Novelty outside preferred embodiment

[iper]

Hello

In a patent, I read 'in a preferred embodiment, we have this characteristic [...]'

This particular characteristic is not explicitly claimed in the claims.

Could the same device be claimed with explicitly not having this characteristic?

In other words, when their description mentions something about 'a preferred embodiment', would it be novel to claim another embodiment without that specific characteristic?

Their claim is so broad that really prevents any other invention in the wider sector of this invention but they clearly have something specific in mind as they mention it as 'a preferred embodiment'. That specific thing that they have in mind is completely wrong and my invention does not have that (it is a property of a material and my invention may have the same material but definitely without that crucial for its function property).

Thanks!

[Brad]

There are two (2) issues you have to worry about here:

1) If you make and sell a product will that violate their patent.

2) Is your product different enough to get your own patent approved.

For item (1), if there claim is broad enough to cover your product then you could likely infringe, even if their description suggests something else.   I understand this seems unfair but it sounds like they had a good patent attorney claim this broad enough to cover different variations.

For item (2), usually changing the invention and including something that is not found anywhere in their patent is enough to get your own patent approved.  However, if you are removing a step or component that is harder to get approved.   

Remember, even if you get your own patent approved that does not mean you are free and clear to start making the product as you could still be infringing on several older patents.   I wrote a post on this here: https://patentfile.org/you-have-a-patent-so-what/