Article 52 of the European Patent Convention specifically precludes the grant of patents for "methods of treatment of the human or animal body by surgery or therapy". It will be recalled that for inventions wherein the inventive step lies in the use of a chemical compound for treatment of a disease, claims have been allowed in the form "Compound X for use in therapy" (for the first medical use) and "Use of Compound X for production of a medicament for treatment of Disease Y" (for second and subsequent medical uses of the compound). In the case of Second Surgical Use/Codman the applicants attempted to secure a claim in the second form in a situation where a surgical instrument rather than a chemical compound was involved. Thus, the proposed claim read "use in the manufacture of a laser surgical instrument for carrying out ...(a specified operation)... of substrate means and coating means (having particular characteristics)." Novelty lay in the specified use. The applicants argued that the claim should be allowed in a manner analogous to second medical use claims. The Appeal Board disagreed, stating that in its view:


The Appeal Board was of the view that the fact that once a medicament had been consumed it could not be reused gave a more precise meaning to a claim directed to the use of producing a compound for a particular purpose than could ever be possible in respect of an instrument that could be used for a variety of purposes. While there is clearly some logic in this conclusion, the decision points out the unsatisfactory nature of the provisions of the European Patent Convention in dealing with medical inventions.

In another case on a similar topic however, Blood Flow/See-shell a claim involving measurement of blood flow to a specific tissue in an animal was allowed because the claim involved subsequently sacrificing the animal so that, although a surgical operation had previously been carried out on the live animal, it was clear that therapy was not the overall objective.