it is generally contained by the course of one application.

Because each trademark application lends itself to its own matter number, this is an easy way to organise electronic files. In addition, most trademark practitioners are accustomed to filing correspondence away in individual prosecution files – they would only have to transition to doing so electronically.

Saving money

The most obvious change in a paperless office is that there would no longer be any need to create and rely on physical files. Money would be saved on the costs of purchasing physical files, as well as on paper and printer toner. For those firms that use sophisticated file tracking systems – which include bar codes, scanners and related software – the need for this technology would also cease.

Saving time

We have all spent an inordinate amount of time looking for a lost file. However, a paperless office would eliminate the time spent tracking down files or filing them away. In addition, there would no longer be any need to wait for a file before taking action or reviewing the status of a matter. Instead, files would be instantly accessible. This would be particularly helpful for large practices that store older or inactive files offsite.

Saving office real estate

A paperless office would mean no more file rooms and filing cabinets – this valuable office space could instead be used for other resources. It might also free up space for more efficient office designs.

Increased efficiency

By eliminating reliance on paper files, you could increase your efficiency and responsiveness to clients. Electronic files are accessible by anyone from anywhere, and can easily be shared and accessed between offices in different cities or when working remotely. In addition, there is no need to wait for a file to respond to a client or an office action. Everything should be readily accessible from your computer.

Increased security

While it may seem counterintuitive, electronic files are probably safer than physical ones. While many may take comfort in printing hard copies of documents, these are more likely to be lost or accidentally destroyed. Computer files can be backed up to a server or remotely stored in the cloud.

Document management systems

In order to organise your files electronically, you need a document management system – Outlook and desktop folders are no longer sufficient. The best document management systems allow you to organise your files by client, matter, date and type of communication, and provide sub-folders and places to clearly label each file with as little or as much detail as needed. Many different document management systems are available, some of which integrate with docketing systems or Outlook.

It is particularly important to save email correspondence in such a way that it can be searched by the ‘to’, ‘from’ and ‘subject’ fields, and can be opened, forwarded and replied to as needed. In addition, all non-email correspondence should be named with clear and easily identifiable file names and file types. Another useful feature is to have a field in which comments can be included when the file is saved, so that a document can be easily accessible in a long list of file names. Saving attachments to emails as separate files can also make it easier to review files at a later date. To make the transition to a paperless office easier, start using a document management system long before you stop using paper files.

It is important to create a plan to integrate your physical files with the electronic file. Consider returning physical files to clients

Phasing out physical files

So you have decided to go paperless; what should you do with your physical files? It is important to create a plan to integrate your physical files with the electronic files. Decide what needs to be scanned and when. Consider returning physical or inactive files to clients. While you can make a big leap and scan all your files at once, a more practical approach might be to start integrating files when a registration issues or when you file a renewal. Otherwise, you can simply start your paperless office with new matters and decide that only new matters will be paperless.

Beginning to implement a paperless system in advance will help to ensure that all employees are familiar with the new system and procedures before they are cut off from the physical files.

Streamlining internal procedures

Use the transition to a paperless practice as an opportunity to streamline internal procedures. This can include updating your engagement letter, returning inactive files to clients and reviewing your internal docketing procedures and workflow between attorneys and support staff. Without a physical file to hand to someone, procedures should be set up to organise the electronic workflow. If possible, try to reduce email clutter.

This might also be a good time to review your own personal workflow and methods of prioritising. Whether this involves creating a ‘to do’ folder in your inbox or using Outlook’s task lists to keep track of your workload, organisation is the key to a successful paperless practice.

Take advantage of others’ paperless features

Once you no longer use physical files, you may realise how cumbersome it is to receive hard copies of documents. Consider notifying clients of your new paperless office and ask whether they need or want hard copies of documents or bills.

Communication between foreign associates is done almost entirely by email these days. Consider whether you need confirmation copies or invoices sent by mail and whether you should request that only registration certificates or other official documents be mailed.

Many trademark offices around the world, such as the Office for Hamonisation in the Internal Market, have now stopped issuing paper certificates. The US Patent and Trademark Office has a lower filing fee if you agree to receive all official communications by email and allows declarations to be emailed and signed electronically. Many trademark offices have entire file histories of applications online that are more accessible than your firm’s own physical files. With all this information so easily obtainable online, having duplicate paper copies has become obsolete.

Like any major transition, there are some disadvantages to making the change. The biggest is likely to be getting everyone on board


Like any major transition, there are some disadvantages to making the change. The biggest is likely to be getting everyone on board. Altering the way you practise after years of doing things in a particular way can be a big change. However, once you establish new procedures and start to adjust, the change becomes easier.

Some things can be easier with paper files. For example, it can be simpler to review and mark up a long agreement using pen and paper. In addition, large files for due diligence projects can be reviewed quicker by flipping through paper, rather than individually opening a large number of electronic files.


The disparity between the many positives and the small number of negatives makes it apparent that most firms would benefit from going paperless with their trademark practice. If that is not sufficient to prompt change, time marches on. It is inevitable that paper files will suffer the same fate as docketing deadlines on index cards and dictating opinion letters on microcassettes. It is better to be ahead of the curve than behind, so the time to start investigating is now. 

Michelle Dorman Levin is an associate at Leason Ellis LLP  
[email protected]

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